Firm News

Federal Circuit Opens the Door for IPR Amendments

»»In Aqua Products, Inc. v. Matal, No. 2015-1177 (Fed. Cir. Oct. 4, 2017), an en banc Federal Circuit determined that it was improper for the Patent Trial and Appeal Board (PTAB) to place the burden of establishing the patentability of mid-IPR claim amendments on the patent holder.  Instead, the ruling determined that the burden should be […]

Federal Circuit Clarifies How Venue Under TC Heartland Will Be Applied

»»In In re Cray Inc., No. 2017-129 (Fed. Cir. Sept. 21, 2017) the Federal Circuit issued a decision clarifying the Supreme Court’s ruling in TC Heartland LLC v. Kraft Foods Group Brands LLC, 137 S. Ct. 1514 (2017). This Supreme Court case had rejected long-standing patent venue precedent, clarifying that, for the purposes of the […]

Tribal Sovereign Immunity: Defense Against Inter Partes Review

»»On September 8, 2017, Allergan PLC (“Allergan”), a global pharmaceutical company, publicly announced the assignment of all Orange Book-listed patents for its dry-eye drug RESTASIS® to the Saint Regis Mohawk Tribe (“Tribe”) in upstate New York. In a unified statement about the transaction, the Tribe Council stated, “This is a viable and sound opportunity for […]

Federal Agencies Have Standing to File CBM

»»In Return Mail, Inc. v. USPS, 16-1502, the Federal Circuit ruled that the United States Postal Service had standing to challenge Return Mail’s patent claims in a Covered Business Method proceeding (CBM), despite not being sued for patent infringement under the Patent Act.  Under 37 CFR 42.302, a petitioner may not file to institute covered business […]

Iancu Nominated for USPTO Director

»»It was announced on Friday, August 25, 2017, that Andrei Iancu has been nominated for Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office (USPTO).   Iancu will replace Joseph Matal, who has been serving as interim Director since Michelle Lee’s resignation in June. Andrei Iancu comes from […]

USTR Makes IP a Focus of NAFTA Renegotiation

»»Earlier this month, the US Trade Representative (USTR), Robert Lighthizer, released a detailed and comprehensive summary of the negotiating objectives for the US’s forthcoming renegotiation of the North American Free Trade Agreement (NAFTA). The text of these objectives are available in a press release here. In particular, the USTR seeks to add a substantive section […]

Federal Circuit Rules Trial Court Abused Discretion by Not Awarding Attorney Fees

»»In AdjustaCam v. Newegg, No. 2016-1882 (Fed. Cir. July 5, 2017), the Federal Circuit reversed the denial of attorney fees based on the Octane Fitness standard, determining that the trial court had abused its discretion by not awarding fees. AdjustaCam (a subsidiary of NPE Acacia Research) had sued Newegg for infringement of U.S. Patent No. […]

Bipartisan Group of Senators Introduce “STRONGER Patents Act of 2017”

»»In late June, three Democratic senators (Chris Coons (D-DE), Dick Durbin (D-IL), and Mazie Hirono (D-HI)) and one Republican senator (Tom Cotton (R-AR)) introduced the “STRONGER Patents Act of 2017.” This bill appears to have been motivated by a recent report from the U.S. Chamber of Commerce that had been heavily critical of the U.S. […]

Supreme Court Clarifies Biosimilar Legislation in Sandoz

»»On June 12, the Supreme Court also handed down another patent-related opinion in Amgen Inc. v. Sandoz Inc., a case dealing with the Biologics Price Competition and Innovation Act, a small 17-page subchapter contained within the Affordable Care Act (“Obamacare”). This subchapter deals with generic “biologics,” very-large-molecule drugs typically synthesized from biological sources such as […]

Supreme Court to Review Constitutionality of Post-Grant Proceedings in Oil States

»»On June 12, the Supreme Court granted certiorari in Oil States vs. Greene’s Energy Group, et al., a case dealing with the constitutionality of the post-grant challenge procedures established by the America Invents Act (AIA). The Federal Circuit, below, had upheld the constitutionality of these procedures. The petition for writ of certiorari submitted by Oil […]