News & Analysis as of

IP Assignment Agreements Inter Partes Review (IPR) Proceeding

WilmerHale

Federal Circuit Patent Watch: Ordering In-Person Appearance to Testify Regarding Potential Fraud on the Court is within Court's...

WilmerHale on

Precedential and Key Federal Circuit Opinions - 1.  BACKERTOP LICENSING LLC [OPINION] (23-2367, 23-2368, 24-1016, 24-1017 Prost, Hughes, and Stoll) - Hughes, J. The Court affirmed the District Court’s orders (1)...more

WilmerHale

Federal Circuit Overrules Rosen-Durling Test for Design Patent Obviousness as “Improperly Rigid”

WilmerHale on

Precedential and Key Federal Circuit Opinions - LKQ CORPORATION v. GM GLOBAL TECHNOLOGY OPERATIONS LLC [OPINION] (2021-2348, 5/21/24) Moore, Lourie, Dyk, Prost, Reyna, Taranto, Chen, Hughes, Stoll, and Stark - Stoll,...more

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases - May 2020 #3

PATENT CASE OF THE WEEK - Schwendimann v. Arkwright Advanced Coating, Inc., Appeal Nos. 2018-2416, et al. (Fed. Cir. May 5, 2020) (unsealed May 13, 2020) - In this recently unsealed precedential opinion, the Federal...more

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

PTAB Strategies and Insights - June 2019: States Must Face IPR Challenges Similar to Tribes

In Regents of the Univ. of Minn. v. LSI Corporation, Fed. Cir., No. 18-01559, the Federal Circuit extended the inability to stand behind 11th Amendment Sovereign Immunity to patents owned by individual states, such that they...more

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

2019 Report: Federal Circuit Appeals from the PTAB - Summaries of Key 2018 Decisions: Saint Regis Mohawk Tribe v. Mylan Pharm....

Mylan Pharmaceuticals, Inc., Teva Pharmaceuticals USA, Inc., and Akron, Inc. petitioned for inter partes review (IPR) of various patents owned by Allergan, Inc., which the Board instituted. One week before the scheduled IPR...more

Goodwin

BREAKING NEWS: Federal Circuit denies petition for rehearing in St. Regis Mohawk Tribe v. Mylan

Goodwin on

As we previously reported, following the Federal Circuit’s ruling in St. Regis Mohawk Tribe v. Mylan that “tribal immunity cannot be asserted in IPRs,” Allergan and the Tribe petitioned for rehearing en banc. The petition was...more

Akin Gump Strauss Hauer & Feld LLP

Federal Circuit Affirms that Tribal Immunity Is Not Available for Inter Partes Review

On July 20, 2018, the Federal Circuit affirmed in Saint Regis Mohawk Tribe v. Mylan Pharmaceuticals, Inc. that tribal immunity cannot be asserted in IPRs. The appeal stemmed from a dispute between Allergan and various generic...more

Knobbe Martens

The Federal Circuit Finds Tribal Sovereign Immunity does not Apply in IPR

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On July 20, 2018, the Federal Circuit held that tribal sovereign immunity is not available as a defense in IPR. Allergan Pharmaceuticals owned patents that it had asserted in litigation against various generic...more

Wilson Sonsini Goodrich & Rosati

Federal Circuit Holds That Tribal Sovereign Immunity Does Not Apply to Inter Partes Review

The U.S. Court of Appeals for the Federal Circuit has decided whether tribal sovereign immunity required termination of inter partes review (IPR) proceedings before the Patent Trial and Appeal Board (PTAB). At the PTAB, Mylan...more

Knobbe Martens

Saint Regis Mohawk Tribe v. Mylan Pharmaceuticals Inc.

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Federal Circuit Summary - Before Dyk, Moore, and Reyna. Appeal from the Patent Trial and Appeal Board. Summary: Tribal sovereign immunity does not shield Indian Tribe owned patents from IPR. ...more

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

Federal Circuit Declares Tribal Sovereign Immunity Cannot Be Asserted In Inter Partes Review Proceedings

U.S. Court of Appeals for the Federal Circuit affirmed a U.S. Patent Trial and Appeal Board (PTAB) decision finding that tribal sovereign immunity does not apply to Inter Partes Review (IPR) proceedings. In so holding, the...more

Dorsey & Whitney LLP

Federal Circuit Holds Tribal Immunity Does Not Apply To Inter Partes Review

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Last Friday, in an anticipated decision, the U.S. Court of Appeals for the Federal Circuit decided a controversial case regarding the St. Regis Mohawk’s ability assert sovereign immunity in inter partes review proceedings. ...more

Knobbe Martens

The Federal Circuit Stays IPR Pending Review of the PTAB’s Denial of St. Regis Mohawk Tribe’s Sovereign Immunity

Knobbe Martens on

The PTAB ruled that the Saint Regis Mohawk Tribe could not assert sovereign immunity in IPRs of patents that Allergan had assigned to the Tribe relating to Restasis®. See The Saint Regis Mohawk Tribe is not entitled to...more

Patterson Belknap Webb & Tyler LLP

PTAB Holds Indian Tribes Don’t Offer an Out from IPR

In a highly anticipated decision on the Saint Regis Mohawk Tribe’s motion to terminate inter partes review proceedings, the Patent Trial and Appeal Board rejected tribal sovereign immunity to IPRs. The PTAB’s decision also...more

Nutter McClennen & Fish LLP

PTAB Panel Finds Tribal Immunity is Not a Barrier to IPR

In a case that has received significant attention over the past several months, a United States Patent Trial and Appeal Board (PTAB) panel recently concluded that the Saint Regis Mohawk Tribe’s claim of tribal immunity did...more

Knobbe Martens

The Saint Regis Mohawk Tribe is not entitled to Sovereign Immunity at the PTAB

Knobbe Martens on

The PTAB dismissed the Saint Regis Mohawk Tribe’s attempt to avoid IPR of patents covering Restasis®, which Allergan transferred to the Tribe in a highly publicized patent deal. See Allergan and the Saint Regis Mohawk Tribe...more

Knobbe Martens

Sovereign Immunity at the PTAB: Where do we stand?

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Sovereign Immunity - Sovereign immunity exempts a sovereign from the jurisdiction of a court - States are entitled to sovereign immunity under the 11th amendment Seminole Tribe of Fla v. Florida, 517 U.S. 44 (1996) ...more

Goodwin

PTAB Denies Allergan & Mohawk Tribe’s Motion to Terminate IPRs Based on Sovereign Immunity

Goodwin on

As we’ve reported on previously, Allergan, Inc. assigned its rights to patents covering its Restasis® dry eye treatment to the St. Regis Mohawk Tribe (“Tribe”) and simultaneously licensed back those patents in exchange for...more

Goodwin

Court Permits St. Regis Mohawk Tribe to Join Restasis® Litigation, but Nixes Allergan’s Patents

Goodwin on

Today, Judge Bryson, a Federal Circuit judge sitting by designation in the U.S. District Court for the Eastern District of Texas, Marshall Division, issued an Opinion and Order granting Allergan’s motion to join the St. Regis...more

Schwabe, Williamson & Wyatt PC

Fresh From the Bench: Precedential Patent Cases From the Federal Circuit

In In Re Cray, the panel grants Cray’s petition for a writ of mandamus, ruling that the district court’s handling of the case is not consistent with its case law regarding what is “a regular and established place of...more

Knobbe Martens

Allergan and the Saint Regis Mohawk Tribe Enter Patent Agreement to Defend Against IPR of RESTASIS® Patents

Knobbe Martens on

In a creative move to take advantage of recent PTAB decisions regarding Sovereign Immunity, (see e.g., Covidien LP v. University of Florida Research Foundation, IPR2016-01274 and Neochord, Inc. v. University of Maryland,...more

Foley & Lardner LLP

Pharma Patents Assigned to Indian Tribe to Thwart Inter Partes Review

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As we have previously reported, sovereign immunity of state universities (who are instruments of state government) has been used to avoid IPRs under the immunity clause of the US Constitution (“Sovereign Immunity of State...more

Knobbe Martens

PTAB Designates As Precedential A Decision Finding Assignor Estoppel Is Not A Defense in IPRs

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The PTAB recently designated as precedential its 2013 decision that assignor estoppel is not a defense for patent owners in IPR proceedings in Athena Automation Ltd. v. Husky Injection Molding Systems Ltd., IPR2013-00290,...more

Knobbe Martens

Defect in Patent Assignment Results in IPR Challenge Effectively Going Unopposed

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Old Republic’s IPR petition was effectively unopposed due to a defect in the chain of assignment, which led the PTAB to hold all claims unpatentable without considering arguments or evidence submitted in favor of...more

Knobbe Martens

PTAB Applies Collateral Estoppel to Exclude Purported Patent Owner

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The PTAB issued an order applying collateral estoppel to determine that one purported owner of U.S. Patent 7,215,752 and U.S. Patent 7,844,041 (the “challenged patents”) had no authority to act as the patent owner in...more

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