News & Analysis as of

Patent Trial and Appeal Board First-to-File

Miller Canfield

Patent Derivation Proceedings Offer a First-to-File Exception - Don’t Take the Bait

Miller Canfield on

The Federal Circuit’s recent decision in Global Health Solutions LLC v. Selner is its first review of a rare patent dispute resolution process under the America Invents Act (AIA). The decision serves as a warning that proving...more

White & Case LLP

The Federal Circuit clarifies AIA derivation standards: Independent conception is key

White & Case LLP on

In its first precedential review of an AIA derivation proceeding, the Federal Circuit held that to prove derivation, a petitioner has the burden of showing that the petitioner conceived the claimed subject matter and...more

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases: Global Health Solutions LLC v. Selner

Global Health Solutions LLC v. Selner, Appeal No. 2023-2009 (Fed. Cir. Aug. 26, 2025) - In our Case of the Week, the Federal Circuit conducted its first review of a derivation proceeding under the America Invents Act that...more

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

Federal Circuit IP Appeals: Summaries of Key 2023 Decisions (8th Edition): SNIPR Technologies Ltd. v. Rockefeller University, 72...

As part of the America Invents Act (“AIA”), Congress moved the patent system from a first-to-invent to a first-inventor-to-file system. For patents governed by the new first-to-file system, the Act also eliminated...more

Sheppard Mullin Richter & Hampton LLP

SNIPR Tech. Ltd. v. Rockefeller Univ., No. 22-1260 (Fed. Cir. July 14, 2023)

This case addresses certain implications of the Laehy-Smith America Invests Act (AIA), namely whether patents with a filing date after March 16, 2013 (pure AIA patents) may be part of an interference proceeding under pre-AIA,...more

McDonnell Boehnen Hulbert & Berghoff LLP

SNIPR Technologies Ltd. v. Rockefeller University (Fed. Cir. 2023)

One of the wonderful (as in, it makes one wonder) and frustrating (which needs no explanation) aspects of patent law is that just when you think a question is settled it either isn't or the conventional interpretation is...more

Jones Day

PGR Eligibility: An Uphill Climb For Transition Patents

Jones Day on

A patent is eligible for post-grant review (“PGR”) only if the patent is subject to the first-inventor-to-file provisions of the AIA. In Tricam Indus., Inc. v. Little Giant Ladder Sys., LLC, the PTAB explained that...more

McDonnell Boehnen Hulbert & Berghoff LLP

Chevron U.S.A. Inc. v. University of Wyoming Research Corp. (Fed. Cir. 2020)

Interferences were rendered unnecessary with the passage of the Leahy-Smith America Invents Act in 2011, but they linger in disputes between patents and applications claiming priority to applications filed before the change...more

Knobbe Martens

Federal Circuit Review - October 2020

Knobbe Martens on

Expiration of a Patent Does Not Always Trigger Application of Phillips Standard on IPR Appeal - In Immunex Corporation v. Sanofi-Aventis U.S. LLC, Appeal No. 19-1749, the Federal Circuit held that expiration of a patent...more

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases - March 2020 #2

PATENT CASE OF THE WEEK - Communication Test Design, Inc. v. Contec, LLC, Appeal No. 2019-1672 (Fed. Cir. March 13, 2020) - This week’s Case of the Week explores two important procedural issues: a court’s discretion to...more

Wilson Sonsini Goodrich & Rosati

The PTAB Review - June 2016

Post-Grant Review Proceeding Filings Ramp Up In addition to inter partes review (IPR) and covered business method (CBM) review proceedings, the America Invents Act (AIA) provides for post-grant review (PGR) proceedings. PGR...more

Foley & Lardner LLP

Use of Priority Denial to Subject Apparent "Pre-AIA" Patents to PGR: Inguran v. Premium Genetics

Foley & Lardner LLP on

A recent decision by the PTAB, Inguran v. Premium Genetics, demonstrates that a Petitioner may subject an apparent “pre-AIA” patent, having at least one priority date before and at least one priority date after March 16,...more

Foley & Lardner LLP

Did The PTAB Dose The AIA Poison Pill Incorrectly Against Premium Genetics?

Foley & Lardner LLP on

In Inguran, LLC v. Premium Genetics (UK) Ltd., the USPTO Patent Trial and Appeal Board (PTAB) instituted Post Grant Review (PGR) proceedings in a patent granted from an AIA transition application based on its finding that at...more

McDermott Will & Emery

PTAB Institutes Very First Post-Grant Review (PGR) - American Simmental Association v. Leachman Cattle of Colorado, LLC

Representing the first decision of its kind, the Patent Trial and Appeal Board (PTAB or Board) instituted the first post-grant review (PGR) under the American Invents Act (AIA). American Simmental Association v. Leachman...more

McDonnell Boehnen Hulbert & Berghoff LLP

Biogen MA, Inc. v. Japanese Foundation for Cancer Research (Fed. Cir. 2015)

The Federal Circuit affirmed a decision by the U.S. District Court for the District of Massachusetts that it lacked subject matter jurisdiction under 35 U.S.C. § 146 pursuant to changes in the statute provided by the...more

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