Non-Prior Art Evidence in IPR - Yeda v. Mylan
(as published by Bloomberg Law) Section 311(b) of the America Invents Act (“AIA”) provides that a petitioner for inter partes review (“IPR”) may request cancellation of one or more claims of a patent ...
Articles
Motions to Amend: The Board Invites Alice to the IPR Party
One strategy that a patent owner can pursue in an IPR trial is to file a motion to amend seeking to replace one or more of the challenged claims with substitute claims that neither enlarge the scope o...
Commission May Modify a Civil Penalty Previously Affirmed by the Federal Circuit
(as published by ITC TLA) DBN Holding, Inc. v. Int’l Trade Comm’n, No. 2017-2128, 2018 WL 6181653 (Fed. Cir. Nov. 27, 2018) Summary: In a non-precedential opinion, the Federal Circuit held that the Co...
5 Commonly Misunderstood Patent Concepts
(as published by business.com) In most situations, a patent is the only way to deter a competitor from taking and using a company’s innovations. However, there are many aspects of patent law that are ...
Boston Patent Law Association Response to USPTO Request for Comments on Motion to Amend Practice and Procedures in Trial Proceedings Under the America Invents Act Before the PTAB
Jonathan Roses was the lead author on behalf of the Boston Patent Law Association's (BPLA’s) Patent Office Practice Committee of a December 2018 Response to USPTO Request for Comments on motion to ame...
A Firsthand Account of the Helsinn V. Teva Arguments
(as published by Law360) On Dec. 4, 2018, the U.S. Supreme Court heard oral arguments in Helsinn Healthcare v. Teva Pharmaceuticals. The question before the court was whether the America Invents Act o...
TTAB dismisses NEW MAN cancellation petitions, finding no abandonment despite six years of non-use
John L. Welch's article titled "TTAB dismisses NEW MAN cancellation petitions, finding no abandonment despite six years of non-use" was published by World Trademark Review. Read more (subscription req...
Risks of Waiting to File an IPR Following Click-to-Call
(as published by Thomson Reuters Westlaw Journal IP) The U.S. Court of Appeals for the Federal Circuit held in a recent en banc decision that the one-year time limit that an accused infringer has to r...
Protection Strategies for Growth-Phase Companies
(as published by IPWatchdog)
Non-Prior Art Evidence of the Prior Art? The Federal Circuit Says It May be Okay
Section 311(b) of the American Invents Act (“AIA”) provides that a petitioner may request cancellation of one or more claims of a patent “only on a ground that could be raised under section 102 and 10...
Who Bears the Burden in IPR? It Depends on the Argument
A hallmark of IPR proceedings is that the petitioner—not the patent owner—has the burden to prove that the challenged claims are unpatentable. This hallmark is statutory as section 316(e) of the Ameri...
Who Will Be Left Standing? The Constitutional Requirements for IPR Appeals
As we have previously discussed, some petitioners for IPR are not able to appeal an adverse decision by the PTAB because they lack constitutional standing. Though Article III standing is not required ...