Recent changes at the U.S. Patent Trial and Appeal Board (PTAB) have brought uncertainty to inter partes review and post-grant review practitioners before the U.S. Patent and Trademark Office (PTO). These procedural and…
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/ Administrative Law, Civil Procedure, Intellectual Property
Last month the Federal Circuit issued a decision in the Lashify case that significantly broadens the opportunity for companies to bring a lawsuit before the U.S. International Trade Commission (“ITC”). The ITC is known for its…
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/ Intellectual Property, International Law & Trade
The Federal Circuit upheld the ITC Commission’s discretionary power not to issue sua sponte orders to show cause why a party has not committed sanctionable conduct under Commission Rules or to explain its reason for not issuing…
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/ Administrative Law, Civil Procedure, Intellectual Property, International Law & Trade, Science, Computers, & Technology
The Federal Circuit held in Merck Sharp & Dohme B.V. v. Aurobindo Pharma USA, Inc., 23-2254 that a reissued patent receives patent term extension (PTE) based on the issue date of the original patent, not the reissue patent,…
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/ Administrative Law, Health, Intellectual Property, Science, Computers, & Technology
After eight weeks of shifts in governmental policies, the patent bar is feeling repercussions from all directions. One critical area in flux is the post-grant challenge arena.
With a reduced PTAB head count and a steady flow…
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/ Administrative Law, Civil Procedure, Intellectual Property
In the mid-2000s, the U.S. Patent Office (USPTO) determined that reexaminations would be more consistent and legally correct if performed by a centralized set of experienced and specially trained Examiners. As a result, the…
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/ Administrative Law, Civil Procedure, Intellectual Property
Last week, the D.C. Circuit Court of Appeals issued its opinion in Thaler v. Perlmutter. The opinion notably solidifies the U.S. Copyright Office’s position that works generated autonomously (and thus solely) by artificial…
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/ Administrative Law, Intellectual Property, Science, Computers, & Technology
On March 21, 2025, I participated in a spirited panel at the annual IP symposium hosted by the Penn Intellectual Property Group (PIPG) at the University of Pennsylvania Carey Law School. Titled “How Far Should Trademark…
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/ Administrative Law, Intellectual Property
On March 26, 2025, the USPTO issued the attached memo titled “Interim Processes for PTAB Workload Management,” which significantly alters the pre-institution briefing procedure for IPRs and PGRs.
Under the Interim Process,…
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/ Administrative Law, Civil Procedure, Intellectual Property
On March 24, 2025, Chief Administrative Patent Judge Scott R. Boalick issued a memo directed to the members of the Patent Trial and Appeal Board (PTAB) explaining why the USPTO’s June 2022 Fintiv memo was rescinded and how the…
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/ Administrative Law, Civil Procedure, Intellectual Property
In the biotechnology and chemical spaces, genus claims are often sought by patent applicants to protect not only a specific product of interest, but also as a means to protect against others making related products that…
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/ Administrative Law, Intellectual Property, Science, Computers, & Technology
Takeaways -
- Expired patents may be eligible for reexamination.
- Owner’s options during reexamination of an expired patent are severely limited.
Similar to reexamination practice, which has long allowed reexamination of…
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/ Administrative Law, Intellectual Property, Science, Computers, & Technology
Takeaways -
- Pre-AIA patents may be able to “swear behind” prior art applied in reissue and reexamination.
- “Swearing behind” has limits and obtaining sufficient evidence to establish prior invention may be difficult to…
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/ Administrative Law, Civil Procedure, Intellectual Property, Science, Computers, & Technology
The U.S. International Trade Commission (“ITC”) recently amended its Rules and Regulations, making a number of changes to its discovery and complaint-filing procedures. The new rules went into effect on February 3, 2025. The new…
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/ Civil Procedure, Intellectual Property, International Law & Trade
Parties involved in Patent Trial and Appeal Board (PTAB) proceedings sometimes contemplate submitting experimental data to support their positions. Although such data can be useful, there also are risks. Several recent cases…
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/ Administrative Law, Civil Procedure, Intellectual Property, Science, Computers, & Technology
