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Standing United States Patent and Trademark Office

Troutman Pepper

EDVA Judge Trims Down Claims in Trademark Dispute Arising From Business Sale

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A pending EDVA case shows how the failure to address intellectual property rights in an asset sale can mushroom into multinational litigation, including a dispute over trademark rights in the United States....more

Dorsey & Whitney LLP

The Supreme Court Update - June 14, 2024

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On Thursday, June 13, the Supreme Court of the United States issued three decisions: FDA v. Alliance for Hippocratic Medicine, No. 23-235: This case involves an attempt to rescind the Food and Drug Administration’s...more

McDermott Will & Emery

Back to the Future: Prior Third-Party Settlement Doesn’t Impact Future Trademark Licensees

The US Court of Appeals for the Eleventh Circuit ruled that under certain circumstances a trademark licensee can bring a claim against a third party for unfair competition under the Lanham Act even if the licensing agreement...more

McDermott Will & Emery

Don’t Ruin Today’s CNS with Yesterday’s Problems

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The US Court of Appeals for the Fifth Circuit reversed a district court’s trademark invalidity finding based on lack of subject matter jurisdiction because a covenant not to sue (CNS) issued by the trademark owner precluded...more

McDermott Will & Emery

Speculative Injury from Rulemaking Petition Denial Doesn’t Confer Standing

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The US District Court for the District of Columbia affirmed the dismissal of a case alleging that the US Patent & Trademark Office (PTO) violated the Administrative Procedure Act (APA) by denying the plaintiffs’ rulemaking...more

McDonnell Boehnen Hulbert & Berghoff LLP

Guest Post -- Congressional Authority, Agency Discretion, and Legislative Rulemaking

More than a decade ago Congress considered, and rejected, any standing requirements for post-grant proceedings. Congress could hardly have been more explicit. The provisions were debated over a decade. In 2008, statutory...more

McDermott Will & Emery

Hairy Situation: Trademark Act Doesn’t Provide Consumer Standing

The US Patent & Trademark Office Trademark Trial & Appeal Board found that a consumer did not have standing to oppose an application for registration because the consumer failed to establish a commercial interest and injury...more

McDermott Will & Emery

Show Your Work: PTO Director’s Procedure for Issuing Instructions Is Reviewable

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The US Court of Appeals for the Federal Circuit affirmed the district court’s finding under the Administrative Procedure Act (APA) that the substance of the US Patent & Trademark Office (PTO) Director’s instructions is...more

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

Federal Circuit Appeals from the PTAB and ITC: Summaries of Key 2022 Decisions: Best Medical Int’l, Inc. v. Elekta Inc., 46 F.4th...

Varian filed two petitions for IPR of BMI’s ’096 patent, which the Board instituted. Elekta filed copycat petitions and successfully joined Varian’s two instituted IPRs. A previously filed, parallel ex parte reexamination on...more

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

Federal Circuit Appeals from the PTAB and ITC: Summaries of Key 2022 Decisions

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

Hudnell Law Group

Fifth Circuit Denies Patent Owners’ Attempt To Formalize PTAB’s Discretionary Denials

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In 2021, an organization of patent owners and various patent-holding companies sued the USPTO in the Eastern District of Texas.  The patent owners sought to force the USPTO Director to engage in notice-and-comment rulemaking...more

Troutman Pepper

High Court TransUnion Ruling May Enhance PTAB Autonomy

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Although the U.S. Supreme Court’s decision in TransUnion LLC v. Ramirez is not related to either patent or administrative law, its effects on constitutional standing are broad-reaching and may insulate the Patent Trial and...more

Jones Day

Leahy-Corbin Proposals for “Restoring the America Invents Act”

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We recently reported on bipartisan legislation introduced by Senators Patrick Leahy (D) and John Cornyn (R) to significantly revamp certain features of the America Invents Act (AIA), ten years after its debut.  This proposed...more

Morgan Lewis

USPTO Codifies Burden of Persuasion Rules for AIA Amendments at the PTAB

Morgan Lewis on

It has been argued that the Patent Trial and Appeal Board (PTAB or Board) cannot engage in rulemaking through decisions made by its administrative patent judges (APJs), even if those decisions are made precedential, as APJs...more

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

MarkIt to Market® - October 2019: Waiting to Exhale - Clarity Around Enforcement of Trademarks for Cannabis Goods is a Pipe Dream

A recent article in Marijuana Business Daily projected that the total economic impact of the cannabis industry will range from $39.2 billion to $48 billion in 2019. Despite this commercial potential, there remains little...more

McDermott Will & Emery

IPR Time-Bar Clock Starts Ticking on Service of Complaint, Even if Deficient

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In a precedential decision, the Patent Trial and Appeal Board (PTAB) dismissed a petition for inter partes review (IPR), finding that the one-year time limit for filing an IPR petition under 35 USC § 315(b) is triggered even...more

Fenwick & West LLP

Still No Shortage of Viewpoints as Eligibility Debate Moves to the Hill

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Back in March, I reported on the breadth of comments the USPTO received in response to its new Guidance on patent subject matter eligibility. Now, Congress has taken up the issue with a proposed draft of a new bipartisan,...more

Hogan Lovells

When Can A Patent Challenger Appeal The PTO’s Decision To Uphold A Patent?

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Did AVX Suffer A Constitutionally Recognizable Injury? AVX did not need Article III standing to file its IPR petition with the PTO because the PTAB is not an Article III tribunal. Further, the AIA provides that “a party...more

Nutter McClennen & Fish LLP

5 Patent Law Petitions to Watch at the Supreme Court

As the 2018-2019 Supreme Court term nears its end, several consequential patent law petitions still await certiorari rulings before the Justices recess for the summer, while other patent cases are scheduled to be briefed and...more

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

PTAB Strategies and Insights - May 2019

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

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases - May 2019 #3

PATENT CASE OF THE WEEK - AVX Corporation v. Presidio Components, Inc., Appeal No. 2018-1106 (Fed. Cir. May 13, 2019) - Following an inter partes review upholding the patentability of certain challenged claims, the...more

McDonnell Boehnen Hulbert & Berghoff LLP

AVX  Corp. v. Presidio Components, Inc. (Fed. Cir. 2019)

AVX Corporation and Presidio Components are long-standing competitors in the market for electronic components, including capacitors. Their competition has caused animosity, which in turn has resulted in patent infringement...more

Troutman Pepper

Sometimes the Patent Office Has the Last and Only Word

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The Federal Circuit just issued a decision that confirms its stance on Article III standing for appeals from inter partes reviews (IPRs), making it tougher for unsuccessful IPR petitioners to obtain judicial review of U.S....more

Dorsey & Whitney LLP

Rapunzel, Rapunzel Let Down Your Hair for Consumer Oppositions

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In the magical land of the U.S. Patent and Trademark Office, a new chapter has been added to the trademark fairytale: consumers may have a real interest in preventing the exclusive appropriation of merely descriptive or...more

Neal, Gerber & Eisenberg LLP

Client Alert: #FreeRapunzel: Trademark Trial and Appeal Board Loosens Standing Requirements

In denying a doll maker’s motion to dismiss a mom’s opposition to the registration of the trademark RAPUNZEL, the Trademark Trial and Appeal Board (TTAB) has relaxed the already liberal standard for what constitutes a “real...more

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