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  • Federal Circuit vacates injunction in Amgen’s dispute with Sanofi

    October 11, 2017

    The permanent injunction granted by the District of Delaware in the dispute between Amgen and Sanofi/Regeneron over cholesterol-lowering treatment has been vacated, in a decision that also included some implications for the USPTO’s practice of granting broad antibody claims

  • Analysis: Was the Federal Circuit’s Aqua Products opinion a wash out?

    October 06, 2017

    The Federal Circuit’s en banc Aqua Products v Matal ruling has been described as “a complete non-event” and “a real mess” that “did little to resolve the big questions” surrounding the PTAB's treatment of motions to amend. However, it did shift the burden of persuasion to the petitioner, while some believe the Chevron implications of the decision are most interesting

  • Federal Circuit issues narrow en banc Aqua Products opinion

    October 04, 2017

    The long-awaited Aqua Products ruling is narrow – a result of different views on the judgment and the rationale that should be employed. The matter is remanded for the PTAB to consider the patentability of the proposed substitute claims without placing the burden of persuasion on the patent owner

  • PTAB filling falls in Q3 but still on track for record year

    October 04, 2017

    The third quarter had the fewest Patent Trial and Appeal Board petitions since the first quarter of 2016. In September, the Board designated one of its decisions as informative and also granted a rare rehearing in an IPR involving the Coalition for Affordable Drugs

  • Signs of life for doctrine of equivalents in the US

    September 27, 2017

    Some recent Federal Circuit decisions as well as a petition to the Supreme Court suggest the doctrine of equivalents is not dead in the US, despite a declining number of decisions referencing the doctrine since Warner-Jenkinson in 1997

  • How Allergan’s Mohawk tribe patent deal could blow up the IPR system

    September 21, 2017

    If successful, Allergan’s eye-catching gambit of seeking to cancel PTAB proceedings by assigning patents to the Saint Regis Mohawk Tribe would be a blueprint for others to follow. But will the PTAB rule that sovereign immunity applies in this case?

  • Ropes & Gray hires PTAB chair from Oblon, and other US people moves

    September 12, 2017

    Managing IP’s regular update of people moves includes hires by Ropes & Gray, Norton Rose Fulbright, Honigman Miller Schwartz and Cohn, Hogan Lovells, Wolf Greenfield, Shook Hardy & Bacon and BakerHostetler. These include new roles for two former AIPLA presidents

  • PTAB August round-up: Filing down; Federal Circuit criticises PTAB in two opinions; ruling on standing

    September 07, 2017

    126 PTAB petitions were filed in August, while the Federal Circuit expressed concern with the Board’s practice of joinder and expanded panels in Nidec Motor v Zhongshan Broad Ocean Motor, said it abused its discretion for failing to consider material evidence in Ultratec v CaptionCall, and ruled that an IPR petitioner doesn’t need to satisfy Article III standing requirements to participate in a patent owner’s appeal in Personal Audio v EFF

  • Federal Circuit to answer “serious questions” about PTAB joinder and panels

    September 07, 2017

    A concurring opinion in Nidec Motor v Zhongshan Broad Ocean Motor critical of the PTAB’s position on joinder and expanded panels suggests the Federal Circuit will further scrutinise these issues in future decisions

  • Federal Circuit to hear USPTO attorneys' fees issue en banc

    September 06, 2017

    Parties have been asked to brief on the issue of whether Section 145’s “[a]ll the expenses of the proceedings” provision authorises an award of the USPTO’s attorneys’ fees, after the Federal Circuit ordered a sua sponte rehearing en banc of Nantkwest v Matal

  • Trump nominates Irell & Manella’s Iancu for USPTO director

    August 29, 2017

    Andrei Iancu will succeed Michelle Lee as USPTO director if the US Senate confirms his nomination. He is a managing partner of Irell & Manella in Los Angeles

  • The latest Americas IP people moves

    August 14, 2017

    Managing IP’s regular update of people moves includes hires by Orrick, Mintz Levin, Merchant & Gould, Foley & Lardner, BakerHostetler and King & Spalding, as well as Erich Spangenberg leaving Marathon and a new INTA chief representative officer for Latin America and the Caribbean

  • July PTAB data and analysis: Filing falls, motion to amend granted on remand, Federal Circuit reverses amendment, sovereign immunity applied for third time

    August 09, 2017

    139 Patent Trial and Appeal Board petitions were filed in July. The month also included the Board granting a motion to amend on remand, the Federal Circuit vacating a granted motion to amend, and sovereign immunity as a defence to an IPR being applied for the third time

  • PTAB designates Athena Automation assignor estoppel decision as precedential

    August 09, 2017

    The Patent Trial and Appeal Board’s October 2013 decision determining that the doctrine of assignor estoppel is not an exception to Section 311(a) is the ninth to be deemed precedential

  • IP STARS Patent Handbook (2017) is now available

    August 01, 2017

    This year’s publication is the 21st edition of Managing Intellectual Property’s legal directory, and the biggest yet published

  • PTAB first-half data: Comcast tops petitioner ranking, Rovi most targeted patent owner

    August 01, 2017

    Comcast taking its dispute with Rovi to the PTAB made them the top petitioner and patent owner at the PTAB in the first half of 2017. Apple and Samsung have fallen down the petitioner rankings while Fish & Richardson, Sterne Kessler and Finnegan dropped in the law firm rankings, with Banner Witcoff, Baker Botts and Ropes & Gray making strides

  • Interim USPTO director Matal makes predictions on Oil States, TC Heartland and reform

    July 21, 2017

    In an open and wide-ranging speech at the Patents for Financial Services Summit in New York, interim USPTO director Joseph Matal predicted “we are going to win” the Oil States case, TC Heartland “is not going to put the venue issue to bed” and “there will be further patent reform legislation in the coming Congress”

  • Predicting Aqua Products, evolving estoppel, expert testimony strategies – PTAB issues to watch

    July 17, 2017

    The discussions at Managing IP’s recent PTAB Forum 2017 provided some clues about the biggest issues on PTAB practitioners’ minds, including estoppel, handling remands, expert testimony strategies and predictions for two pending Federal Circuit en banc opinions

  • The latest people moves in the US

    July 13, 2017

    Managing IP’s regular update of people moves includes the latest on the new firm being established by Ropes & Gray partners, and hires by Morrison & Foerster, Crowell & Moring, BakerHostetler, Dorsey & Whitney, Steptoe & Johnson, Wolf Greenfield, McAndrews Held & Malloy and Foley & Lardner

  • PTAB grants Schaeffler's motion to amend claims

    June 29, 2017

    The Patent Trial and Appeal Board has issued a rare granted motion to amend in Valeo North America v Schaeffler Tech, suggesting the Board is willing to consider well-crafted substitute claims

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