Are Your Granted Patents in Danger of a Post-Grant Double Patenting Challenge?
The Briefing: A Prototypical Corporate Salesperson is Not Patentable
Podcast: The Briefing - A Prototypical Corporate Salesperson is Not Patentable
Ways to Amend the Claims in the Patent Invalidation Proceedings
Patent Right Evaluation Report in China’s Patent System
Stages of Patent Invalidation Proceedings
In Pfizer Inc., v. Sanofi Pasteur Inc., SK Chems Co. Ltd., v. Vidal, 2019-1871 (March 5, 2024), the Federal Circuit affirmed the Board’s conclusions that claims 1–45 of U.S. Patent No. 9,492,559 were unpatentable due to...more
Every month, Erise’s patent attorneys review the latest inter partes review cases and news to bring you the stories that you should know about: Federal Circuit Addresses Waiver of Argument Not Raised in Request for...more
In Natera, Inc v. Neogenomics Laboratories, Inc., Appeal No. 24-1324 the Federal Circuit held that preliminary injunction may be valid if a substantial question of invalidity was not raised, even if the asserted patent is...more
Before Bryson, Lourie, and Reyna. Appeal from the United States Patent and Trademark Office (“PTO”), Patent Trial and Appeal Board (“Board”). Summary: Estoppel under 37 C.F.R. § 42.73(d)(3)(i) only applies to obtaining new...more
The availability of post-grant proceedings at the Patent Trial and Appeal Board (PTAB) has changed the face of patent litigation. This periodic digest is designed to keep you up-to-date by highlighting interesting PTAB,...more
On February 23, 2024, Judge McMahon (S.D.N.Y.) entered findings of fact and conclusions of law pertaining to issues relating to Defendant Lutron Electronics Co. (“Lutron”)’s defenses of invalidity and unenforceability of U.S....more
2023 was a busy year at the Patent Trial and Appeal Board, as post-grant practice continued to evolve at a rapid pace. At the United States Patent and Trademark Office, there were big developments in Director Review and...more
Canatex Completion Sol. Inc. vs. Wellmatics LLC, et al., Case No. 4:22-cv-03306, Dkt. No. 100 (S.D. Tex. Dec. 14, 2023) - Found a mistake in your patent? You might want to get it fixed at the U.S. Patent and Trademark...more
Director Jason A. Fitzsimmons and Counsel Richard A. Crudo will present the “Developments in IPR Estoppel” webinar on Tuesday, December 5, 2023, at 1:00 PM ET. The possibility of being estopped from asserting prior art in...more
The Patent Trial and Appeal Board held all challenged claims of IGT’s patent unpatentable as obvious over two prior art patents. Zynga Inc. v. IGT, IPR2022-00199-32. In doing so, the PTAB further held that, contrary to...more
Finjan LLC v. SonicWall, Inc., Appeal No. 2022-1048 (Fed. Cir. Oct. 13, 2023) In the Federal Circuit’s only precedential opinion this week, a majority affirmed summary judgment of non-infringement on appellant Finjan’s...more
The Federal Circuit has ruled that when members of a patent family have different expiration dates due to patent term adjustments (PTAs), the earlier-expiring patent family members can be used as a basis for an...more
Addressing for the first time how patent term adjustments (PTAs) interact with obviousness-type double patenting (ODP), the US Court of Appeals for the Federal Circuit concluded that when members of a patent family have...more
Two bills recently introduced in Congress could significantly affect the current patent litigation landscape. The bipartisan bills are titled the Patent Eligibility Restoration Act of 2023 and the Promoting and Respecting...more
Four subjects stood out in patent litigation in Texas in April 2023: (1) applicability of the customer-suit exception to the first-to-file rule; (2) the level of ties a reasonable royalty methodology must have to the facts of...more
We are excited to share Sheppard Mullin’s inaugural quarterly report on key Federal Circuit decisions. The Spring 2023 Quarterly Report provides summaries of most key patent law-related decisions from January 1, 2023 to March...more
US Patent & Trademark Office (PTO) Director Katherine K. Vidal issued a precedential opinion clarifying the standard under which the Patent Trial & Appeal Board (Board) can institute on an inter partes review (IPR) petition...more
CyWee Group Ltd. (“CyWee”) has been bouncing between the Federal Circuit and Patent Trial and Appeal Board (“Board”) with its administrative challenges after two inter partes review (“IPR”) proceedings invalidated the claims...more
Last year, in our inaugural issue of “The Year in Review,” we reported that since the landmark jury verdict in the IP litigation between Apple and Samsung in 2012, which awarded more than $1B to Apple for infringement of...more
Nippon Shinyaku and Sarepta entered into a Mutual Confidentiality Agreement to facilitate discussions about a potential business relationship related to muscular dystrophy therapies. Section 6.1 of the MCA contained a mutual...more
As part of the recovery from the global COVID-19 pandemic, the U.S. Court of Appeals for the Federal Circuit took steps to return to normal operations. It began requiring live oral arguments in August 2022 and, by November,...more
Hunting Titan, Inc. v. DynaEnergetics Europe GMBH, Appeal Nos. 2020-2163, -2191 (Fed. Cir. March 24, 2022) - In a notable review of the USPTO’s new Precedential Opinions Panel, the Federal Circuit discussed the...more
Premier forum which shapes the law, policy, and proceedings of Paragraph IV Litigation is back to New York City on April 26-27! Pharmaceutical patent practitioners from across the globe attend this flagship conference to...more
Ex parte reexaminations have re-emerged as an increasingly important component of patent litigation and licensing negotiations. With the passage of the America Invents Act (“AIA”) and the advent of inter partes reviews...more
In 2021, district courts were faced with resolving numerous requests by parties seeking attorney fees based on conduct in related USPTO Patent Trial and Appeal Board (PTAB) proceedings. Many of these requests came in the wake...more