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United States - Patent litigation | Country Update



  • PTAB decisions tip in patent owners’ favour – study

    December 15, 2017

    For the first time, the Patent Trial and Appeal Board has upheld the majority of claims in IPR proceedings for four consecutive quarters, a Fitzpatrick 2016 study reveals

  • Federal Circuit rules in Amgen v Sandoz on remand from SCOTUS

    December 14, 2017

    The Federal Circuit has ruled that Sandoz did not forfeit its preemption defence and the BPCIA preempts state law remedies in its biosimilars dispute with Amgen. The decision makes clear that brand biologic companies have no remedies available against a biosimilar applicant who is refusing to engage in the patent dance

  • Trade dress litigation: Between patents and trade marks

    December 08, 2017

    Darius C Gambino of DLA Piper analyses recent trends in trade dress litigation, and suggests tips for an enforcement plan

  • PTAB round-up: filing slumps; tribal immunity briefs filed; Oil States and SAS argued; Aqua Products guidance issued; new remand procedures outlined

    December 07, 2017

    November PTAB news included the lowest petition filing since January 2016, oral arguments at the Supreme Court, amicus briefing on whether tribal ownership immunises a patent from IPR challenges, guidance on motions to amend, new procedures for remands from the Federal Circuit, and an increase in fees

  • Berton Moreno + Ojam created in Argentina, and other Americas people moves

    December 06, 2017

    Managing IP’s regular update of people moves includes the launch of new firms Grüneberg and Myers and Winterfeldt IP Group, and hires by Crowell & Moring, Fish & Richardson, BakerHostetler, K&L Gates, Baker Botts, Kirkland & Ellis and more

  • Analysing SCOTUS oral arguments in Oil States and SAS Institute

    November 30, 2017

    US Supreme Court Justices seemed divided during arguments for Oil States v Greene’s Energy and SAS Institute v Matal. Patent lawyers have been busy making predictions about how the court will rule in the two cases, which could dramatically change how the Patent Trial and Appeal Board operates

  • PTAB releases Aqua Products guidance on motions to amend

    November 28, 2017

    The Patent Trial and Appeal Board confirms that In light of the Aqua Products decision it will not place the burden of persuasion on a patent owner with respect to the patentability of substitute claims presented in a motion to amend

  • Michael Shore vows to “take a wrecking ball to the IPR system”

    November 22, 2017

    The lawyer behind Allergan’s controversial transfer of patents to a Native American tribe said at the IP Dealmakers Forum that other companies are “lining up to do deals” and that universities’ endowment funds are interested in getting involved. Shore outlined why he believed these types of deals are here to stay

  • Interview: Fish & Richardson’s Dorothy Whelan on pharma PTAB proceedings

    November 17, 2017

    Dorothy Whelan, co-chair of Fish & Richardson’s post-grant practice group, has been involved in high-profile cases such as the first IPR decisions that invalidated Humira patents. As part of the Women in IP series, Whelan speaks to Michael Loney about the biggest issues at the PTAB

  • PTAB revises procedures for Federal Circuit remands

    November 17, 2017

    The Patent Trial and Appeal Board has revised the “Standard Operating Procedure 9 (SOP9)” for cases remanded from the Federal Circuit, including requiring panels to meet with the PTAB chief, deputy chief or a delegate to discuss remanded cases

  • Federal Circuit says TC Heartland changed the law

    November 16, 2017

    The Federal Circuit has granted Micron’s mandamus petition stating: “We conclude that TC Heartland changed the controlling law in the relevant sense: at the time of the initial motion to dismiss, before the Court decided TC Heartland, the venue defense … based on TC Heartland’s interpretation of the venue statute was not ‘available’”

  • District court stays pending IPR/CBM/PGR: a review of the past 12 months

    November 15, 2017

    Overall success rates of motions to stay district court litigation pending review at the Patent Trial and Appeal Board have dropped noticeably in the past fiscal year. Christopher Hanewicz and Truscenialyn Brooks of Perkins Coie analyse recent stay statistics

  • PTAB requests tribal immunity briefs, House holds hearing

    November 09, 2017

    The Patent Trial and Appeal Board has asked for amicus briefing on whether tribal ownership immunises a patent from IPR challenges, while a House of Representatives subcommittee held a hearing on sovereign immunity and the intellectual property system in which ranking member Jerry Nadler said Allergan’s deal with a Native American tribe “makes a mockery of Congressional authority and of the rule of law”

  • PTAB round-up: steady filing; Aqua Products fall-out; precedential and informative decisions; and more

    November 08, 2017

    October at the Patent Trial and Appeal Board saw a levelling out of petition filing, the first ever extension of the final written decision deadline for good cause, and one precedential and three informative PTAB decisions

  • When should the USPTO intervene in PTAB appeals?

    October 27, 2017

    The USPTO intervenes in less than a quarter of appeals of PTAB decisions to the Federal Circuit. Nathan Kelley, USPTO deputy general counsel for intellectual property law, recently shed some light on when and why the office chooses to do so

  • Federal Circuit judges offer tips for PTAB appeals

    October 27, 2017

    Federal Circuit judges discussed how they handle appeals from the Patent Trial and Appeal Board during an AIPLA session. Judge Newman also took the chance to offer a solution for the Supreme Court ruling on the pending Oil States case

  • Interview: Myra McCormack’s plans as AIPLA president

    October 26, 2017

    Myra McCormack recently took over as president of the American Intellectual Property Law Association. Michael Loney interviews McCormack and executive director Lisa Jorgenson to hear the association’s plans for the next year

  • PTAB extends an IPR for good cause for the first time

    October 25, 2017

    The PTAB has extended the one-year deadline in Minerva Surgical v Hologic by six months. The final written decision in the inter partes review was originally set to expire two days after the Federal Circuit released its en banc Aqua Products opinion

  • PTAB designates three opinions addressing § 325(d) as informative

    October 25, 2017

    The PTAB has designated as informative three opinions addressing its ability to reject petitions because the same prior art or arguments previously were presented to the USPTO. Some believe this helps give guidance on how to make patents “IPR proof”

  • USPTO’s Matal hints at PTAB improvements

    October 24, 2017

    Joseph Matal, who is performing the duties of USPTO director, gave a speech discussing the Patent Trial and Appeal Board, including upcoming USPTO guidance on Aqua Products, how the precedential General Plastic opinion will reduce serial attacks on the same patent, the evolving 325(d) jurisprudence, and two PTAB cases he thought have a shot of being taken up by the Supreme Court

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