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
Podcast: IP Life Sciences Landscape: Aiding Orange and Purple Book Patent Owners in Developing PTAB Survival Skills
This post reviews developments from the Northern, Southern, Eastern, and Western Districts of Texas in December 2023. ...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
Petitioners and Patent Owners alike have started filing stipulations in district court and at the International Trade Commission to leverage the Fintiv factors in their favor on the issue of discretionary denial at the Patent...more
[co-author: Jay Bober, Summer Associate] 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...more
A patent interference is an inter partes proceeding to determine which party was the first to invent commonly claimed subject matter. An interference is also a viable procedure for challenging the validity of an issued patent...more
On January 8, 2021, the U.S. Supreme Court agreed to hear a case calling for it to abolish or limit the doctrine of assignor estoppel. See Minerva Surgical, Inc. v. Hologic, Inc., et al., No. 20-440, 2021 WL 77248 (U.S. Jan....more
The well covered Apple v. Samsung litigation highlighted the power of design patents and the potentially large profit disgorgement damages available for them. Like utility patents, design patents can be challenged through...more
On July 22, 2020, the U.S. Court of Appeals for the Federal Circuit (Federal Circuit) issued an opinion in Uniloc 2017 LLC v. Hulu, LLC & Netflix, Inc., No. 2019-1686 (Fed. Cir. 2020) authorizing the U.S. Patent Trial &...more
In BioDelivery Sciences Int’l v. Aquestive Therapeutics, Inc., the Federal Circuit confirmed that the PTAB has broad discretion to reconsider institution decisions and terminate instituted proceedings even after trial has...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
The inventor on the patent, Dr. Cheriton, was employed by Cisco as a technical advisor and chief product architect at the time he filed the application that led to the patent. Dr. Cheriton assigned all rights to the...more
A preliminary decision in the District Court of Delaware introduces the possibility that a patentee’s victory on assignor estoppel in the district court could quash a co-pending IPR proceeding at the PTAB. Assignor estoppel...more
In 2016, the US Court of Appeals for the Federal Circuit docketed more appeals from the US Patent and Trademark Office (PTO) than any other venue—a first in its over 30-year history. The post grant proceedings created by the...more
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
The ITC has dealt a significant blow to the use of Inter Partes Review as a defense to a Section 337 investigation. In an order issued this week, the Commission denied a request to stay remedial orders that are currently on...more
In the wake of the high-profile dispute in Apple v. Samsung, design patent procurement and enforcement activity has increased significantly. But practitioners may not appreciate that design patent validity can be attacked...more
The Patent Trial and Appeal Board (“PTAB”) issued Final Written Decisions regarding Cisco’s U.S. Patent Nos. 6,377,577 (the “’577 Patent”) and 7,023,853 (the “’853 Patent”) on May 25, 2017 and U.S. Patent No. 7,224,668 (the...more
In Novartis v. Noven Pharmaceuticals, Inc., the Federal Circuit affirmed the USPTO Patent Trial and Appeal Board (PTAB) decisions invalidating certain claims of two Orange Book-listed Exelon patents. This decision has...more
In 2011, the Leahy-Smith America Invents Act (“AIA”) established new post-issuance procedures for challenging the validity of a granted patent before the Patent Trials and Appeal Board (“PTAB” or “Board”). Inter partes...more
The Federal Circuit recently determined that it lacked jurisdiction to review the Patent Trial and Appeal Board’s determination that assignor estoppel has no affect in an inter partes review (“IPR”). The majority’s decision...more