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PTAB Clarifies Protocol for Expanded Post-Grant Panels

May 13, 2015 | Blog | By Brad M Scheller

Today the Patent Trial and Appeal Board (“Board”) posted on its website Revision 14 of its Standard Operating Procedure 1 (SOP 1). SOP 1 covers the assignment of Administrative Patent Judges to merits panels, interlocutory panels, and expanded panels in appeals, interferences, and AIA Reviews.
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The PTAB Explores Estoppel in New Representative Decision

May 11, 2015 | Blog | By Kevin Amendt, Brad M Scheller

The Patent Trial and Appeal Board ("the Board") recently announced the addition of its March 26, 2015 decision in Dell, Inc. et al. v. Electronics and Telecomms. Res. Inst., IPR2015-00549 (“the ‘549 IPR”) to its online list of Representative Orders, Decisions, and Notices.
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FTC and DOJ: The PTO’s Efforts to Enhance Patent Quality Will Promote Competition, Innovation, and Consumer Welfare

May 7, 2015 | Blog | By Dionne Lomax

On May 6, 2015, the U.S. Department of Justice (“DOJ”) and U.S. Federal Trade Commission (“FTC”) submitted public comments to the U.S. Patent and Trademark Office (“PTO”) commending the PTO for its efforts to enhance patent quality and making specific recommendations on how the PTO may improve its processes.
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Maximizing Use of the USPTO's Patent Application Alert Service

May 6, 2015 | Blog | By Christina Sperry

The U.S. Patent and Trademark Office (USPTO) recently launched the Patent Application Alert Service (PAAS), a free electronic tool aimed to keep the public apprised of the publication of patent applications.
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‘Last Week Tonight’ Host John Oliver Ignores the Last Three Years of Patent Reform

May 1, 2015 | Blog | By Michael Renaud, Robert Moore

Have you seen John Oliver’s piece about abuses in the patent system? If not, take a look here. The ‘Last Week Tonight’ host has quite a bit of fun at the expense of the patent system.
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Petitioners Must Present Sufficient Evidence to Establish Inherency

April 30, 2015 | Blog | By Brad M Scheller, Inna Dahlin

Last Friday the Patent Trial and Appeal Board (PTAB) denied four Sandoz Inc. petitions for instituting inter partes review (IPR) of U.S. 8,455,524 (IPR2015-00005), U.S. 7,612,102 (IPR2015-00006), U.S. 7,659,290 (IPR2015-00007), and U.S. 7,659,291 B2 (IPR2015-00008) (referred to herein as the “EKR Patents”).
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Helping U.S. Patent Applicants Get Speedy Examination

April 22, 2015 | Blog | By Christina Sperry, Colleen Witherell

U.S. patent applicants often have an interest in expediting the patent examination process. The desire to speed examination can result from issues related to the availability of an inventor, possible infringing activity by a third party, business conditions or the advantageous nature of the technology that require a clear understanding of a stake holders patent rights, or other factors.
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Does the AIA Have a Prior Art Exception You Can Use?

April 21, 2015 | Blog | By Christina Sperry, Inna Dahlin

U.S. patent applications filed after March 16, 2013, when the “First-Inventor-to-File” portion of the America Invents Act (AIA) took effect, have started to be published.
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DOJ Guidance on IEEE Letter Hotly Debated

April 16, 2015 | Blog | By Dionne Lomax

The most hotly debated issue at this year’s GCR IP & Antitrust Conference, held on April 14 in Washington, DC, was the DOJ’s guidance issued in a February business review letter to the Institute of Electrical and Electronics Engineers (IEEE).
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House Judiciary Committee Holds Hearing on Innovation Act, Fee-Shifting

April 15, 2015 | Blog | By Michael Renaud, Robert Moore

Tuesday, April 14, the House Judiciary Committee convened to discuss H.R. 9, the “Innovation Act,” which was introduced in February 2015 by the Committee’s Chairman, Rep. Bob Goodlatte (R-VA).
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FDA Denies Request to Make “Patent Dance” a Prerequisite for Biosimilar Approval

April 3, 2015 | Blog | By Dave Cotta

In a decision released on March 25, 2015, FDA denied a Citizen’s Petition that would have effectively made the information and patent exchange described in § 262 of the Biologics Price Competition and Innovation Act (“BPCIA”) a precondition for approval.
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Quick Fixes and Proposed Rulemaking for PTAB Trial Rules Announced by Director Lee

March 31, 2015 | Blog | By Brad M Scheller

Under Secretary of Commerce for Intellectual Property and USPTO Director, Michelle Lee, announced on Friday that a series of actual and proposed rulemakings aimed at improving post-grant proceedings before the PTAB will be forthcoming—some effective immediately and others rolling out over the summer and beyond.
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Supreme Court to Hear Argument on March 31 Whether to Overrule Brulotte v. Thys, Co.

March 25, 2015 | Blog | By Rich Gervase, Sandra Badin

Fifty years ago, the Supreme Court held in Brulotte v. Thys Co., 379 U.S. 29 (1964) that a license agreement requiring royalty payments for use of a patented invention after expiration of the patent term is unlawful per se.
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USITC Declines to Institute Investigation of Induced Patent Infringement as Unfair Method of Competition or Unfair Acts

March 24, 2015 | Blog

In a recent decision, the International Trade Commission rejected a petitioner’s attempt to use allegations of unfair competition and unfair acts as a possible way of working around the Federal Circuit’s bar on claims of induced infringement.
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Tips for Effectively Organizing PTAB Appeals Brief - Claim Grouping

March 23, 2015 | Blog | By Christina Sperry

Filing an appeal brief with the Patent Trial and Appeal Board (PTAB) can be an effective way to advance prosecution and secure allowable claims. Last November, we summarized Tips for Writing Effective PTAB Briefs to help propel applicants to PTAB victory.
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District Court Rules Against Amgen's Motion for Preliminary Injunction to Prevent Marketing of Sandoz's Biosimilar Zarxio

March 20, 2015 | Blog | By Thomas Wintner, Terri Shieh-Newton

In an order released on March 19, 2015, U.S. District Court Judge Richard Seeborg of the Northern District of California denied Amgen’s motion for judgment on the pleadings as well as its request for a preliminary injunction to prevent Sandoz from marketing its drug Zarxio®.
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Understanding Post-AIA Power of Attorney Procedures

March 19, 2015 | Blog | By Christina Sperry, Colleen Witherell

Applicants identified upon a U.S. patent application’s filing can impact the ownership rights to the patent application throughout prosecution. Prior to implementation of relevant aspects of the America Invents Act (AIA) on September 16, 2012, patent application Applicants could only be Inventors. 
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U.S. International Trade Commission Institutes Investigation Under 100-Day Pilot Program Examining Complainant's Standing to File Suit

March 19, 2015 | Blog

The U.S.I.T.C. instituted its first investigation under its 100-day pilot program for early determination of a specific potentially case-dispositive issue.
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Court Denies Generic Drug Manufacturer's Motion to Dismiss Hatch-Waxman Patent Infringement Action on Jurisdiction Grounds

March 18, 2015 | Blog | By Peter Cuomo, Joe Rutkowski

On March 12, the United States District Court for the Southern District of Indiana joined the District of Delaware and Eastern District of Texas as the first courts to consider a generic drug manufacturer’s motion to dismiss a Hatch-Waxman patent infringement action for an alleged lack of personal jurisdiction following the Supreme Court’s decision in Daimler AG v. Bauman, 134 S.Ct. 746 (2014).
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Second Bites At the Post-Grant Apple?

March 13, 2015 | Blog | By Howard Wisnia

The America Invents Act (AIA) gives the Board broad discretion in deciding whether or not to institute an IPR or CBM when the Petition addresses substantially the same prior art or arguments to those previously considered by the PTO.
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