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Publications
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12.14.2021IPR Evolution: Decisions and Developments Shaping Inter Partes Review PracticeLawyer PublicationsChange has propelled inter partes reviews (IPRs) since the process launched at the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board (PTAB) in 2012. In the period since March 2020, when we first published this practice guide, the IPR process has continued to mature and evolve.
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03.12.2021IPR Practice: “Good Causes” and Responding to Patent Owners’ Preliminary ResponsesLawyer PublicationsWhen the patent owner files a patent owner’s preliminary response (POPR) to an inter partes review petition, the petitioner can request leave to reply before the Board issues its institution decision. Such requests must include “a showing of good cause.”
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12.15.2017Federal Circuit Rules Out State-Law Remedies for Failure to Participate in the Biosimilars "Patent Dance"UpdatesOn December 14, the Federal Circuit issued a decision that further clarifies the ground rules for disclosures of product information by manufacturers of biosimilar pharmaceutical products. In particular, the Federal Circuit ruled in Amgen Inc. v. Sandoz Inc. that the original sponsors of biologics products cannot invoke state laws to compel applicants that are seeking to market biosimilar products to disclose information about those products under the Biologics Price Competition and Innovation Act (BPCIA).
Presentations
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01.24.2024ACPC 2024 Winter MeetingSpeaking EngagementsSponsorship
Association of Corporate Patent Counsel / New Orleans, LA -
05.19.2023The Latest Patent-Law Practice Updates for Protecting Your Business and Your TechnologySpeaking EngagementsACC Wisconsin 2023 Annual Conference / Elkhart Lake, WI
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03.23.2022 – 03.25.20222022 PTAB Bar Association Annual ConferenceSpeaking EngagementsThe 2022 PTAB Bar Association Annual Conference was held March 23 – 25, 2022, at the Ritz-Carlton in Washington, D.C.
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06.24.2021PTAB Discretionary DenialsSpeaking EngagementsAndrew Dufresne served as a panelist on Session on Discretionary Denials – The PTAB’s recent designation of opinions as precedential that relate to its discretion to deny IPR institution under 35 U.S.C. § 325(d) and § 314(a) has led to significant changes in IPR practice.
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06.21.2021 - 06.25.20212021 FCBA Bench & Bar Virtual ConferenceSpeaking EngagementsSponsorship
Federal Circuit Bar Association (FCBA) / VirtualThe Federal Circuit Bar Association Bench & Bar® Conference was held virtually from June 21-25.
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04.12.2021How the Shift in Political Power May Impact IP IssuesSpeaking Engagements
Moderator
ABA IP Law Section /WebinarAndrew was the moderator for one of the plenary sessions at the ABA IP Law Section’s spring meeting to discuss How the Shift in Political Power May Impact IP Issues. -
04.03.2018Patent Law Year in ReviewSeminarsPerkins Coie In-house CLE / Palo Alto, CAA review of major patent appellate decisions over the last year by the U.S. Supreme Court and the Federal Circuit.
Life Science Legal Report
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Senator Tillis Asks the PTO to Reconsider Fintiv Factor Two
On November 2, Senator Thom Tillis—the ranking member of the Senate Judiciary Committee’s Subcommittee on Intellectual Property—sent a letter to acting PTO Director Andrew Hirshfeld expressing concern about the PTAB’s use of “unrealistic” trial schedules to guide institution denials under Apple v. Fintiv. We recently reported our own analysis concluding that approximately 94% of the... Continue Reading…
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How reliable are trial dates relied on by the PTAB in the Fintiv analysis?
In recent years, the Patent Trial and Appeal Board has frequently declined to institute IPRs for procedural reasons unrelated to a petition’s substantive strength. In particular, the Board has increasingly denied petitions in view of related, parallel litigation that it perceives as so far advanced that it would be most efficient to deny institution and... Continue Reading…
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What Qualifies as a Good “Good Cause” When Responding to a Patent Owner’s Preliminary Response?
In an inter partes review proceeding, the petitioner first files a petition to challenge the validity of a patent. In response to the petition, the patent owner can file a POPR. Typically, the PTAB then decides whether to institute an IPR trial. In recent years, the rules have provided petitioners with an option to reply... Continue Reading…
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In Uniloc 2017 LLC v. Hulu, LLC, No. 2019-1686 (Fed. Cir. July 22, 2020), the Federal Circuit considered whether the AIA permits the PTAB to reject substitute claims proposed during an IPR for patent ineligibility under § 101. The panel majority affirmed the PTAB’s denial of a motion to amend on that basis. Background The patent... Continue Reading…
