Arthrex v. Smith & Nephew (Fed. Cir. 2018) [Anthrex Decision]. The dispute in this case is about what should happen when a patentee disclaims its patent claims prior to an inter partes review institution decision. The Arthrex patent at issue is U.S. Patent No. 8,821,541 which covers a suture anchor — similar to a dry-wall anchor, but sticks […]
Ron Katznelson’s new paper is available online, titled Private Patent Rights, the Patent Bargain and the Fiction of Administrative ‘Error Correction’ in Inter Partes Reviews. Ron argues: The exclusive patent right is not a creature of Congress. That right originates with, and is created by, the inventor. It is only secured by statute subject to the […]
A pair of patent appeals were argued before the High Court this week, each with potentially massive ramifications for IP litigators. One involves a challenge to a part of the inter partes patent review process established by the 2011 America Invents Act, while the other challenges the whole inter......
There was no clear majority Monday signaling the death of inter partes review the administrative procedure for reviewing patent validity created by the 2011 America Invents Act.
The Supreme Court will hear oral arguments on Cyber-Monday 11/27 in two important patent cases: Oil States Energy Services, LLC v. Greene’s Energy Group, LLC, No. 16-712. Asking whether inter partes review (IPR) operates unconstitutionally “by extinguishing private property rights through a non-Article III forum without a jury.” SAS Institute Inc. Show More Summary
On Monday morning, the U.S. Supreme Court will consider two cases that could upend or significantly reshape inter partes review,
The USPTO has finalized a new set of fees: Final Rules. Some of the changes: Inter Partes Reviews: (request + post-institution) $30,500 (up from $21,000). Application Filing (Filing + Search + Examination) $1,720 (up from $1,600). Provisional Applications: $280 (up from $260). Extra independent claims: $460 (up from $420). Extra dependent claims: $100 (up from $80). […]
In what appears to be a first, the Patent Trial & Appeal Board (PTAB) has requested briefing from Amacus Curie on the question of whether Tribal Ownership of a patent immunizes the patent from Inter Partes Review (IPR) challenge. The case is Mylan v. Saint Regis Mohawk Tribe, IPR2016-01127 et al. The panel writes: [W]e authorize briefing from any other […]
by Dennis Crouch The final group of amicus briefs were filed this past week in Oil States v. Greene’s Energy — This round supporting the Government’s position that Inter Partes Review (IPR) proceedings are consistent with the US Constitution. As per usual, the briefs are largely divisible into two categories: (1) direct merits arguments focusing […]
Amici briefs supporting AIA Trials and Inter Partes Review are beginning to be filed. The first brief in is filed by John Vandenberg’s team at Klarquist representing SAP, Gilead, Nautilus, and others. The Brief presents a reexamination linkage and slippery-slope argument in two forms: (1) killing inter partes review will also kill reexaminations; and (2) pre-AIA patentees […]
Responsive merits briefs have been filed in Oil States v. Greene’s Energy: 16-712 – Government Brief 16-712 – Greene’s Energy Brief The Government presents the question as follows: Whether inter partes review comports with Article III and the Seventh Amendment. Show More Summary
A few weeks ago, we wrote about a hellishly sketchy plan by a drug company, Allergan, to avoid the process as known as "Inter Partes Review" of its weak patents. In the weeks since that post a bunch has happened, but before we catch you up, a refresher is important. Show More Summary
In September, we learned that the pharma giant Allergan had sold key patents to the St Regis Mohawk band in upstate New York, in a bid to avoid a streamlined patent-challenge process called inter partes review (IPR). (more…)
Owens Corning v. Fast Felt Corp (Fed. Cir. 2017) After being sued for infringing Fast Felt’s U.S. Patent No. 8,137,757, Owens Corning retaliated with a petition for inter partes review. Although the PTO instituted the IPR, the PTAB eventually determined that the claims were not obvious — i.e., that “Owens Corning had failed to show obviousness of […]
Here are three big reasons why, according to IP columnist Tom Kulik.
My Senator (McCaskill) has introduced S. 1948 titled “A bill to abrogate the sovereign immunity of Indian tribes as a defense in inter partes review of patents.” [TribalImmunity] The Bill provides one simple statement as follows: Notwithstanding any other provision of law, an Indian tribe may not assert sovereign immunity as a defense in a […]
"Inter partes review" let a patent's opponents be heard, without spending millions.
We've written a bunch over the past few years about the so-called Inter Partes Review (IPR) process at the US Patent Office. In short, this is a process that was implemented in the patent reform bill back in 2010 allowing people andShow More Summary
by Dennis Crouch The America Invents Act of 2011 brought about sweeping changes to the US Patent System — most dramatic of these was the creation of the administrative trials: especially Inter Parties Review (IPR) and Covered Business Method Review (CBM). But if initiation of the AIA Trial system has been dramatic, the potential outcome of […]
by Dennis Crouch Oil States Energy Services, LLC, v. Greene’s Energy Group, LLC., now pending before the Supreme Court raises one important question: Issue: Whether inter partes review … violates the Constitution by extinguishing private property rights through a non-Article III forum without a jury. In June 2017, the Supreme Court granted certiorari and briefing is expected […]