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Publications
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07.06.2022Perkins Coie Wins Determination of No Violation in Infringement Investigation for TCLUpdatesPerkins Coie has won a final determination of no violation of Section 337 in an infringement investigation for firm client TCL Industries Holdings Co., Ltd. et al. (TCL) in the matter of Certain Digital Video-Capable Devices and Components Thereof (337-TA-1224).
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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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11.05.2021Real Parties-In-Interest: Guidance On Who Is An RPI—And Who Is Not—In Post-Grant ProceedingsLawyer PublicationsIn post-grant review proceedings before the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board, practitioners who omit any of the parties with an interest in the matter could face consequences as severe as dismissal of the proceeding.
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2020The Supreme Court’s SAS Decision: Has All-or-Nothing Institution Created a Wave of Change?Lawyer PublicationsDid the SAS Institute Inc. v. Iancu ruling change the PTAB's approach to institution of IPRs? Our original research examines the aftereffect of the Court's decision.
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07.18.2019The Ripple Effect of SAS Institute v. Iancu on IPR PracticeArticles
Law360
In April 2018, the U.S. Supreme Court held in SAS Institute Inc. v. Iancu that the Patent Trial and Appeal Board must institute inter partes review either on all claims raised in a petition or none of them.
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05.05.2018Generic Drug Labels May Establish Specific Intent to Induce Infringement of Method of Use ClaimsBlogsOn April 13, 2018, the Federal Circuit issued a new decision in its recent line of cases analyzing whether generic drug labels may be evidence of induced infringement of method of treatment claims in Hatch-Waxman cases.
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04.26.2018Supreme Court Holds That When PTAB Institutes An Inter Partes Review, It Must Decide Patentability of All Challenged ClaimsBlogsOn April 24, 2018, the Supreme Court held that the Patent Trial and Appeal Board (PTAB) must address all challenged claims of an instituted Petition in a final written decision. SAS Inst. Inc. v. Iancu, Dir. U.S. Pat. & Trademark Off., No. 16-969, slip op. (U.S. Apr. 24, 2018).
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04.02.2018In An Opinion Designated Informative, The Board Denied Institution For Failing To Raise Grounds Not Already Considered By The Patent OfficeBlogsIn a July 2017 decision designated as informative, the PTAB provided guidance as to when it may exercise its discretion under 35 U.S.C. § 325(d) to deny institution when “the same or substantially the same prior art or arguments previously were presented to the Office.”
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03.28.2018Presentation Directed Toward Business Persons, Rather Than Skilled Artisans, Did Not Qualify As Prior ArtBlogsIn a final written decision in April 2017, the PTAB found that Petitioner did not satisfy its burden of proving claims of U.S. Patent No. 8,618,135 (the ’135 patent) were unpatentable in part because the PTAB found a slide deck presented to business persons was not prior art.
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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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12.16.2020What Will “Stick” When This Craziness Is Over: Pandemic Litigation Practices That May Be Here to StayWebinarsVirtual Litigation Webinar
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07.16.2020Printed Publication as Prior Art: New PTAB Guidance, Practical Considerations for Patent Holders and ChallengersSpeaking Engagements
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06.25.2020
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05.07.2019 - 05.09.2019Patent Fundamentals Bootcamp 2019: An Introduction to Patent Drafting, Prosecution, and Litigation - ChicagoSpeaking EngagementsPLI Bootcamp / Chicago, IL
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04.24.2018The Devil in the Label Details: A New Test for Induced InfringementSpeaking EngagementsParagraph IV Disputes
American Conference Institute: Hatch-Waxman Series / New York, NY
Life Science Legal Report
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USPTO Requests Comments on PTAB-Decision Review by October 18, 2022
On July 22, 2022, the USPTO released a Request for Comments (RFC) seeking public input on Director review, Precedential Opinion Panel (POP) review, and internal circulation and review of Patent Trial and Appeal Board (PTAB) decisions. As set out in the RFC, “[t]he USPTO has implemented a number of processes that promote the accuracy, consistency,... Continue Reading…
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On February 28, 2022, the Patent Trial and Appeal Board (“PTAB”) issued a decision on priority in an interference proceeding between the Broad Institute, Inc., Massachusetts Institute of Technology, and President and Fellows of Harvard College (collectively, “Broad”) and the Regents of the University of California, University of Vienna, and Emmanuelle Charpentier (collectively, “CVC”), and... Continue Reading…
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Federal Circuit Confirms the Broad Reach of IPR Estoppel
Under 35 U.S.C. § 315(e), inter partes review (IPR) estoppel applies to “any ground that the petitioner raised or reasonably could have raised during that inter partes review.” In 2018, the Federal Circuit held in Shaw Industries Group, Inc. v. Automated Creel Systems, Inc., 817 F.3d 1293 (Fed. Cir. 2016), that IPR estoppel does not apply... Continue Reading…
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Real Parties-In-Interest: Guidance On Who Is An RPI-And Who Is Not-In Post-Grant Proceedings
In a recent article, Real Parties In Interest Guidance On Who Is An RPI-And Who Is Not-In Post Grant Proceedings, linked here, Emily Greb and Maria Stubbing offer practical guidance and examine caselaw to clear some of the confusion and frustration practitioners encounter when real parties-in-interest in post-grant review proceedings before the U.S. Patent and Trademark... Continue Reading…
