A recent Federal Circuit opinion held that state sovereignty does not shield states from  inter partes review (“IPR”) before the Patent Trial and Appeal Board (the “Board”). Regents of the Univ. of Minn. V. LSI Corp., No. 2018-1559 (Fed. Cir. June 14, 2019) (opinion available here). This decision is another strike against sovereign

The Supreme Court of the United States issued a ruling today in Return Mail, Inc. v. Postal Service, 587 U.S. ___ (2019), holding that the United States Government is not a “person” eligible to petition for covered-business-method (“CBM”) review, inter partes review (“IPR”), or post-grant review (“PGR”) America Invents Act (“AIA”) proceedings before the

Article III standing has become a contested and often dispositive issue in appeals from the Patent Trial and Appeal Board (PTAB).  For example, as we reported previously, the Federal Circuit has dismissed an inter partes review (IPR) petitioner’s appeal where the petitioner-appellant lost standing by abandoning development of its potentially infringing product.[1]  We also

Recently, in AVX Corp. v. Presidio Components, Inc., the Federal Circuit dismissed AVX Corp.’s (“AVX”) appeal of the PTAB’s inter partes review decision for lack of standing. AVX petitioned the PTAB for an inter partes review of the 21 claims of U.S. Patent No. 6,661,639 (“the ’639 patent”). Presidio Components Inc. (“Presidio”) owns the

On April 18, 2019, in Dodocase VR, Inc. v. MerchSource, LLC, No. 2018-1724 (Fed. Cir. Apr. 18, 2019) (nonprecedential), the Federal Circuit affirmed the District Court for the Northern District of California, agreeing that Dodocase VR, Inc. (“Dodocase”) is entitled to a preliminary injunction against MerchSource, LLC (“MerchSource”). The preliminary injunction requires that MerchSource

The Federal Circuit reversed a Patent Trial and Appeal Board (“PTAB” or “the Board”) ruling that invalidated three patents in three separate IPR proceedings (IPR2015-00325, IPR2015-00326, and IPR2015-00330).  The patent owner, ATI Technologies, asserted that the inventions in the challenged claims antedated the asserted prior art.  That is, ATI attempted to swear behind the asserted

On February 7, 2019, the Federal Circuit dismissed an appeal because the IPR petitioner, Momenta Pharmaceuticals, essentially “lost” its constitutional standing when – prior to completing its appeal to the Federal Circuit – it abandoned development of its proposed biosimilar after failed Phase 1 clinical trials. Momenta Pharm., Inc. v. Bristol-Myers Squibb Co., No.

When a non-patent literature (NPL) reference is used to challenge a patent, a key issue to be resolved is whether the NPL reference is a “printed publication” under 35 U.S.C. § 102. Several prior posts have addressed this question, such as here and here.

The Federal Circuit recently, on November 6, weighed in yet

In its recent decision Data Engine Technologies LLC v. Google LLC, No. 17-1135 (Fed. Cir. Oct. 9, 2018), the Court of Appeals for the Federal Circuit affirmed-in-part and reversed-in-part the district court’s ruling on Google’s Fed. R. Civ. P. 12(c) Motion for Judgment on the Pleadings that all asserted claims of U.S. Patent Nos.

A Federal Circuit opinion issued September 13, 2018, has affirmed a decision by the Patent Trial and Appeal Board (“PTAB” or “the Board”) that claims of U.S. Patent No. 8,714,977 (“the ’977 patent”) covering certain dental implants are unpatentable. The ’977 patent, assigned to Nobel Biocare Services AG (“Nobel”), was challenged by Instradent USA, Inc.