Supplemental Examination: A Tool Worth Further Consideration - Patents: Post-Grant Podcast
Six Things You Should Know About Inter Partes Review
JONES DAY TALKS®: PTAB Litigation Blog Reaches 500 Posts ... and the PTAB Reacts to COVID-19
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Tocilizumab Challenged Claim Types in IPRs: Claims are counted in each IPR, so claims from the same patent challenged in multiple IPRs are counted more than once. Within each IPR, claims are counted only once, whether they...more
On May 7, 2025, the Federal Circuit issued a decision in Ingenico, Inc. v. IOENGINE, LLC, effectively holding that 35 U.S.C. § 315(e)(2) estoppel cannot preclude an IPR petitioner from advancing in a district court trial an...more
The Federal Circuit issued a precedential opinion on March 4, 2025, that serves as valuable guidance for product-by-process claims, particularly in the context of inherency in claim construction. In Restem, LLC v. Jadi Cell,...more
Recent changes at the U.S. Patent Trial and Appeal Board (PTAB) have brought uncertainty to inter partes review and post-grant review practitioners before the U.S. Patent and Trademark Office (PTO). These procedural and...more
The US Court of Appeals for the Federal Circuit affirmed a Patent Trial & Appeal Board patentability finding, explaining that an anticipation analysis for a product-by-process claim focuses on the product and not the process....more
The recent decision by the Federal Circuit in Honeywell International Inc. v. 3G Licensing, S.A., issued on January 2, 2025, overturned the Patent Trial and Appeal Board’s (“the Board”) factual and legal holdings in the final...more
ACI’s 8th Annual Paragraph IV Disputes Master Symposium returns in person to Chicago on September 21-22! Join leading pharmaceutical patent litigators for brand name and generic drug companies to receive up-to-the-minute...more
Intel Corp. petitioned for six inter partes reviews (IPRs) challenging the validity of U.S. Patent No. 9,608,675, a patent directed to power management in wireless devices. In each proceeding, Intel and patent-owner Qualcomm...more
[co-author: Jamie Dohopolski] Last year, the continued global COVID-19 pandemic forced American courts to largely continue the procedures set in place in 2020. The U.S. Court of Appeals for the Federal Circuit was no...more
Join the conference that the “who’s who” of Hatch-Waxman litigators have designated as the forum which sets the standards for Paragraph IV practice. ACI’s Paragraph IV Litigation Conference is returning LIVE & IN-PERSON to...more
[co-author: Yuke Wang, Patent Agent] The PTAB Strategies and Insights newsletter provides timely updates and insights into how best to handle proceedings at the USPTO. It is designed to increase return on investment for all...more
As we demonstrated in our own successful appeal, Arendi S.A.R.L. v. Apple Inc. (Fed. Cir. 2016), a petition for inter partes review (“IPR”) may fail when an expert declaration lacks detailed explanation. An expert’s...more
Henny Penny petitioned for inter partes review (IPR) of Frymaster’s U.S. Patent 8,497,691. The ’691 patent relates to deep fryers and describes a system for measuring the state of cooking oil degradation with a “total polar...more
A Central District of California judge recently granted summary judgment of no obviousness based on inter partes review (IPR) estoppel because the only prior art references used to challenge patent validity could have been...more
In Think Prod., Inc. v. ACCO Brands Corp., No. 18-CV-07506, 2019 WL 6609427, at *1 (N.D. Ill. Dec. 5, 2019), the District Court addressed whether the plaintiff patent ower was collaterally estopped from arguing validity in...more
On December 11, 2019, the PTAB designated two additional decisions as “informative.” Such informative decisions are not binding on subsequent panels, but are meant to provide guidance on recurring issues encountered by PTAB...more
The US Court of Appeals for the Federal Circuit addressed for the first time whether the retroactive application of inter partes review (IPR) proceedings to pre-America Invents Act (AIA) patents is an unconstitutional taking...more
One-year Clock for Filing IPR Petition Applies to Litigants and Parties that Become Privies of the Litigant Prior to Institution. In Power Integrations, Inc v. Semiconductor Components, Appeal No. 2018-1607, the Federal...more
Reasonably Continuous Diligence Is Not Negated If an Inventor Works On Improvements or Evaluates Alternatives to the Claimed Invention - In ATI Technologies ULC v. IANCU, Appeal Nos. 2016-2222, -2406, -2608, the Federal...more
DuPont petitioned for inter partes review of Synvina’s patent, which was directed to a method of oxidizing a chemical using a specific temperature range, pressure range, catalyst, and solvent. The prior art disclosed the...more
Eleven of thirteen cannabis patent claims survive PTAB challenge. Insys Development Company, Inc. filed a petition requesting inter partes review of claims 1-13 of GW Pharmaceutical Ltd.’s patent directed to the use of...more
Federal Circuit Summary - Before Lourie, Chen, and Stoll. Appeal from the Patent Trial and Appeal Board. Summary: A generic pharmaceutical company had standing to appeal the Board’s decision in an IPR that claims of a...more