Case Law Updates

IPR Appeal? Not Without Standing (and not if Moot), According to the Federal Circuit.

Written by: James M. Gould There is now a clear line between the statutory right of any party (other than the patent owner) to file a petition for inter partes review (IPR), and the additional Article III requirements to appeal an adverse final written decision resulting from that proceeding.  Relying on this new distinction yesterday, […]

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Under AIA, A Sale is A Sale (and Invalidating), Even If Confidential

Written by: Christopher H. Blaszkowski Today, the Supreme Court applied long-standing case law to the America Invents Act (2012) (“AIA”) in holding that a commercial sale, even if kept confidential, is invalidating as it places the invention “on sale” under 35 U.S.C. §102(a)(1).  Helsinn Healthcase S.A. (“Helsinn”) is a pharmaceutical company that developed and produced […]

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Post Grant Proceedings to Apply Phillips Claim Construction Standard to All Petitions Filed On or After November 13, 2018

Written by: Christopher H. Blaszkowski On October 10, 2018, the U.S. Patent and Trademark Office issued a final rule changing the claim construction standard applied during inter partes review, post-grant review, and covered business method proceedings (collectively, “AIA proceedings”).  The final rule revises the claim construction standard in AIA proceedings from the previously applied broadest […]

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USPTO Proposes Rulemaking to Require the PTAB to Construe Claims According to Phillips in AIA Trials

Written by: Christopher H. Blaszkowski & Alyssa R.M. Pugh The USPTO has issued a notice of proposed rulemaking concerning its intention to replace the current “broadest reasonable interpretation” (BRI) claim construction standard in AIA trials with the “ordinary and customary meaning” standard set forth in Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. […]

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The PTAB’s New “Binary Decision” to Institute in AIA Trials—All Claims and All Grounds of Invalidity, or None at All

Written by: Christopher H. Blaszkowski Just a few weeks ago, the U.S. Supreme Court issued SAS Institute Inc. v. Iancu, holding that that the Patent Trial and Appeal Board (PTAB) must issue a final written decision as to any patent claim challenged by an IPR petitioner. Two days later, the PTAB issued written guidance explaining that it will, […]

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Inter Partes Review Is Here To Stay – Supreme Court Upholds Constitutionality

Written by: Christopher H. Blaszkowski & Alyssa R.M. Pugh In a 7-2 decision, Justice Thomas delivered an opinion in Oil States Energy Services, LLC v. Greene’s Energy Group, LLC holding that the inter partes review process is constitutional under both Article III and the Seventh Amendment. The determinative issue before the Court was whether patent […]

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Federal Circuit Paves the Way for Easier Claim Amendments During Inter Partes Review

Written by: Benjamin E. Leace & Christopher H. Blaszkowski In a long awaited decision, the en banc Federal Circuit ruled today that the patent owner does not bear the burden of demonstrating the patentability of any claim amendments made during an inter partes review (“IPR”).  Depending on how the United States Patent and Trademark Office […]

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Supreme Court Strikes Down Lanham Act’s “Disparagement Clause” for Violating the First Amendment

Declaring that “[s]peech may not be banned on the ground that it expresses ideas that offend,” the U.S. Supreme Court in Matal v. Tam (No. 15-1293) held that Section 2(a) of the Lanham Act (15 U.S.C. § 1052(a)) is facially unconstitutional for violating the Free Speech Clause of the First Amendment.  The salient section of […]

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Supreme Court Issues Important Decision in the Biopharma Sector Favoring Earlier Entrance of Cost-Saving Biosimilars into the US Market

In a closely watched case in the biopharma space (Sandoz Inc. v. Amgen, Inc., No. 15–1039, June 12, 2017), the Supreme Court issued its first ever decision on how to interpret the biosimilar patent dispute provisions of the Biologics Price Competition and Innovation Act (BPCIA).  Most importantly, the Court ruled that biosimilar applicants do not […]

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Supreme Court Limits Patent Owners’ Control Over Patented Articles After Authorized Sale

The U.S. Supreme Court issued a significant decision today that largely answers the question of how much control a patent owner can wield over a patented product after it has been sold, holding that a patent owner’s decision to sell a product exhausts all of its patent rights in that product, regardless of any restrictions […]

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