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News and Analysis

  • PTAB determines University of Minnesota’s immunity waived by federal court action

    December 20, 2017

    An expanded PTAB panel has determined that the filing of a federal court action waives the University of Minnesota’s Eleventh Amendment immunity, in the fourth decision to address state sovereign immunity

  • PTAB chief judge Ruschke contemplates amendment changes

    December 20, 2017

    Speaking at Managing IP’s European Patent Forum USA, David Ruschke discussed a number of ways that amendments could be made easier to obtain at the PTAB

  • 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

  • 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

  • USPTO to increase fees, including 72% IPR request fee change

    November 16, 2017

    The USPTO has released a final rule detailing fee increases to go into effect in January. The combined cost of an inter partes review request and institution at the Patent Trial and Appeal Board will go up to $30,500

  • 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

  • Functional claiming in US patent prosecution post-Williamson

    October 24, 2017

    The impact of the Federal Circuit’s Williamson v Citrix opinion on patent prosecution in 2015 is still being felt. A session at the AIPLA annual meeting provided some tips for avoiding functional claiming, while another session focused on obviousness

  • Judge criticises Allergan’s Native American tribe deal, invalidates Restasis patents

    October 18, 2017

    Judge Bryson in the Eastern District of Texas has noted “serious concerns” about Allergan transferring patents to the Saint Regis Mohawk Tribe to benefit from sovereign immunity but joined the tribe to litigation against Mylan and Teva – “Allergan’s tactic, if successful, could spell the end of the PTO’s IPR program”

  • 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

  • Ropes & Gray spin-off patent firm to be called Haley Guiliano

    June 28, 2017

    James Haley is to join the new law firm created as part of Ropes & Gray’s restructure of its IP rights management practice

  • Eastern District suffers Heartland attack

    June 23, 2017

    The Supreme Court’s TC Heartland v Kraft decision has been hailed as the death knell for the Eastern District of Texas, with one analysis predicting a 69% drop in filing there. But, as Natalie Rahhal reports, the picture may be more nuanced than that

  • Analysis – future of the PTAB on the line in Oil States case

    June 15, 2017

    The US Supreme Court would create a mess that would need Congressional action were it to find inter partes reviews unconstitutional in the Oil States case. But a reversal of the Federal Circuit in this case is less likely than in other patent cases the court has taken on recently

  • US Supreme Court to rule on constitutionality of AIA trials

    June 12, 2017

    The Supreme Court has granted cert to Oil States Energy Services v Green’s Energy Group to assess whether inter partes review violates the Constitution by not providing a jury trial. It is the third PTAB case the court will hear

  • Generic company IPR study reveals “surprisingly high” institution rate

    June 12, 2017

    A Foley & Lardner study of generic drug company IPRs against pharmaceutical patents shows an increased willingness to use the PTAB, an above-average institution rate but below-average invalidation rate

  • Michelle Lee resigns as USPTO director

    June 07, 2017

    USPTO director Michelle Lee has resigned, with no explanation given. USPTO associate solicitor Joseph Matal has taken over her duties

  • PTAB round-up: Record PGR filing in May, second sovereign immunity dismissal

    June 05, 2017

    Patent Trial and Appeal Board filing in May was below average for the year, but included a record amount of PGR petitions. The month was also notable for the Supreme Court taking on a PTAB case and the Board dismissing an IPR against a state entity on sovereign immunity grounds for the second time

  • SCOTUS to rule on PTAB partial institution practice in SAS Institute v Lee

    May 24, 2017

    The US Supreme Court may be set to end the Patent Trial and Appeal Board’s practice of instituting only some of the claims challenged in a petition and replace it with an “all or nothing” system, after granting cert in SAS Institute v Lee

  • SCOTUS limits patent venue in Heartland ruling

    May 22, 2017

    Patent case filing will fall in the Eastern District of Texas following the Supreme Court’s ruling in TC Heartland v Kraft that residence of domestic corporations in §1400(b) refers only to the state of incorporation of the alleged infringer – the most important US patent decision since Alice

  • AIPLA releases Section 101 legislative proposal

    May 17, 2017

    The American Intellectual Property Law Association has revealed its long-awaited proposed amendment for subject matter eligibility. It follows similar proposals from IPO and ABA

  • The “state of the art” in PAE litigation

    May 03, 2017

    A recent Intellectual Ventures lawsuit filed with a companion ITC complaint may be a sign of what is to come in patent assertion entity litigation, with one observer describing it as “a formidable new change”. The ITC has now instituted the investigation against car manufacturers and parts makers

  • PTAB round-up: April filing slumps to lowest level for a year

    May 03, 2017

    IPR filing so far in 2017 is up on last year, but CBM and PGR filing are both down. Michael Loney analyses Patent Trial and Appeal Board petition activity in April, and highlights a rare instance of the ITC taking notice of PTAB institution decisions

  • Federal Circuit issues important Helsinn on-sale bar ruling

    May 02, 2017

    In Helsinn v Teva, the Federal Circuit has ruled the America Invents Act did not change the meaning of “on sale” and the bar applies if the existence of the sale is public, even if the details of the invention are not publicly disclosed

  • Software in the wake of Alice: intended target or inadvertent casualty?

    April 28, 2017

    Myungjin Ro and Neil Davey review the impact of the US Supreme Court decision in Alice v CLS on software patenting, and analyse which courts seem to favour software patent holders and which courts appear to be harsher

  • The patent dance takes the US Supreme Court floor in Sandoz v Amgen oral arguments

    April 27, 2017

    Natalie Rahhal analyses oral arguments at the Supreme Court in the Sandoz and Amgen patent dispute over the Biosimilar Price Competition and Innovation Act

  • The latest people moves in the US

    April 19, 2017

    Managing IP’s regular review of the latest moves and appointments in the US includes hires by Oblon, Schiff Hardin, Covington & Burling, and Goodwin Procter, as well as the latest on the USPTO leadership

  • A catch-up with Mark Whitaker, MoFo partner and AIPLA president

    April 18, 2017

    Morrison & Foerster partner Mark Whitaker is in the middle of a busy term as president of the American Intellectual Property Law Association. He talks to Michael Loney about legislative fixes to patent venue and Section 101, what changes to the PTAB he would like, how responsive to IP the Trump administration will be, and the outlook for the International Trade Commission

  • PTAB Q1 rankings: 190 petitions in March round out record quarter

    April 11, 2017

    Patent Trial and Appeal Board petition filing in the first three months of 2017 was the largest quarterly filing figure ever. Michael Loney reveals the top petitioners, patent owners and law firms and analyses recent Federal Circuit and Board decisions of note

  • PTAB urged to designate more precedential decisions

    April 11, 2017

    Speakers at a recent Managing IP event called for the PTAB to give more precedential opinions to reduce inconsistencies between different panels, and identified gaps that the Board should address

  • Can US patent applicants go art unit shopping to avoid 101 rejections?

    April 10, 2017

    Speakers at a recent Managing IP event suggested US patents can be drafted to direct them into an art unit that will minimise the risks of 101 rejections. The lessons from Enfish and MCRo were also discussed

  • PTAB judges shed light on pet peeves and give tips for practitioners

    April 10, 2017

    At recent Managing IP events, PTAB judges discussed what practitioners do wrong during proceedings and shared tips for expert declarations, oral arguments and motions to amend. It was also revealed the Board has set a goal of dealing with remands within six months

  • USPTO announces PTAB procedural reform initiative

    April 07, 2017

    USPTO announces initiative to examine Patent Trial and Appeal Board procedures including those relating to multiple petitions, motions to amend, claim construction and decisions to institute

  • ABA proposes Section 101 amendment, AIPLA proposal to come

    April 05, 2017

    The ABA has proposed an amendment to Section 101, which follows an IPO subject matter eligibility proposal in January. The president of AIPLA has told Managing IP his association’s board will likely approve a 101 proposal within the next six weeks

  • PTAB grants Shire’s motion to amend

    April 05, 2017

    The Patent Trial and Appeal Board has allowed Shire to cancel all claims instituted for inter partes review except for one multiple dependent claim that was amended to depend on only non-instituted claims

  • Managing IP North America Awards Winners 2017

    March 24, 2017

    The North America Awards Dinner was held at the Four Seasons in Washington DC on March 23, revealing the best intellectual property law firms, individuals and cases of the past year

  • Latest people moves in the US

    March 15, 2017

    Managing IP’s regular review of the latest moves and appointments in the US includes hires by Goodwin, McDermott Will & Emery, Arent Fox, Dykema Cox Smith, Akin Gump, White & Case and Haynes and Boone.

  • Ropes & Gray to spin off patent prosecution practice in new firm

    March 08, 2017

    Ropes & Gray will leave the patent prosecution business, with the spin-out of a new firm with Joseph Guiliano as head

  • Interview: Dominion Harbor’s plan for IV's Kodak patent portfolio

    February 28, 2017

    Dominion Harbor has acquired Intellectual Ventures’ portfolio of Kodak patents. Its CEO, David Pridham, tells Michael Loney his plans for the portfolio and how he views the patent monetisation market

  • Amending claims at the PTAB – a fool’s errand?

    February 24, 2017

    Patent owners have found it tough to meet the requirements for motions to amend claims in PTAB post issuance review proceedings. Binal J Patel, J Pieter van Es and Kimberly S Devine examine the eight decisions where such motions have been granted

  • Why Microsoft has introduced protection against cloud computing patent litigation

    February 10, 2017

    In an interview, Erich Andersen explains Microsoft’s new programme to protect customers against IP litigation related to cloud computing, including making 10,000 patents available and pledging to Azure customers that if it transfers patents to non-practising entities they cannot be asserted against them

  • The top PTAB petitioners, patent owners, law firms and attorneys in 2016

    February 08, 2017

    The top petitioners, patent owners, law firms and attorneys in Patent Trial and Appeal Board petitions filed in 2016 have been revealed from Docket Navigator data. Apple only just hung onto its top petitioner status

  • Managing IP North America Awards 2017 shortlists announced

    February 07, 2017

    The shortlists for this year’s Managing IP North America Awards have been announced. The outstanding intellectual property firms and individuals in the US and Canada will be chosen from these, and revealed at a dinner in Washington DC on March 23

  • Associations call for Section 101 overhaul in comments to USPTO

    January 31, 2017

    PhRMA, ABA and AIPLA have submitted comments to the USPTO, and IPO has passed a resolution, all urging legislative changes to Section 101

  • Estoppel in PTAB proceedings and subsequent district court litigation

    January 27, 2017

    Jim Brogan, Brian Eutermoser and Janna Fischer discuss the ways that the unsuccessful IPR petitioner at the Patent Trial and Appeal Board still can challenge validity in subsequent district court litigation

  • IBM stays top in record year for US utility patent grants

    January 11, 2017

    The IFI Claims US Top 50 ranking of patent recipients reveals IBM acquired the most patents ever of any company in a year. Asian companies account for more than half of the top 50

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