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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
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
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
Rituximab Challenged Claim Types in IPR and Litigation: Claims include those challenged in litigations and IPRs. Claims are counted in each litigation and IPR, so claims from the same patent challenged in multiple...more
Two recent memoranda from the Patent Trial and Appeal Board (PTAB or Board) have sought to clarify the factors by which boards will evaluate discretionary denial under Fintiv. This guidance follows the U.S. Patent and...more
In less than a month, the United States Patent and Trademark Office (“USPTO”) has dramatically reformed its policies and procedures for exercising its discretion to deny institution of AIA post-grant proceedings. First, on...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
In anticipating a dispute over whether the America Invents Act would apply, Petitioner MPL Brands NV, Inc. (“MPL”) filed concurrent petitions for both inter partes review and post-grant review of U.S. Patent No. 11,932,441...more
The PTAB recently denied institution of inter partes review of a patent directed to deep packet inspection in software defined networks in Juniper Networks, Inc. v. Orckit Corporation, IPR2024-00895. Applying the General...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
The Director of the USPTO initiated sua sponte review of a PTAB panel’s decision to impose sanctions based on patentee’s conduct during IPR proceedings.The PTAB cancelled all of patentee’s claims, including those not...more
Before Moore. Appeal from the Patent Trial and Appeal Board. Summary: Standing based on potential infringement liability requires concrete plans for future activity which will create a substantial risk of future infringement...more
In Pacific Biosciences of California, Inc. v. Personal Genomics Taiwan, Inc., the Federal Circuit recently affirmed two PTAB decisions in IPRs filed by Pacific Biosciences of California, Inc. (PacBio) that challenged a...more
This post reviews developments from the Northern, Southern, Eastern, and Western Districts of Texas in December 2023. ...more
Federal Circuit Judge William Bryson, sitting by designation in the District of Delaware, ruled on summary judgment that inter partes review (IPR) estoppel does not apply to device art, even if the device is cumulative of...more
In an unprecedented PTAB decision involving Spectrum Solutions LLC (“Spectrum”) (Petitioner) and Longhorn Vaccines & Diagnostics (“Longhorn”) (Patent Owner), the Board found all five challenged patents invalid and imposed...more
The US Court of Appeals for the Federal Circuit affirmed the Patent Trial & Appeal Board’s patentability determination, finding that the patent challenger waived an argument it attempted to incorporate by reference to another...more
Since the introduction of inter partes review proceedings in 2012, AIA trial practice has been constantly evolving and the USPTO has signaled that big changes may be ahead. Starting with the USPTO director’s 2022 memorandum...more
Hosted by ACI, 18th Annual Paragraph IV Disputes Conference returns to New York City for another exciting year with curated programming that not only addresses the hot topics, but also puts them within the context of pre-suit...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
The Federal Circuit recently denied a petition for rehearing and a petition for rehearing en banc of a precedential panel decision regarding forum selection clauses. Nippon Shinyaku Co., Ltd. v. Sarepta Therapeutics,...more
On February 8, 2022, the U.S. Court of Appeals for the Federal Circuit determined that certain restrictions on the ability to challenge the validity of patents are enforceable. Without such restrictions, companies that are...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