News & Analysis as of

Inter Partes Review (IPR) Proceeding Administrative Proceedings Patent Litigation

Fish & Richardson

PTAB Issues FAQs on Interim Process for Workload Management

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Last week, the Patent Trial and Appeal Board (PTAB) issued a list of FAQs related to the new bifurcated process for discretionary denial established in the March 26 memorandum issued by Acting Director Stewart. The FAQs...more

Foley Hoag LLP

PTAB Changes Procedure for Determining Discretionary Denials

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Key Takeaways: - The Director, in consultation with at least three APJs, will now decide the discretionary denial question, rather than having the merits panel decide the issue. - Discretionary denial will have separate...more

Jones Day

Fed. Cir. Rejects New IPR Constitutional Challenges

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In Mobility Workx, LLC v. Unified Patents, LLC, the Federal Circuit in a split decision concluded that Mobility Workx, LLC’s constitutional challenges to structure and funding of the Patent Trial and Appeal Board (“PTAB”) are...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

Federal Circuit Appeals from the PTAB and ITC: Summaries of Key 2020 Decisions: Amneal Pharm. LLC v. Almirall, LLC, 960 F.3d 1368...

Abbreviated new drug (ANDA) applicant Amneal petitioned for an inter partes review (IPR) of Almirall’s patent listed in the Food and Drug Administration’s (FDA) Orange Book for a prescription drug to treat acne. Almirall...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

The Goods on IP - September 2019: Design Patent PTO Litigation Statistics (through July 2019)

The statistics below reveal the current trends for proceeding breakdowns, institution rates, and outcomes of design patent PTO litigation proceedings. Three petitions were filed in January 2019, but none have been filed...more

Troutman Pepper Locke

Inter Partes Review of Pre-AIA Patents is Constitutional

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Celgene Corp. v. Peter, Appeal Nos. 2018-1167, -1168, -1169 (Fed. Cir. July 30, 2019) - Celgene owned two patents that pertained to methods of safely distributing potentially hazardous drugs.  The patents were challenged...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

2019 Report: Federal Circuit Appeals from the PTAB - Summaries of Key 2018 Decisions: Nestle USA, Inc. v. Steuben Foods, Inc., 884...

As strategies for managing multiple inter partes reviews (IPRs) of the same or related patents evolve, so does the complexity of collateral estoppel. Collateral estoppel prevents a party from having to re-litigate issues that...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

USPTO Changes Claim Construction Standard in Post-Grant Proceedings

The USPTO has published a final rule, changing the claim construction standard applied during post-grant proceedings (inter partes reviews, post-grant reviews, and covered business methods reviews) before the Office’s Patent...more

Jones Day

District Court Grants Stay Post-Trial In View Of SAS

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The effects of SAS Institute Inc. v. Iancu, 138 S.Ct. 1348 (2018), continue to reverberate throughout the PTAB and federal district courts. In Prisusa Engineering Corp. v. Samsung Electronics Co., Ltd. et al., No....more

Troutman Pepper Locke

Supreme Court Issues Two Patent-Related Opinions; One Causes Turmoil at the Patent Office

Troutman Pepper Locke on

On April 24, the U.S. Supreme Court, in a 7-2 decision, held that inter partes review (IPR) proceedings conducted by the Patent Trial and Appeal Board (PTAB) do not violate Article III or implicate the Seventh Amendment. ...more

Latham & Watkins LLP

SAS Institute Follow-Up: New PTAB Procedures and Strategies

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The PTAB’s new guidance in light of a recent Supreme Court ruling changes the dynamics for patent owners and petitioners. Key Points: ..Partial institutions are no longer permitted. The PTAB will review all petitioned...more

Bradley Arant Boult Cummings LLP

Review of All Claims in Petition for Inter Partes Review Required after SAS Institute

On the same day that the Supreme Court upheld the constitutionality of inter partes reviews, it ruled in SAS Institute Inc. v. Iancu that the United States Patent and Trademark Office wrongly implemented regulations allowing...more

Foley & Lardner LLP

Patent System after Oil States and SAS – What’s the future?

Foley & Lardner LLP on

On April 24th, the Supreme Court decided two important cases related to the United States Patent & Trademark Office’s inter partes review (IPR) proceedings for reconsidering the prior grant of a patent – Oil States Energy...more

BakerHostetler

[Webinar] Supreme Court Issues Decisions in Oil States and SAS Cases: A Discussion of the Impact on Patent Law and Inter Partes...

BakerHostetler on

This timely and fast-moving webinar provides insight for business leaders and legal counsel on the recently issued Supreme Court decisions in Oil States Energy Services, LLC v. Greene’s Energy Group, LLC and SAS Institute...more

Eversheds Sutherland (US) LLP

Stayin' alive: What’s next for IPRs after Oil States and SAS

On April 24, 2018, the US Supreme Court decided two important cases that directly impact inter partes reviews (IPRs) before the Patent Trial and Appeal Board (PTAB), and patent litigation as a whole. In Oil States Energy...more

Fenwick & West LLP

SCOTUS Upholds IPRs as Constitutional, May Leave Opening for Challenges to Certain IPRs

Fenwick & West LLP on

Is inter partes review of a patent grant compatible with Article III and the Seventh Amendment? That was the question presented in Oil States Energy Services v. Greene’s Energy Group, and the U.S. Supreme Court this week...more

Latham & Watkins LLP

Supreme Court Rulings Increase the PTAB’s Importance

Latham & Watkins LLP on

Oil States preserved the PTAB, and SAS Institute makes it a more important venue for patentability challenges. Key Points: ..IPR and other post-grant proceedings before the PTAB will continue. ..However, the PTAB may...more

Parker Poe Adams & Bernstein LLP

How the U.S. Supreme Court Ruled on Inter Partes Review and What It Means for Future Patent Challenges

The U.S. Supreme Court ruled Tuesday on two closely monitored cases impacting how patents could be challenged. In the more high-profile case, the court upheld the constitutionality of the inter partes review (IPR) process...more

Wilson Sonsini Goodrich & Rosati

Supreme Court Issues Two Decisions Impacting Practice Before the Patent Trial and Appeal Board

Today, the U.S. Supreme Court issued two decisions that will keep the Patent Trial and Appeal Board (PTAB) busier than ever. In Oil States Energy Services, LLC v. Greene's Energy Group, LLC,1 the Court affirmed that inter...more

Stoel Rives LLP

Supreme Court: Patent Office Retains IPR Authority, Loses Discretion to Streamline Proceedings

Stoel Rives LLP on

Today (April 24, 2018), the U.S. Supreme Court released two important decisions regarding the authority of the U.S. Patent and Trademark Office (“PTO”) to conduct Inter Partes Review (“IPR”) proceedings. IPRs, an...more

Schwabe, Williamson & Wyatt PC

Breaking IP News: US Supreme Court Issues Landmark Decisions in Oil States and SAS

LATEST FROM THE SUPREME COURT - We issue today’s special edition of Fresh from the Bench to summarize two important precedential decisions issued this morning by the Supreme Court. Both cases concern inter partes reviews,...more

Bass, Berry & Sims PLC

U.S. Supreme Court Upholds Constitutionality of Patent Inter Partes Review

Bass, Berry & Sims PLC on

On Tuesday, April 24, the U.S. Supreme Court handed down two highly anticipated decisions that significantly impact inter partes review (IPR) proceedings before the Patent Trial and Appeal Board (PTAB). The Supreme Court's...more

Fish & Richardson

Oral Arguments Summary: Oil States Energy Services, LLC v. Greene’s Energy Group, LLC

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The Supreme Court heard oral arguments on November 27, 2017, in Oil States Energy Services, LLC v. Greene’s Energy Group, LLC, where the petitioner challenged the constitutionality of inter partes review (IPR) proceedings....more

Mintz - Intellectual Property Viewpoints

Supreme Court Hears Oral Arguments in Oil States Regarding Constitutional Challenge to Inter Partes Review

We first covered the Supreme Court’s grant of certiorari in Oil States Energy Servs., LLC v. Greene’s Energy Grp., LLC, 137 S. Ct. 2239 (2017), a case with the potential to substantially alter the patent litigation landscape,...more

Hogan Lovells

US: Supreme Court hears argument on constitutionality of inter partes review

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On November 27, 2017, the Supreme Court heard oral arguments in a case that will determine the constitutionality of inter partes review, a proceeding before the United States Patent and Trademark Office’s Patent Trial and...more

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