News & Analysis as of

Patent Trial and Appeal Board

PTAB Extends Deadline to Decide IPR Motion to Amend in view of Aqua Products

by Knobbe Martens on

The PTAB extended the deadline for issuing its IPR final written decision on a motion to amend by up to six months to provide additional time to consider the impact of the Federal Circuit’s recent en banc Aqua Products...more

Allegan’s Restasis Patents Invalidated By A Federal District Court Even After Transfer To Native American Tribe And Sovereign...

by Weintraub Tobin on

In Allergan, Inc. v. Teva Pharmaceuticals USA, Inc. et al, Case No. 2:15-cv-1455-WCB (EDTX October 16, 2017 Order), a Federal District Court recently invalidated several patents covering Allergan’s dry-eye drug Restasis. The...more

PTAB Declines Request to Review Method of Treating Lymphoma Claim

A Patent Trial and Appeal Board (PTAB) panel declined to institute an inter partes review (IPR) of a claim directed to a method for treating low grade B-cell non-Hodgkin’s lymphoma. The challenged method required patients to...more

PTAB Makes Precedential Its Multi-Factor Approach To Assessing Follow-On Petitions

by Jones Day on

Serial IPR or CBM petitions challenging the same patent claims have been a recurring issue for the PTAB. On October 18, 2017, the PTAB designated as precedential a portion of a decision by an expanded panel that addressed...more

Aqua Products Levels the Playing Field at the PTAB

by Latham & Watkins LLP on

By giving patent owners a more effective tool for amending claims during an IPR proceeding, the Federal Circuit’s latest en banc decision changes the way stakeholders approach these proceedings. Key Points: - The burden...more

PTAB Institutes IPR Despite Potential Time Bar to Petition

On October 6, 2017, the Patent Trial and Appeal Board (the “Board”) granted institution of inter partes review under 35 U.S.C. § 103(a) of claims directed to an online game. Notably, institution was granted despite the Board...more

PTAB Issues Precedential Opinion Regarding “Follow-On” Petitions

“If at first you don’t succeed, try, try again…” may not be an appropriate mantra for the PTAB. Today, the PTAB made precedential an opinion that was initially issued on September 6, 2017 regarding the appropriateness of...more

Senators and court complain of ‘anti-competitive’ transfer of patent rights to American Indian tribe

We have previously discussed antitrust implications of pharmaceutical companies’ efforts to maximize patent protection for their drugs. Consumers and generic drug makers, for instance, have alleged antitrust violations based...more

For the First Time, PTAB Extends One-Year Period to Issue Final Written Decision

By statute, the Patent Trial and Appeal Board (PTAB) is required to issue a final written decision within one year of the date on which an inter partes review (IPR) is instituted. 35 U.S.C. § 316(a)(11). However, Congress...more

Federal Circuit Shifts Burden of Demonstrating Patentability for Amended Claims in Post-Grant Proceedings

by Alston & Bird on

Since the enactment of the America Invents Act (AIA), the USPTO’s Patent Trial and Appeal Board (PTAB) has required patent owners to bear the burden of proving the patentability of substitute claims in post-grant motions to...more

PTAB Designates as Precedential General Plastic Industrial Co., Ltd. v. Canon Kabushiki Kaisha Decision on Serial Petitions

by Finnegan – AIA Blog on

Today the PTAB designated part of its decision in General Plastic Industrial Co., Ltd. v. Canon Kabushiki Kaisha, IPR2016-01357, Paper 19 (P.T.A.B. Sept. 6, 2017) as precedential. In Section II.B.4.i of the decision—the only...more

Sovereign Immunity and Inter Partes Review

by Knobbe Martens on

Sovereign immunity refers to the doctrine that the government cannot be sued without its consent. Specifically, the 11th Amendment precludes federal courts from exercising jurisdiction over states in suits brought by private...more

The Demise of Rule 36 Judgments in Federal Circuit Decisions Relating to IPRs

The Federal Circuit issued a fairly mundane decision yesterday in Boundary Solutions, Inc. v. Corelogic, Inc.(PTAB October 17, 2017), affirming the PTAB’s decision to cancel all challenged claims of two related patents. Over...more

The PTAB Authorizes Additional Motion To Amend Briefing in View of Aqua Products

by Knobbe Martens on

The Board authorized petitioner Kingston to file a Response to the patent owner’s Reply to petitioner’s Opposition to Motion to Amend, based on the Federal Circuit’s en banc holding that the burden to establish...more

Patents for Billion Dollar Restasis Drug Under Siege

Using an innovative strategy, pharmaceutical company Allergan recently transferred the patents associated with the eye drug, Restasis, to the Saint Regis Mohawk Tribe, in exchange for an exclusive license back. The tribe...more

District Court Allows Mohawk Tribe to Join ANDA Litigation, Finds Patents at Issue Invalid

In something of an anticlimax, Federal Circuit Judge William Bryson, sitting by designation on the bench of the U.S. District Court for the Eastern District of Texas, granted Allergan's motion to join the St. Regis Mohawk...more

IPR and CBM Statistics for Final Written Decisions Issued in September 2017

by Finnegan – AIA Blog on

The Patent Trial and Appeal Board issued 33 IPR and CBM Final Written Decisions in September, cancelling 501 (87.28%) instituted claims while declining to cancel 53 (9.23%) instituted claims. Patent owners conceded 20...more

Collateral Estoppel May Apply If Claims in a Different, but Related Patent, Have Been Litigated Before

In In re Arunachalam, No. 2016-1607, the Federal Circuit affirmed the PTAB decision holding that Dr. Lakshmi Arunachalam is collaterally estopped from asserting claims in U.S. Patent No. 6,212,556 (’556 Patent) because a...more

Petitioner has the Burden of Proving Unpatentability of Amended Patent Claims in IPRs

by Cozen O'Connor on

During an inter partes review (IPR) proceeding concerning Aqua Products, Inc.’s (Aqua) U.S. Patent No. 8,273,183 (the ‘183 patent), the Patent Trial and Appeal Board denied Aqua’s motion to amend certain ‘183 patent claims....more

It May Have Just Gotten a Little Easier to Amend Claims in an IPR

A Factionated Federal Circuit Holds that Petitioner has the Burden to Show Unpatenability - In Aqua Products, Inc., v. Matal, [2015-1177] (October 4, 2017), a plurality of the Federal Circuit en banc held that §316(e)...more

Expanded Panel Ratifies Post-Petition Disclaimer As Legitimate CBM Eligibility Strategy

by Jones Day on

An expanded panel at the PTAB has found that post-Petition claim cancellation is a legitimate strategy for patent owners to avoid CBM jurisdiction. In deciding petitioner’s Institution Decision Rehearing Request in Facebook,...more

Federal Circuit Finds That Petitioners Have Burden Of Persuasion Of Unpatentability Of Claims Amended During An IPR Proceeding,...

by Shook, Hardy & Bacon L.L.P. on

In a much anticipated decision, the Federal Circuit has narrowly decided that a patent owner moving to amend claims during an inter partes review (IPR) does not have the burden of persuasion that the claims are patentable....more

USPTO Will Continue To Apply Lower In Re Packard Indefiniteness Standard During Examination

by Brooks Kushman P.C. on

The USPTO Patent Trial and Appeal Board announced that it will continue to reject claims as indefinite under 35 U.S.C. § 112(b) when they contain words or phrases whose meaning is “unclear,” instead of applying the higher...more

Burden of Proving Unpatentability of Amended Claims Placed on IPR Petitioners

by Jones Day on

In an en banc decision, the Federal Circuit in Aqua Products, Inc. v. Matal addressed the question of who bears the burden of proving that claims amended during inter partes review ("IPR") proceedings are or are not...more

GEMSA’s Patent Onslaught Against Cloud Computing Customers

by Shook, Hardy & Bacon L.L.P. on

Global Equity Management (SA) Pty. Ltd. (“GEMSA”), a foreign non-practicing entity (“NPE”) organized under the laws of Australia, filed almost 40 patent lawsuits in five batches in 2015 and 2016. The majority of these...more

2,021 Results
|
View per page
Page: of 81
Cybersecurity

"My best business intelligence,
in one easy email…"

Your first step to building a free, personalized, morning email brief covering pertinent authors and topics on JD Supra:
Sign up using*

Already signed up? Log in here

*By using the service, you signify your acceptance of JD Supra's Privacy Policy.
*With LinkedIn, you don't need to create a separate login to manage your free JD Supra account, and we can make suggestions based on your needs and interests. We will not post anything on LinkedIn in your name. Or, sign up using your email address.