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Patents Abuse of Process Patent Litigation

Sterne, Kessler, Goldstein & Fox P.L.L.C.

2024 PTAB Year in Review: Analysis & Trends – 2024 PTAB Case Highlights

Abuse of Process and/or Sanctions – 37 C.F.R. § 42.12 - Spectrum Solutions LLC v. Longhorn Vaccines & Diagnostics, LLC, IPR2021-00847, IPR2021-00850, IPR2021-00854, IPR2021-00857 & IPR2021-00860 - Decision...more

Smart & Biggar

Federal Court permits counterclaim as of right against non-asserted patent claims in s. 6(1) PMNOC actions

Smart & Biggar on

On February 17, 2023, the Federal Court ruled that Sandoz and Sun Pharma may counterclaim as of right against non-asserted patent claims in separate actions pursuant to the Patented Medicines (Notice of Compliance)...more

Akin Gump Strauss Hauer & Feld LLP

USPTO Director Issues Second Sua Sponte Precedential Decision Addressing Abuse of Process

In the wake of her October 4, 2022 Precedential OpenSky decision, the United States Patent and Trademark Office Director Katherine Vidal issued another precedential decision further clarifying the actions that should be...more

Akin Gump Strauss Hauer & Feld LLP

USPTO Director Issues Sua Sponte Precedential Decision Addressing Abuse of IPR Process

In a precedential 52-page sua sponte decision, the United States Patent and Trademark Office (USPTO) Director Katherine Vidal addressed several issues of first impression relating to sanctionable misconduct in inter partes...more

Jones Day

OpenSky – Director Finds Abuse Of Process

Jones Day on

In OpenSky Industries, LLC v. VLSI Technology LLC, Under Secretary of Commerce for Intellectual Property, Katherine Vidal, issued a precedential decision regarding OpenSky’s violation of the Director’s express order and...more

Smart & Biggar

First decision under amended PMNOC Regulations: Federal Court finds Amgen’s filgrastim patent obvious

Smart & Biggar on

UPDATE: On November 3, 2020, the Federal Court of Appeal dismissed Amgen’s appeal. See our article here. On April 16, 2020, Justice Southcott of the Federal Court issued the first decision under the amended Patented...more

Smart & Biggar

Infringement based on making/selling under existing NOC for one strength struck from action under the PMNOC Regulations triggered...

Smart & Biggar on

The Federal Court has granted in part Pharmascience’s motion to strike out portions of Teva’s statement of claim under subsection 6(1) of the Patented Medicines (Notice of Compliance) Regulations (PMNOC Regulations) relating...more

McDonnell Boehnen Hulbert & Berghoff LLP

The Supreme Court to Review Enhanced Damages -- Octane Revisited, or Something Entirely Different?

On October 19, 2015, the Supreme Court granted certiorari in two related cases: Halo Electronics, Inc. v. Pulse Electronics, Inc. (Supreme Court docket number 14-1513) and Stryker Corp. v. Zimmer, Inc. (Supreme Court docket...more

McDonnell Boehnen Hulbert & Berghoff LLP

101 Patient Organizations Ask Congress to Curb IPR Abuse

Last month, in a letter to the Senate and House Committees on the Judiciary, 101 patient organizations expressed "concern[] that, as currently written, H.R. 9 [the Innovation Act] falls short of preserving important patent...more

Morrison & Foerster LLP

MoFo IP Newsletter - October 2015

The Survey Says: Tiffany Is Not Generic for A Ring Setting - Last month, the Southern District of New York granted summary judgment to Tiffany & Co. on its trademark infringement claim against Costco Wholesale...more

Morrison & Foerster LLP

A Win for Kyle Bass’s Hedge Fund as the PTAB Dismisses Celgene’s Sanctions Motions

The Patent Trial and Appeals Board (PTAB) dismissed Celgene Corporation’s (“Celgene”) motions for sanctions against the Coalition for Affordable Drugs (“the Coalition”). As we previously reported, the Coalition is an...more

Foley & Lardner LLP

PTAB Refuses To Sanction Kyle Bass

Foley & Lardner LLP on

Many pharmaceutical companies have complained about the IPR petitions filed by Kyle Bass and the Coalition for Affordable Drugs against Orange Book-listed patents covering approved pharmaceutical products, but Celgene Corp....more

Foley & Lardner LLP

PTAB Requests Additional Briefing on Hedge Fund IPR Questions: A Decision May Be Near

Foley & Lardner LLP on

On Sept. 1, 2015, the PTAB issued an order in Coalition for Affordable Drugs (CFAD) v. NPS Pharmaceuticals for the parties to brief the following questions in 7 business days...more

McDermott Will & Emery

Filing Serial Lawsuits for Nuisance Settlements May Be “Exceptional” if Improper Intent Established - SFA Systems, LLC v. Newegg,...

In considering a district court’s denial of attorneys’ fees in view of the Supreme Court’s Octane Fitness standard for finding an “exceptional case” under 35 U.S.C. § 285 (IP Update Vol. 17, No. 5), the U.S. Court of Appeals...more

Foley & Lardner LLP

Kyle Bass Loses Round 1 of IPR Attack Against Pharma/Biotech Patents

Foley & Lardner LLP on

On August 24, 2015, the Patent Trial and Appeal Board (PTAB) declined institution of two petitions filed by Coalition For Affordable Drugs for Inter Partes Reviews (IPRs) of Acorda’s patents (U.S. Patent Nos: 8,007,826,...more

Foley & Lardner LLP

PTAB Denies Institution of Kyle Bass's Ampyra Patent Challenge

Foley & Lardner LLP on

The USPTO Patent Trial and Appeal Board (PTAB) has put an end to Kyle Bass’s Ampyra patent challenge, by denying institution of Inter Partes Review (IPR) proceedings. While many were hoping the PTAB would render a decision...more

Morrison & Foerster LLP

Celgene’s Pending Sanctions Motions against Kyle Bass’s Hedge Fund

The Patent Trial and Appeals Board (PTAB) previously authorized Celgene Corporation (“Celgene”) to move for sanctions against the Coalition for Affordable Drugs (“Coalition”), an entity affiliated with a Kyle Bass hedge fund...more

McDonnell Boehnen Hulbert & Berghoff LLP

PTAB Denies Inter Partes Review Petitions Against Two Acorda Patents

One of the statistics gleaned from Director Michelle Lee's recent blog on the post-issuance review provisions of the America Invents Act is that only 42% of inter partes review petitions have been granted over the past three...more

Foley & Lardner LLP

Will New PTAB Rules Impact IPRs Filed By Kyle Bass Hedge Fund?

Foley & Lardner LLP on

On August 19th, the USPTO released a new set of proposed rules related to post-grant proceedings before the Patent Trial and Appeal Board (PTAB). Among the many offered rules was the addition of a “Rule 11-type certification”...more

Morrison & Foerster LLP

PTAB to Consider Motion for “Abuse of Process” Sanctions Against Kyle Bass Hedge Fund IPR Petition

In a recent order, the Patent Trial and Appeals Board (PTAB) indicated that it will consider a motion for sanctions based on a claim of “abuse of process” in Inter Partes Review (IPR) proceedings filed by the Coalition for...more

McDermott Will & Emery

States Have the Right to Protect Businesses Against NPEs

McDermott Will & Emery on

State of Vermont v. MPHJ Technology Investments, LLC; In re MPHJ Technology Investments, LLC - Addressing the issue of state efforts to reign in non-practicing entities, the U.S. Court of Appeals for the Federal...more

Robins Kaplan LLP

Court Found Case Frivolous For Five-Year Period, But $5.3M Attorney's Fee Request Will Be Trimmed - Touchtunes Music Corp. v....

Robins Kaplan LLP on

Case Number: 1:07-cv-11450-RWS (Dkt. 291) - Judge Sweet unsealed [link to tab 9] his decision of April 3, 2014 [link to tab 10] granting counterclaim defendant TouchTunes' motion for fees and expenses, but said that...more

Moore & Van Allen PLLC

U.S. House Committee Holds Hearing on Abusive Patent Demand Letters

Moore & Van Allen PLLC on

On April 8, 2014, the U.S. House Committee on Energy & Commerce, Subcommittee on Commerce, Manufacturing, and Trade held a hearing “Trolling for a Solution: Ending Abusive Patent Demand Letters.” The purpose of the hearing...more

McDonnell Boehnen Hulbert & Berghoff LLP

MBHB Snippets: Review of Developments in Intellectual Property Law - Volume 12, Issue 1 (Winter 2014): “Patent Trolls” Beware –...

If the mainstream media is to be believed, the patent system is now “broken.” This notion is frequently blamed on the perceived increase in so-called patent assertion entities (“PAEs”), referred to derogatorily in the press...more

McDonnell Boehnen Hulbert & Berghoff LLP

Trolls Better Watch Out This Halloween -- Senator Hatch Introduces Patent Litigation Integrity Act

Just in time for Halloween, Senator Orrin Hatch (R-Utah) has introduced yet another piece of legislation to combat the perceived "patent troll" problem. The Patent Litigation Integrity Act (S. 1612) is aimed at shifting the...more

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