The Federal Circuit has issued an opinion on the burden of proof for establishing estoppel in a case involving an inter partes review (IPR) petition. The case is Ironburg Inventions Ltd. v. Valve Corp....more
Google petitioned for IPR of two patents owned by IPA. Each of the asserted grounds relied on the Martin reference. Martin lists as authors the two inventors of the challenged patents and a third person, Dr. Moran. During...more
As part of the recovery from the global COVID-19 pandemic, the U.S. Court of Appeals for the Federal Circuit took steps to return to normal operations. It began requiring live oral arguments in August 2022 and, by November,...more
The Federal Circuit today appealed determinations by the Patent Trial and Appeal Board (PTAB) in an inter partes review in American National Manufacturing v. Sleep Number Corp., in an opinion by Judge Cunningham. The opinion...more
In Munchkin, Inc. v. Tomy International, Inc., 1-18-cv-06337 (NDIL May. 24, 2022) the Court considered the permissible extent of attorney participation in the preparation of an expert report. The Court did so in response to...more
The inter partes review (IPR) provisions of the Leahy-Smith America Invents Act have been castigated by many for the propensity of the Patent Trial and Appeal Board (PTAB) to find claims challenged in these proceedings to be...more
Case Name: Par Pharmaceutical Inc. v. Eagle Pharmaceuticals Inc., No. 18-0823-CFC-JLH, 2021 WL 3886418 (D. Del. Aug. 31, 2021) (Connolly, J.) - Drug Product and Patent(s)-in-Suit: Vasostrict® (vasopressin); U.S. Patents...more
In Hytera Communications Corp. Ltd. v. Motorola Solutions, Inc., 1-17-cv-01794 (NDOH 2021-04-29, Order) (Donald C. Nugent), the District Court denied defendant’s motion for attorney fees under 35 U.S.C. § 285, determining...more
The U.S. Patent and Trademark Office (Patent Office) has issued final rules in inter partes review (IPR), post-grant review (PGR) and the transitional program for covered business method patents (CBM) proceedings...more
The Patent Trial and Appeal Board (“PTAB”) of the United States Patent and Trademark Office (“USPTO”) issued a final rule regarding the allocation of the burden of persuasion for the patentability of substitute claims on...more
On January 28, 2021, the PTAB held a Boardside Chat webinar at which three PTAB judges discussed four recent developments related to America Invents Act (“AIA”) trials....more
In Uniloc 2017 LLC v. Hulu, LLC, Netflix, Inc. (July 22, 2020), the Federal Circuit held that the Patent Trial and Appeal Board (“the PTAB”) may consider, in its review of substitute claims proposed in an inter partes review...more
GRÜNENTHAL GMBH v. ANTECIP BIOVENTURES II LLC, PGR2019-00026, -00027, 00028 (PTAB, July 28, 2020) - The PTAB issued decisions in a trio of post-grant reviews. One of the defenses put forward by the Patent Owner was that...more
The PTAB’s evolving evidentiary standards often perplex petitioners and patent owners. Historically, significant party effort has gone into attempting to establish that non-patent literature, such as articles, textbooks,...more
In a recent decision, the PTAB admitted that it erred in its prior determination of unpatentability, and authorized supplemental briefing on the patentability of substitute claims. See Rimfrost AS v. Aker Biomarine Antarctic...more
A recent ruling from the Patent and Trial Appeal Board (PTAB) highlights the critical role that collateral estoppel (also known as issue preclusion) can play in inter partes review (IPR) proceedings. In a final written...more
CAMPBELL SOUP COMPANY v. GAMON PLUS, INC. Before Prost, Newman and Moore. Appeal from the Patent Trial and Appeal Board. Summary: A proper primary reference can have slight differences in design if, in light of overall...more
In the first-ever final written decision in a post-American Invents Act (AIA) derivation proceeding, the Patent Trial and Appeal Board (PTAB) found that the petitioner had not shown that an inventor named in the respondent’s...more
The Federal Circuit recently affirmed final written decisions in two inter partes reviews by holding that the patent owner was collaterally estopped from relitigating the threshold issue of whether a prior art reference was a...more
PATENT CASE OF THE WEEK - Acorda Therapeutics, Inc. v. Roxane Laboratories, Inc., Appeal Nos. 2017-2078, -2134 (Fed. Cir. Sept. 10, 2018) The Federal Circuit affirmed the district court’s ruling following a bench trial,...more
In its en banc decision in Aqua Products, Inc. v. Matal, the Federal Circuit addressed the question of who bears the burden of proving that claims amended in IPR proceedings are or are not patentable. The decision, issued on...more
On February 5, 2018, the PTO filed a petition for rehearing of Bosch Auto. Serv. Sol’ns, LLC v. Matal, 878 F.3d 1027 (Fed. Cir., Dec. 22, 2017). The petition asks the panel “not . . . to alter its judgment, but only to...more
As post-Actavis antitrust litigation over so-called “reverse payment” patent settlements proceeds, courts continue to provide further illumination about what evidence a private plaintiff would need to offer to survive summary...more
We pointed out in a recent article that, based on recent decisions by the Courts of Appeals for the First and Third Circuits, private antitrust plaintiffs seeking damages from so-called “reverse-payment” settlement agreements...more
The Supreme Court could issue its decision in the Amgen v. Sandoz biosimilar patent dance case any day now. Last week I participated in a panel discussion with industry stakeholders considering how the decision might–or might...more