Is Canopy Growth v. GW Pharma Headed to the Federal Circuit? We have been closely monitoring patent litigation in the cannabis space, including suits related to cannabis extraction technology such as the action filed in...more
Thank you for reading the February 2022 issue of Sterne Kessler's MarkIt to Market® newsletter. This month, we discuss trademark rights in relation to appropriation art, including NFTs, and provide an update on cannabis...more
In vacating an unpatentability decision by the Patent Trial and Appeal Board (Board), the US Court of Appeals for the Federal Circuit found that the rights of a joined party to an inter partes review (IPR) proceeding applies...more
Last week, the Federal Circuit had the occasion to address anew the requirements for standing to appeal an adverse decision of the Patent Trial and Appeal Board in an inter partes review proceeding under Article III of the...more
The PTAB designated at least three more decisions as precedential. Of note, two of the cases rely on the Federal Circuit’s en banc decision in Click to Call, which is scheduled for argument at the Supreme Court on December 9,...more
The Federal Court has now released the first decision in which the scope of Section 53.1 of the Canadian Patent Act—the so-called “file wrapper estoppel” provision—has been considered. We recently published an IP Update...more
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
On March 8, 2019, Justice Fothergill granted Valeant Canada’s application for an order prohibiting the Minister of Health from issuing a notice of compliance to Generic Partners for its generic version of Valeant’s GLUMETZA,...more
Smith & Nephew petitioned for inter partes review (IPR) of Arthrex’s patent. After the petition was filed, but before the Board issued an institution decision, Arthrex statutorily disclaimed all the challenged claims under 37...more
RPX petitioned for inter partes review of ChanBond’s ’822 patent. The Board instituted the IPR and determined that RPX did not show any challenged claim to be unpatentable. RPX appealed the final written decision to the...more
PTAB May Invalidate Claims on Reconsideration Based on Grounds Raised in the Institution Decision that Were Not Originally Instituted - In AC Technologies S.A., V. Amazon.Com, Inc., Blizzard Entertainment, Inc., Appeal No....more
Joinder Petitioners Have Standing To Appeal - In Mylan v. Research Corporation Tech (RCT), the Patent Owner, who won at the PTAB, argued that time barred joinder petitioners (Mylan, Breckenridge and Alembic - Appellants)...more
In 2018, the U.S. Court of Appeals for the Federal Circuit docketed close to 600 appeals from the U.S. Patent and Trademark Office (USPTO). That is the second highest number since starting to hear post-American Invents Act...more
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 all stakeholders looking at the entire...more
In Friday’s decision in Mylan Pharmaceuticals Inc. v. Research Corp. Technologies, Inc., No. 17-2088 (Fed. Cir. Feb. 1, 2019), the Federal Circuit held that a time-barred petitioner that is joined into a case has an...more
Federal Circuit Summary - Before Lourie, Bryson, and Wallach. Appeal from the Patent Trial and Appeal Board. Summary: A party joined to an inter partes review has the right to appeal the Board’s final written decision...more
Federal Circuit Summary - Before Lourie, Chen, and Stoll. Appeal from the Patent Trial and Appeal Board. Summary: A generic pharmaceutical company had standing to appeal the Board’s decision in an IPR that claims of a...more
A recent Federal Circuit decision (DuPont v. Synvina) addressed two key issues in PTAB proceedings: burden shifting and standing to appeal....more
As previously reported, the amended Patented Medicines (Notice of Compliance) Regulations (“Regulations”) came into force on September 21, 2017, heralding significant changes to the landscape for pharmaceutical companies in...more
A few weeks ago, we posted an article discussing the Federal Circuit’s decision in Arthrex, Inc. v. Smith & Nephew, Inc., 880 F.3d 1345 (Fed. Cir. 2018). (see Disclaimer Before Institution May Not Avoid Adverse Judgment...more
In a split decision that drew separate opinions from each of the panel members, the Federal Circuit recently affirmed the PTAB’s decision to enter an adverse judgment against a patentee, even though the patentee had properly...more
In Arthrex, Inc. v. Smith & Nephew, Inc., et al., slip op. 2017-1239, the Federal Circuit affirmed the Board’s decision to enter an adverse judgment following Patent Owner’s disclaimer of all claims challenged in an inter...more
Federal Circuit Summaries - Before Newman, Dyk, and O’Malley. Appeal from the Patent Trial and Appeal Board. Summary: The PTAB may enter an adverse judgment against a patent owner where, before issuing an institution...more
In Allied v. OSMI, the Circuit affirms dismissal of a declaratory judgment action even though Allied’s Mexican distributors had been sued in Mexico on a corresponding Mexican patent. In a first Waymo v. Uber case, the panel...more