News & Analysis as of

Patents Denial of Rehearing

Ballard Spahr LLP

USPTO Procedure Adds New Hurdle to PTAB Trial Institution

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On March 26, 2025, the United States Patent and Trademark Office (USPTO) announced changes to the Patent Trial and Appeal Board (PTAB) trial institution process, creating a new bifurcated approach to institution decisions....more

Proskauer - Minding Your Business

The Broad Impact of Edwards v. Meril on the Safe Harbor Provision

The Federal Circuit’s decision in Edwards Lifesciences Corp. v. Meril Life Sciences Pvt. Ltd., has garnered significant attention, especially concerning the application of the “safe harbor” provision under 35 U.S.C. §...more

Goodwin

Issue 40: PTAB Trial Tracker

Goodwin on

Precedential Opinion Addresses Conclusory Expert Declarations - In a precedential opinion in Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 9 (P.T.A.B. Aug. 24, 2022), the Board denied institution of an inter partes...more

White & Case LLP

Biogen rehearing denied: Is SCOTUS the next step?

White & Case LLP on

On March 16, 2022, the Court of Appeals for the Federal Circuit denied Biogen’s petition for en banc review in Biogen International GmbH et al. v. Mylan Pharmaceuticals Inc. ("Petition Denial"), in which a Federal Circuit...more

Haug Partners LLP

Will the Newest American Axle Case Create a Panel-Dependent Body of Law or Provoke the Supreme Court to Take Action? How the...

Haug Partners LLP on

On October 23, 2020, in a remarkable order demonstrating how a “bitterly divided” Federal Circuit views post-Alice patent eligibility jurisprudence, the court denied the motion of American Axle & Manufacturing, Inc. (“AAM”)...more

McDonnell Boehnen Hulbert & Berghoff LLP

Is It Time for Federal Circuit to Rethink Its Subject Matter Eligibility Jurisprudence? 

The Federal Circuit's inchoate attempts to fashion a consistent, rational application of the Supreme Court's recent subject matter eligibility jurisprudence, while understandably Herculean in view of the difficulties inherent...more

Morrison & Foerster LLP - Federal Circuitry

Agreeing to Disagree, en Banc Style: How Often Do Judges Dissent From Denial of Rehearing En Banc?

As we mentioned in one of our previous posts, the Federal Circuit recently denied a long-pending petition for rehearing en banc in American Axle & Manufacturing v. Neapco Holdings, a Section 101 case.  More than 8 months...more

Sunstein LLP

Federal Circuit Averts Huge Disruption to the Patent System by Fashioning a Cure to the Status of Administrative Judges

Sunstein LLP on

In October 2019, a Federal Circuit panel concluded that the status of Administrative Patent Judges (APJs) on the Patent Trial and Appeal Board (PTAB) at the U.S. Patent and Trademark Office (PTO) violated the Appointments...more

White & Case LLP

Federal Circuit Denies Rehearing of Decision Finding the Appointment of PTAB Judges Unconstitutional

White & Case LLP on

On March 23, 2020, the Court of Appeals for the Federal Circuit ("CAFC") issued a per curiam order denying all filed petitions for rehearing en banc and panel rehearing in Arthrex, Inc. v. Smith & Nephew, Inc. No. 18-2140...more

Mintz - Intellectual Property Viewpoints

Federal Circuit Denies En Banc Rehearing of Panel Decision in Arthrex, Which Held PTAB Appointments Were Unconstitutional

This week the en banc Federal Circuit declined to revisit a panel ruling that found the appointment of Administrative Patent Judges (“APJs”) of the Patent Trial and Appeal Board (“PTAB”) violates the Appointments Clause of...more

McDonnell Boehnen Hulbert & Berghoff LLP

Federal Circuit Denies Rehearing En Banc in Arthrex

Last fall, the Federal Circuit held in Arthrex, Inc. v. Smith & Nephew, Inc. that the way the U.S. Patent and Trademark Office (“USPTO”) had appointed administrative patent judges (“APJs”) to the Patent Trial and Appeal Board...more

Foley & Lardner LLP

Consisting Essentially Of Trouble

Foley & Lardner LLP on

The Federal Circuit decision in HZNP Medicines LLC v. Horizon Pharma USA, Inc. is a good reminder that even standard “patent lingo” can cause trouble down the line. Now that the court has denied rehearing en banc (with Judges...more

McDonnell Boehnen Hulbert & Berghoff LLP

NZNP Finance Ltd. v. Actavis Laboratories UT, Inc. (Fed. Cir. 2020)

On Tuesday, the Federal Circuit issued a per curiam Order in NZNP Finance Ltd. v. Actavis Laboratories UT, Inc., denying a petition for rehearing en banc filed by Plaintiffs-Appellants HZNP Finance Ltd. and Horizon...more

Jones Day

Strategic Decision to Forgo Expert Does Not Allow a “Second Bite”

Jones Day on

The PTAB recently denied petitioner’s request for rehearing of a decision denying institution of inter partes review, rejecting the argument that the Board’s denial was based on an erroneous analysis of the “non-exhaustive”...more

Knobbe Martens

Federal Circuit Review - July 2019

Knobbe Martens on

Broad Claim Language and Unpredictability in the Art Lead to Non-Enablement - In Enzo Life Sciences, Inc. v.  Roche Molecular Systems, Inc., Appeal Nos. 2017-2498, -2499, -2545, -2546, broad patent claims were invalid as...more

Knobbe Martens

Federal Circuit Denies En Banc Review Regarding Eligibility of Medical Diagnostic Patents

Knobbe Martens on

ATHENA DIAGNOSTICS, INC. v. MAYO COLLABORATIVE SERVICES, LLC - Before Prost, Newman, Lourie, Dyk, Moore, O’Malley, Reyna, Wallach, Taranto, Chen, Hughes, and Stoll. Petition for Rehearing En Banc....more

Knobbe Martens

Federal Circuit Review - March 2019

Knobbe Martens on

Federal Circuit Determines Time-Barred Petitioner Joined to an IPR Has Appellate Standing - In Mylan Pharmaceuticals Inc. v. Research Corporation Tech., Appeal Nos. 2017-2088, -2089, -2091, the Federal Circuit held that a...more

Fenwick & West LLP

Full Federal Circuit Defers Addressing Venue Based on Presence of Servers in District

Fenwick & West LLP on

On February 5, 2019, in a per curiam order, the United States Court of Appeals for the Federal Circuit denied Google’s petition for rehearing en banc, and deferred for another day the question of whether the presence of...more

Knobbe Martens

In Re: Google LLC

Knobbe Martens on

Federal Circuit Summaries - Before Prost, Newman, Lourie, Dyk, Moore, O’Malley, Reyna, Wallach, Taranto, Chen, Hughes, and Stoll. Dissenting opinion to denial of petition for rehearing written by Reyna and joined by Newman...more

Knobbe Martens

Xitronix Corporation v. KLA-Tencor Corporation [Order]

Knobbe Martens on

Federal Circuit Summaries - Before Prost, Newman, Mayer, Lourie, Dyk, Moore, O’Malley, Reyna, Wallach, Taranto, Chen, Hughes, and Stoll. Petition for panel rehearing and rehearing en banc. Summary: Judge Newman...more

Schwabe, Williamson & Wyatt PC

Latest Federal Circuit Court Cases - June 2018

Aatrix Software, Inc. v. Green Shades Software, Inc., Appeal No. 2017-1452 (Fed. Cir. May 31, 2018) and Berkheimer v. HP Inc., Appeal No. 2017-1437 (Fed. Cir. May 31, 2018) - In these two, published, precedential orders...more

Knobbe Martens

In Re: Durance

Knobbe Martens on

Federal Circuit Summaries - Before Lourie, Reyna, and Chen. Appeal from the Patent Trial and Appeal Board (“PTAB”). Summary: Nothing in § 41.41(b)(2) bars a reply brief from addressing new arguments raised in the...more

Akin Gump Strauss Hauer & Feld LLP

No Rehearing Because of Hindsight Declaring

The Patent Trial and Appeal Board (PTAB) denied a petitioner’s request for rehearing of its decision declining institution of inter partes review of a patent owned by Bose Corporation (“Patent Owner.”) The PTAB upheld its...more

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