Firm News

Federal Circuit Rules on Patent Term Adjustment (PTA) in PCT Cases

»»In Actelion Pharms., Inc. v. Matal, the USPTO granted a Patent Term Adjustment (PTA) of 40 days for Actelion’s patent relating to pyridine derivatives.  The patent at issue was a national stage application filed under the Patent Cooperation Treaty.  Actelion contended that it should have been entitled to either 41 days from the 30-month deadline […]

Federal Circuit Extends §101 to Cover Graphical User Interfaces in Core Wireless v. LG

»»In Core Wireless Licensing S.A.R.L. v. LG Electronics, Inc., 2016-2684, 2017-1922 (Fed. Cir. Jan. 23, 2018), a panel of the U.S. Court of Appeals for the Federal Circuit (Moore, O’Malley, Wallach) upheld patent claims directed to a graphical user interface under 35 U.S.C. §101, concluding that the claims were not directed to a patent-ineligible abstract […]

IPR Time-Bar Institution Decision Is Appealable

»»In Wi-Fi One, LLC v. Broadcom Corp., 15-1944 – 2018-01-08, the Federal Circuit reviewed whether an inter partes review (IPR) Institution Decision can be appealed based on a time-bar under 35 U.S.C. § 315(b).  Sitting en banc, the Federal Circuit ruled Institution Decisions made under 35 U.S.C. § 315(b) are appealable. 35 U.S.C. § 315(b) states […]

Oral Arguments in Oil States Show a Divided Supreme Court

»»On November 27, 2017, the Supreme Court of the United States heard oral arguments in Oil Sates Energy Services, LLC v. Greene’s Energy Group, LLC. This much anticipated case is set to determine whether inter partes review proceedings at the United States Patent and Trademark Office (USPTO) Patent Trial and Appeal Board (PTAB) violate the Constitution by extinguishing […]

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 […]