In another noteworthy year for patent law, the U.S. Supreme Court and the Federal Circuit issued several decisions that altered the patent landscape, including three Supreme Court decisions. The topics of the key cases...more
The Supreme Court ruled in Return Mail that a federal agency is not a "person" who may challenge an issued patent in inter partes review, post-grant review, or CBM review under the AIA.
In its 6–3 decision in Return Mail,...more
6/18/2019
/ Administrative Agencies ,
America Invents Act ,
Congressional Intent ,
Covered Business Method Proceedings ,
Ex Partes Reexamination ,
Government Entities ,
Intellectual Property Protection ,
Inter Partes Review (IPR) Proceeding ,
Patent Trial and Appeal Board ,
Patent Validity ,
Patents ,
Post-Grant Review ,
Return Mail Inc v United States Postal Service ,
Reversal ,
SCOTUS ,
Statutory Interpretation ,
USPS
The Supreme Court unanimously finds that the AIA's "on sale" statutory language did not alter the pre-AIA "on-sale" bar.
On January 22, 2019, the U.S. Supreme Court held that the America Invents Act ("AIA") did not change...more
1/28/2019
/ America Invents Act ,
Appeals ,
Assignment of Inventions ,
Confidentiality Agreements ,
Helsinn Healthcare SA v Teva Pharmaceuticals USA Inc ,
Inventions ,
On-Sale Bar ,
Patent Applications ,
Patent Infringement ,
Patents ,
Pharmaceutical Industry ,
Pharmaceutical Patents ,
Public Use ,
Reaffirmation ,
Reversal ,
SCOTUS ,
Section 102 ,
Third-Party Relationships
On June 25, 2018, the United States Supreme Court agreed to review the Federal Circuit's decision in Helsinn Healthcare v. Teva Pharmaceuticals, No. 17-1229.
In Helsinn, the Federal Circuit considered whether the America...more
On April 24, 2018, in SAS Institute Inc. v. Iancu, a closely divided U.S. Supreme Court fundamentally changed the way that the Patent Trial and Appeal Board confronts inter partes reviews under the America Invents Act. The...more
6/18/2018
/ Administrative Proceedings ,
America Invents Act ,
Chevron Deference ,
Inter Partes Review (IPR) Proceeding ,
Oil States Energy Services v Greene's Energy Group ,
Patent Ownership ,
Patent Trial and Appeal Board ,
Patents ,
Post-Grant Review ,
SAS Institute Inc. v Iancu ,
SCOTUS
Rumors of the PTAB’s demise were greatly exaggerated, it turns out. In a 7-2 decision, the Supreme Court held on Tuesday that Inter Partes Reviews (IPRs) violate neither Article III nor the Seventh Amendment of the...more
4/26/2018
/ Administrative Proceedings ,
America Invents Act ,
Article III ,
Constitutional Challenges ,
Inter Partes Review (IPR) Proceeding ,
Oil States Energy Services v Greene's Energy Group ,
Patent Trial and Appeal Board ,
Patents ,
Public Rights Doctrine ,
SCOTUS ,
Seventh Amendment ,
USPTO
In another noteworthy year for patent law, the U.S. Supreme Court and Federal Circuit issued a number of decisions that altered the patent landscape, including four Supreme Court decisions. The topics of the key cases...more
2/12/2018
/ America Invents Act ,
Forum Shopping ,
Impression Products v Lexmark International ,
Intellectual Property Protection ,
Life Technologies Corp v Promega Corp ,
Patent Infringement ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patent-Eligible Subject Matter ,
Patents ,
SCA Hygiene Products Aktiebolag v First Quality Baby Products ,
SCOTUS ,
Section 101 ,
State of Incorporation ,
TC Heartland LLC v Kraft Foods ,
Venue
In yesterday’s en banc decision in Wi-Fi One v. Broadcom Corp., Nos. 15-1944, -1945 & -1946 (Fed. Cir. Jan. 8, 2018), the en banc Federal Circuit addressed issues regarding judicial review of the PTAB’s time-bar...more
1/10/2018
/ § 315(b) ,
America Invents Act ,
Appeals ,
En Banc Review ,
Inter Partes Review (IPR) Proceeding ,
Judicial Review ,
Non-Appealable Decisions ,
Patent Trial and Appeal Board ,
Patents ,
Time-Barred Claims ,
USPTO
On May 11, 2017, with six of its twelve active judges authoring or joining separate opinions, the Federal Circuit denied a petition for an initial hearing en banc which asked the full Court to address the question “whether a...more
5/17/2017
/ America Invents Act ,
Appeals ,
Article III ,
Constitutional Challenges ,
En Banc Review ,
Inter Partes Review (IPR) Proceeding ,
Patents ,
Petition for Writ of Certiorari ,
Private Property ,
Public Rights Doctrine ,
Separation of Powers
For more than 60 years, Section 102(b) of the Patent Act precluded patentability when the invention was "in public use or on sale in this country [for] more than one year" before the filing of a patent application. That...more
Who makes the country’s patent laws—Congress, or the Patent Office? A recent petition for certiorari filed by SAS Institute, Inc.—represented by a team of Jones Day lawyers—asks the Supreme Court to decide that question in...more