Patent Law Weblog
Category: Post-Grant Proceedings
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By Kevin E. Noonan — The Federal Circuit continued its explication of the circumstances wherein an inter partes review petition is time-barred under 35 U.S.C. § 315(b) in Mayne Pharma Int'l v. Merck Sharp & Dohme Corp., decided earlier this month, and as a bonus, illustrated how including disclosure in a specification for completeness and…
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By Joshua Rich — In this case, the question ultimately answered by the Federal Circuit was a straightforward question of statutory interpretation: in determining whether a party is time-barred from filing a petition for inter partes review because a privy of that party or the real party in interest was served with a complaint alleging…
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By Kevin E. Noonan — The Federal Circuit handed down its decision in Regents of the University of Minnesota v. LSI Corp. on Friday, and perhaps not surprisingly (in view of its decision last summer in Saint Regis Mohawk Tribe v. Mylan Pharmaceuticals Inc.), held that State sovereign immunity does not preclude institution of inter…
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By Joshua Rich — In a 6-3 decision, the Supreme Court today held that federal government agencies cannot avail themselves of America Invents Act (AIA) post-grant proceedings. This decision was based on the Court's determination that the government is not a "person" as that term is used in relation to inter partes review (IPR), post-grant…
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By Donald Zuhn — Last week, in Novartis Pharmaceuticals Corp. v. Par Pharmaceutical Inc., District Judge Richard G. Andrews of the U.S. District Court for the District of Delaware granted a Motion for Estoppel under 35 U.S.C. § 315(e)(2) filed by Novartis Pharmaceuticals Corp. Defendant Par Pharmaceutical Inc. had taken no position on the estoppel…
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By Kevin E. Noonan — Today, the U.S. Supreme Court denied a petition for writ of certiorari by the St. Regis Mohawk Indian Tribe on the question (answered in the negative by the Patent Trial and Appeal Board and the Federal Circuit) of whether tribal sovereign immunity could protect the tribe from being named as…
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By Kevin E. Noonan — The U.S. Patent and Trademark Office today announced a new pilot program relating to motions to amend in post-grant review proceedings (post-grant review, inter partes review, and covered business methods reviews) under the Leahy-Smith America Invents Act. As set forth in the announcement: The pilot program provides patent owners with…
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By Kevin E. Noonan — Today, the U.S. Patent and Trademark Office's Patent Trial and Appeal Board announced that it had updated its Motion to Amend Study to include all trials under the post-grant review proceedings enacted in the Leahy-Smith America Invents Act (AIA) through the end of Fiscal Year 2018 (which ended on September 30,…
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By Kevin E. Noonan — One of the criticisms of the post-grant review proceedings instituted under the Leahy-Smith America Invents Act (post-grant review, inter partes review, and covered business method review) was the (relative) unavailability of pursuing amendments during the proceedings, making them "all or none" propositions for patent owners. The Federal Circuit improved this…
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By Josh Rich — Earlier today, the Supreme Court heard oral argument in Return Mail, Inc. v. U.S. Postal Service, which presented the simple question whether the federal government is a "person" entitled to petition for post-grant review under the Leahy-Smith America Invents Act ("AIA"). While the issue may rarely arise, it poses a significant…
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