November 21, 2016 | Blog | By Brad M Scheller, Vincent Ferraro
On November 15, 2016, a split panel of the Federal Circuit, consisting of Judges Moore and O’Malley, ruled that the antedating standard demanded by the Patent Trial and Appeal Board, requiring a “continuous exercise of reasonable diligence,” was too exacting and in conflict with Federal Circuit precedent.
Failure to Let Patent Owner Address Unpatentability Arguments Relied on by the Board Violates Administrative Procedures
November 15, 2016 | Blog | By Brad M Scheller, Vincent Ferraro
The Federal Circuit has ruled that the Patent Trial and Appeal Board cannot deny Patent Owner an opportunity to address portions of a prior art reference first discussed in Petitioner’s Reply, and then rely on those same portions to hold the claims unpatentable.
November 1, 2016 | Blog | By Matthew Hurley, Matthew Galica, Anthony Faillaci
Several recent court decisions have shed light on the patent agent privilege, and now the U.S. Patent and Trademark Office (USPTO) is seeking to weigh-in on the issue.
October 28, 2016 | Blog | By William Meunier
The Federal Circuit reaffirmed last week that the Patent Trial and Appeal Board’s (PTAB’s) decision to discontinue inter partes review (IPR) proceedings is not reviewable on appeal.
October 28, 2016 | Blog | By Christina Sperry
Since Kyle Bass founded Coalition for Affordable Drugs X LLC (CFAD) to challenge pharmaceutical patents, CFAD has filed numerous petitions with the Patent Trial and Appeal Board (PTAB) of the U.S. Patent and Trademark Office (Office) seeking to institute inter partes review (IPR) proceedings to invalidate a number of pharmaceutical patents, including three patents owned by Anacor Pharmaceuticals, Inc., as previously discussed at Global IP Matters.
September 30, 2016 | Blog | By William Meunier, Patrick Driscoll
The Federal Circuit recently determined that it lacked jurisdiction to review the Patent Trial and Appeal Board’s determination that assignor estoppel has no affect in an inter partes review (“IPR”).
August 15, 2016 | Blog | By Brad M Scheller, Lily Zhang
On August 3, 2016, the Patent Trial and Appeal Board issued a post-grant review decision that bears one striking similarity to its previous post-grant review decisions, namely invalidation of claims under Alice Corp. Pty. v. CLS Bank Int’l, further bolstering the salience of patent ineligibility challenges in post-grant proceedings.
June 30, 2016 | Blog | By Brad M Scheller, Gurneet Singh, Catherine Xu
The U.S. Supreme Court ruled on June 20, 2016 in Cuozzo Speed Techs., LLC v. Lee that: (1) the statutory authority of the Patent Trial and Appeal Board (“Board”) in instituting an inter partes review (“IPR”) proceeding is final and non-appealable, thereby not being subject to judicial review, and (2) it is appropriate for the Board to construe claims in an issued patent according to their broadest reasonable interpretation, rather than their plain and ordinary meaning as in district court litigation.
Between a Rock and a Hard Place: Federal Circuit Says Its Required to Accord the PTAB Deference Until Instructed Otherwise by SCOTUS or Congress
April 27, 2016 | Blog | By Brad M Scheller
On Tuesday, April 26, 2016, the Federal Circuit issued an order denying a petition filed by Merck & Cie for rehearing en banc of an Inter Partes Review (“IPR”) final written decision by the Patent Trial and Appeal Board holding several Merck patents invalid as obvious.
USPTO Data Supports Notion That Filing A Patent Owner Preliminary Response May Raise the Likelihood of Denial of an IPR or CBM Petition
March 10, 2016 | Blog | By William Meunier, Nick Armington
Following the filing of a petition with the Patent Trial and Appeal Board (PTAB) seeking to initiate either an Inter Partes Review (IPR) or Covered Business Method (CBM) Review, the patent owner may file a preliminary response addressing the arguments in the petition and also potentially raising arguments regarding statutory bars that may prevent the IPR or CBM proceeding from being initiated.
March 2, 2016 | Blog | By Christina Sperry
Kyle Bass continues to make waves throughout the pharmaceutical industry. Since Bass founded Coalition for Affordable Drugs X LLC (“CFAD”) to challenge pharmaceutical patents, CFAD has filed over three dozen petitions as of this date with the Patent Trial and Appeal Board ( “PTAB”) of the U.S. Patent and Trademark Office ( “Office”) seeking to institute inter partes review (“IPR”) proceedings to invalidate a number of pharmaceutical patents.
February 25, 2016 | Blog | By Brad M Scheller
Patent owners continue to face an uphill battle at the Patent Trial and Appeal Board. According to U.S. Patent Office statistics as of December 31, 2015, a majority (72%) of the 529 Inter Partes Reviews (IPR) proceeding to trial and receiving Final Written Decisions ended in all examined claims being invalidated.
USPTO Implementation of AIA Does Not Violate Due Process: Federal Circuit Affirms the PTAB Panel Determining Institution of an IPR can also Issue the Final Written Decision
January 15, 2016 | Blog | By William Meunier
In Ethicon Endo-Surgery, Inc. v. Covidien LP, a 2-1 panel split of the Federal Circuit held that neither the American Invents Act (“AIA”) nor the Constitution precludes the same panel of the Patent Trial & Appeal Board (“PTAB” or “Board”) from both deciding whether to institute an inter partes review (“IPR”) of a challenged U.S. Patent and making the final patentability determination in that IPR.
A “Solution” in Search of a Problem? The Innovation Act of 2015 and Trends in Fee-shifting in Patent Litigation
March 13, 2015 | Alert | By Michael Renaud, Peter Snell, Robert Moore
On February 5, 2015, Rep. Robert Goodlatte (R-VA) introduced H.R. 9, entitled the “Innovation Act.”
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