The Patent Trial and Appeal Board (PTAB) gets most of its attention (judicial and otherwise) regarding its decisions in inter partes review and covered business method proceedings. But the Board also has responsibility for...more
10/10/2017
/ Appeals ,
Board of Patent Appeals ,
Burden of Proof ,
Burden-Shifting ,
Covered Business Method Proceedings ,
Ex Partes Reexamination ,
Inter Partes Review (IPR) Proceeding ,
Obviousness ,
Patent Trial and Appeal Board ,
Patents ,
Remand ,
Standard of Review ,
Vacated
Judge Gilstrap's Short-lived Venue Calculus -
The Federal Circuit has spent more than a decade as the Supreme Court's favorite judicial whipping boy, usually because the Court apprehended that their appellate inferior had...more
9/22/2017
/ Abuse of Discretion ,
Appeals ,
Jurisdiction ,
Patent Infringement ,
Patents ,
Physical Presence Test ,
Principal Place of Business ,
Reversal ,
TC Heartland LLC v Kraft Foods ,
Transfer of Venue ,
Venue ,
Writ of Mandamus
The patent prosecutor's art requires exquisite foresight, if not prescience, in balancing the requirements for specificity needed to satisfy the disclosure requirements of § 112 while anticipating efforts to design around the...more
The complexities that can be attendant on defending against an infringement allegation, and the possibility that a straightforward path to non-infringement can be complicated by claim construction even for terms construed...more
Many of the complaints from patent holders over the PTO's inter partes review process under the Leahy-Smith America Invents Act (codified in pertinent part at 35 U.S.C. §§ 311-319) stem from how the Office has implemented...more
8/29/2016
/ Administrative Procedure Act ,
Administrative Proceedings ,
Appeals ,
Genzyme ,
Inter Partes Review (IPR) Proceeding ,
Notice Requirements ,
Obviousness ,
Patent Invalidity ,
Patent Trial and Appeal Board ,
Patents ,
Pharmaceutical Industry ,
Prior Art
Perhaps the most significant Supreme Court decision in the past quarter century for the working patent practitioner is Dickinson v. Zurko, which strictly speaking is less a patent case than an administrative law decision. ...more
As we have had the occasion to say before regarding subject matter eligibility, "[o]ne swallow does not a summer make, nor one fine day . . . ," but the Federal Circuit may have engendered a glimmer of hope that it will once...more
In its first pronouncement regarding the post-grant reviewing proceedings established by the America Invents Act ("AIA"), the Supreme Court ruled that the Patent and Trademark Office's positions on two of the law's provisions...more
6/21/2016
/ Administrative Proceedings ,
America Invents Act ,
Appeals ,
Broadest Reasonable Interpretation Standard ,
Chevron Deference ,
Claim Construction ,
Cuozzo Speed Technologies v Lee ,
Inter Partes Review (IPR) Proceeding ,
Judicial Review ,
Patent Trial and Appeal Board ,
Patents ,
SCOTUS ,
Standard of Review ,
USPTO
On June 13, 2016, the Supreme Court ruled unanimously, in an opinion by Chief Justice Roberts, that an award of enhanced damages pursuant to 35 U.S.C. § 284 should be within the sound discretion of a district court, albeit...more
6/14/2016
/ 35 U.S.C. § 284 ,
Abuse of Discretion ,
Appeals ,
Enhanced Damages ,
Halo v Pulse ,
Highmark ,
Octane Fitness v. ICON ,
Patent Infringement ,
Patents ,
SCOTUS ,
Standard of Proof ,
Standard of Review ,
Stryker v Zimmer ,
Totality of Circumstances Test ,
Willful Infringement
The Supreme Court on Friday granted certiorari to review the Federal Circuit's decision that the U.S. Patent and Trademark's Patent Trial and Appeal Board was entitled to perform claim construction in inter partes review...more
1/19/2016
/ Administrative Appeals ,
Appeals ,
Broadest Reasonable Interpretation Standard ,
Certiorari ,
Claim Construction ,
Cuozzo Speed Technologies ,
Inter Partes Review (IPR) Proceeding ,
Judicial Review ,
Patent Trial and Appeal Board ,
Patents ,
SCOTUS ,
Statutory Authority
There have been many voices raised in recent years against the patent system for a variety of political, policy, or personal reasons. Indeed, there is even a book entitled Don't File a Patent that sets out the authors'...more
7/15/2015
/ Abbreviated New Drug Application (ANDA) ,
Appeals ,
FDA Approval ,
Food and Drug Administration (FDA) ,
Generic Drugs ,
On-Sale Bar ,
Patent Infringement ,
Patent Invalidity ,
Patent Litigation ,
Patent Term Extensions ,
Patents ,
Pharmaceutical Industry ,
Pharmaceutical Patents ,
Reversal ,
USPTO
The Federal Circuit has granted Amgen’s emergency motion for an injunction against Sandoz, preventing that company from marketing, selling, offering for sale, or importing into the United States its FDA-approved ZARXIO®...more
The Federal Circuit has scheduled oral argument in Myriad Genetics' appeal of denial earlier this year by the Utah District Court of its motion for preliminary injunction against Ambry Genetics....more