News & Analysis as of

Settlement Agreements Inter Partes Review (IPR) Proceeding

Venable LLP

Regeneron and Biocon Settle Litigation over EYLEA® Biosimilar Yesafili™

Venable LLP on

On April 15, 2025, Biocon announced it reached a settlement agreement with Regeneron, dismissing CAFC Appeal No. 24-2002 and Case No. 1:22-cv-00061 (N.D.W. Va.) / MDL 1:24-md-03103 (N.D.W. Va.) and allowing the...more

McDermott Will & Emery

Clean Up on Aisle PTAB: Clarification of Discretionary Denial Practice

The US Patent & Trademark Office (PTO) issued a Notice of Proposed Rulemaking (NPRM) for inter partes review (IPR) and post-grant review (PGR) proceedings before the Patent Trial & Appeal Board, seeking to codify existing...more

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

2022 Design Patents Year in Review: Analysis & Trends

Last year, in our inaugural issue of “The Year in Review,” we reported that since the landmark jury verdict in the IP litigation between Apple and Samsung in 2012, which awarded more than $1B to Apple for infringement of...more

Knobbe Martens

Federal Circuit Review - February 2022

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Ordered To Agree: Binding Settlement Agreement Provision Found Despite Absence of Singular, Executed Agreement - In Plasmacam, Inc. v. Cncelectronics, LLC Appeal No. 21-1689, the Federal Circuit held that an agreement on...more

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases - February 2022

The Federal Circuit issued numerous precedential opinions last week, two of which answered long simmering questions about inter partes reviews (IPRs). Below we discuss a case addressing whether admissions of prior art in the...more

Pillsbury Winthrop Shaw Pittman LLP

PTAB Precedential Decision Requires Filing of Collateral Agreements

Parties not wishing to have agreements unrelated to the settlement made of record before the PTAB should not refer to those agreements in the PTAB settlement agreement. Any agreement referenced in a settlement agreement...more

Miller Canfield

IP Litigation Quarterly Update

Miller Canfield on

Introducing the IP Litigation Quarterly Update, a quarterly newsletter summarizing noteworthy and interesting opinions related to intellectual property law. In this first edition covering the first quarter of 2020, the...more

Kramer Levin Naftalis & Frankel LLP

Biosimilar Litigation Trends and Lessons Learned in 2019

It has been nearly 10 years since the U.S. Biosimilars Pathway (the Biologics Price Competition and Innovation Act) was enacted. The first biosimilar product in U.S. history was approved and launched in 2015. Ten biosimilars...more

McDermott Will & Emery

Can You Hear Me Now? PTAB’s Reliance on Reference in Non-Instituted Ground Is Improper

McDermott Will & Emery on

The US Court of Appeals for the Federal Circuit reversed a finding of obviousness by the Patent Trial and Appeal Board (PTAB), concluding that the finding was based on a reference that was included only in a non-instituted...more

Knobbe Martens

Common Forum Selection Clause in License Agreement Prevents Patent Validity Challenge at PTAB

Knobbe Martens on

On April 18, 2019, the Federal Circuit issued a non-precedential opinion that is making stakeholders in the patent licensing community sit up and take note. The case was Dodocase VR, Inc. v. MerchSource, LLC, holding that a...more

Knobbe Martens

Cook Medical Petitions for Inter Partes Review (IPR) of Medtronic “Jervis” Patent

Knobbe Martens on

On November 9, 2018, Cook Medical LLC filed a petition with the Patent Trial and Appeal Board requesting inter partes review (IPR) of U.S. Patent No. 6,306,141, assigned to Medtronic Vascular, Inc. The ‘141 Patent is...more

Jones Day

Be Advised: Settlement Does Not Necessarily End An IPR Or PGR

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The AIA expressly anticipates and permits a patent owner and a petitioner to reach a settlement during the pendency of a post-grant proceeding. For IPRs, 35 U.S.C. § 317(a) is entitled “Settlement” and provides, in pertinent...more

Jones Day

PTAB Terminates IPR Just Under the Statutory Wire

Jones Day on

The patent statute requires the Patent Trial and Appeal Board (PTAB) to issue a final written decision within one year of instituting an Inter Partes Review (IPR). The recent case of Petroleum Geo-Services Inc. v. Westerngeo...more

Goodwin

Merck Sharpe & Dohme and Genentech Jointly Move to Terminate Cabilly IPR

Goodwin on

Merck Sharpe & Dohme and Genentech have filed a Joint Motion to Terminate IPR2016-00710, relating to U.S. Patent No. 6,331,415. As we reported earlier, the ‘415 patent is known as one of the “Cabilly” patents, and is...more

WilmerHale

Settling IPRs and District Court Litigation: Strategic Considerations for Resolving a Dispute

WilmerHale on

Inter partes review proceedings have become a popular mechanism for defendants to challenge the validity of a patent that is asserted in a district court litigation. Because IPRs typically move more quickly than district...more

Pillsbury Winthrop Shaw Pittman LLP

PTAB Refuses to Honor “No-Challenge” Clauses

Thankfully, that patent case you litigated a few years back is long gone in the rear-view mirror. As the plaintiff, you received a nice lump sum payment and a going forward royalty. Even better, the defendant agreed to never...more

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