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Patents Patent Trial and Appeal Board Administrative Agencies

Jones Day

PTAB Pendulum Swings in Favor of Discretionary Denial

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Recent developments at the USPTO suggest a significant shift in favor of the PTAB exercising discretionary denial and uncertainty on behalf of parties to PTAB proceedings.  ...more

K&L Gates LLP

Ready, Fire, Aim – Picking the Correct Vehicle for Constitutional Challenges to Administrative Agency Decisions

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An administrative agency lacks jurisdiction to decide a constitutional challenge that asks it to act contrary to its statutory provisions. See, e.g., Riggin v. Off. of Senate Fair Emp. Pracs., 61 F.3d 1563, 1565 (Fed. Cir....more

BakerHostetler

How Administrative Law Became the Hottest Topic in Patent Disputes at the Federal Circuit

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What comes to mind when you think of “hot topics” in patent law? Subject matter eligibility? Obviousness? Damages? Quietly, administrative law has moved to the top of the list of issues that consume the attention of the Court...more

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

Federal Circuit Appeals From The PTAB: Summaries of Key 2019 Decisions: Kisor v. Wilkie, 588 U.S. __, 139 S. Ct. 2400 (2019)

James Kisor, a Korean War Veteran, asked the Supreme Court to overrule a longstanding presumption that courts defer to an executive agency’s reasonable interpretation of its own regulation, a principle known as Auer...more

Ladas & Parry LLP

Return Mail Inc. v. United States Postal Service

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On June 20, 2019, the United States Supreme Court held that government entities could not be considered “persons” entitled to challenge patents owned by others before the Patent Trial and Appeal Board (PTAB)....more

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

PTAB Strategies and Insights - June 2019: Supreme Court Eliminates Government as a Party Who Can File AIA Action at PTAB

In Return Mail, Inc. v. U.S. Postal Serv., 17-1594, Justice SOTOMAYOR wrote for the majority to overturn a Federal Circuit decision that the U.S. Postal Service had standing to petition for covered business method review. The...more

Jones Day

Federal Agencies May Not Challenge Patents in AIA Post-Issuance Proceedings

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The Supreme Court ruled in Return Mail that a federal agency is not a "person" who may challenge an issued patent in inter partes review, post-grant review, or CBM review under the AIA. In its 6–3 decision in Return Mail,...more

Faegre Drinker Biddle & Reath LLP

Return Mail v. Postal Service: The Supreme Court Rules the Federal Government May Not Petition for Institution of Post-Issuance...

In a 6-3 opinion authored by Justice Sotomayor, the Supreme Court held that the Federal Government is not a “person” capable of petitioning the Patent Trial and Appeal Board (“PTAB”) to institute patent review proceedings...more

Williams Mullen

Supreme Court Holds that Government Agencies May Not Use AIA Proceedings to Challenge Patents

Williams Mullen on

On June 10, 2019 the United States Supreme Court held in Return Mail, Inc. v. United States Postal Service, 587 U.S. ____ (2019) that agencies of the federal government cannot challenge the validity of a patent via USPTO...more

Stinson LLP

Supreme Court Decides Federal Government May Not Challenge Patent Validity in the Patent Office Under the AIA

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On June 10, 2019 in a 6-to-3 decision, Return Mail v. United States Postal Service, No. 17–1594, the U.S. Supreme Court decided that, based on principles of statutory interpretation, a federal agency is not a “person” that...more

Bradley Arant Boult Cummings LLP

High Court Says Federal Agencies Cannot Seek AIA Patent Challenges

Earlier this week, the United States Supreme Court reversed the Federal Circuit’s finding that the government is a “person” eligible to petition for post-issuance AIA review proceedings. This 6-3 decision, Return Mail, Inc....more

Knobbe Martens

The Federal Circuit Finds Tribal Sovereign Immunity does not Apply in IPR

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On July 20, 2018, the Federal Circuit held that tribal sovereign immunity is not available as a defense in IPR. Allergan Pharmaceuticals owned patents that it had asserted in litigation against various generic...more

Knobbe Martens

Saint Regis Mohawk Tribe v. Mylan Pharmaceuticals Inc.

Knobbe Martens on

Federal Circuit Summary - Before Dyk, Moore, and Reyna. Appeal from the Patent Trial and Appeal Board. Summary: Tribal sovereign immunity does not shield Indian Tribe owned patents from IPR. ...more

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

Federal Circuit Declares Tribal Sovereign Immunity Cannot Be Asserted In Inter Partes Review Proceedings

U.S. Court of Appeals for the Federal Circuit affirmed a U.S. Patent Trial and Appeal Board (PTAB) decision finding that tribal sovereign immunity does not apply to Inter Partes Review (IPR) proceedings. In so holding, the...more

Jones Day

Are Inter-Partes-Review Proceedings Constitutional? Supreme Court Will Weigh In

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Today, the Supreme Court agreed to hear a challenge to the constitutionality of inter partes review...more

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