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USPTO Issues a Notice of Proposed Rulemaking on PTAB Changes

On April 19, 2024, the United States Patent and Trademark Office (USPTO or Office) issued proposed modifications to the rules of practice for inter partes review (IPR) and postgrant review (PGR) proceedings before the Patent...more

PTAB Finds Petitioner’s Failure to Disclose Relationship with Real Party in Interest Warrants Substantial Monetary Sanctions

In Ventex Co., Ltd. v. Columbia Sportswear North America, Inc., IPR2017-00651 (PTAB Apr. 12, 2023) (per curiam), the Patent Trial and Appeal Board (the “Board”) found that petitioner Ventex Co., Ltd.’s (“Ventex) failure to...more

District Court Dismisses Challenge to PTAB’s Discretion to Deny Inter Partes Review

In Apple Inc. et al. v. Hirshfeld, case number 5:20-cv-06128, in the U.S. District Court for the Northern District of California, the Court upheld the Patent Trial and Appeal Board’s (PTAB) practice of denying patent reviews...more

Supreme Court Finds PTAB Judges Unconstitutional

In U.S. v. Arthrex, case number 19-1434; Smith & Nephew v. Arthrex, case number 19-1452; and Arthrex v. Smith & Nephew, case number 19-1458, the Supreme Court of the United States recently held that Patent Trial and Appeal...more

Federal Circuit Holds Administrative Patent Judges Appointments Unconstitutional

In Arthrex Inc. v. Smith & Nephew Inc. et al., case number 18-2140, the U.S. Court of Appeals for the Federal Circuit recently considered whether the appointment of the Board’s Administrative Patent Judges (“APJs”) by the...more

Federal Circuit Holds IPR Proceedings On Pre-AIA Patents Is Not An Unconstitutional Taking Under The Fifth Amendment

In CELGENE CORPORATION v. PETER, the Federal Circuit recently affirmed the PTAB’s decisions finding appealed claims obvious. However, more importantly, the Federal Circuit also held that the retroactive application of IPR...more

District Court Rules Certain Prior Art References Are Precluded Under IPR Estoppel

On December 28, 2018, the Court in The California Institute of Technology v. Broadcom Limited et al., Case No. 2:16-cv-03714-GW-(AGRx), issued a Final Ruling on Plaintiff’s Motion for Partial Summary Judgment of Validity...more

Federal Circuit Affirms Tribal Immunity Does Not Apply In Inter Partes Review Proceedings Before The USPTO

In Saint Regis Mohawk Tribe et al. v. Mylan Pharmaceuticals Inc. et al., the U.S. Court of Appeals for the Federal Circuit held that Native American tribal sovereign immunity does not apply in Inter Partes Review (“IPR”)...more

SAS Institute, Inc. V. Iancu Has Affected Cases In Federal Courts In Addition To Those At The PTAB

On April 24, 2018, the Supreme Court issued its ruling in SAS Institute, Inc. v. Iancu, which held that the Patent Trial and Appeal Board (“PTAB”) arm of the United States Patent and Trademark Office (“USPTO”) must issue a...more

U.S. Supreme Court Rules America Invents Acts Reviews By The Patent Trial And Appeal Board Arm Of The Patent And Trademark Office...

In a 7-2 opinion, the U.S. Supreme Court ruled in OIL STATES ENERGY SERVICES, LLC v. GREENE’S ENERGY GROUP, LLC that inter partes review does not violate Article III or the Seventh Amendment of the Constitution. Thus, the...more

Allegan’s Restasis Patents Invalidated By A Federal District Court Even After Transfer To Native American Tribe And Sovereign...

In Allergan, Inc. v. Teva Pharmaceuticals USA, Inc. et al, Case No. 2:15-cv-1455-WCB (EDTX October 16, 2017 Order), a Federal District Court recently invalidated several patents covering Allergan’s dry-eye drug Restasis. The...more

Federal Circuit Rules the Patent Trial and Appeal Board Can Consider New Evidence During AIA Review Trial

On September 26, 2016, the U.S. Court of Appeals for the Federal Circuit declined to review in a unanimous en banc decision a panel Federal Circuit decision affirming that the Patent Trial and Appeal Board (the “Board”) at...more

Federal Circuit Holds the PTAB Must Apply Narrower Phillips Claim Construction Standard to Patents that Expire During Pendency of...

In In re CSB-System Int’l, Inc., No. 15-1832 (Fed. Cir. Aug. 9, 2016), the Court of Appeals for the Federal Circuit recently held that patents that expire during a pending re-examination before the Patent Trial and Appeal...more

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