Fed Circuit Watch: No State Sovereign Immunity in IPR

AIA fed circuit watch IPR patent sovereign immunity

On June 14, 2019, the Court of Appeals for the Federal Circuit delivered its long-awaited opinion on state sovereign immunity in post-grant proceedings in Regents of the Univ. of Minnesota v. LSI Corporation.[1]  Like it ruled in the sister case last year, Saint Regis Mohawk Tribe v. Mylan Pharms. Inc.,[2] dealing with tribal sovereign immunity, …

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SCOTUS Watch: Government Is Not a Person for Purposes of AIA

AIA CBM IPR patent PGR scotus watch

On June 10, 2019, the U.S. Supreme Court overturned the Court of Appeals for the Federal Circuit in Return Mail, Inc. v. United States Postal Service,[1] in which the Court held that the Government was not a “person” for definitions of the America Invents Act (AIA). The case originates from Return Mail’s patent, U.S. Patent …

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SCOTUS Watch: On-Sale Bar Still Valid Under AIA

102 AIA on-sale bar patent pre-AIA scotus watch

On January 22, 2019, the United States Supreme Court handed down a highly anticipated ruling that has caused measurable discrepancies amongst the patent community after the America Invents Act (AIA) was enacted.  That ruling, Helsinn Healthcare S.A. v. Teva Pharms. USA, Inc.,[1] held that the on-sale bar applies to confidential sales more than one year …

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Rule Change for PTAB Post-Grant Claim Construction

AIA BRI CBM IPR patent PGR Phillips PTAB

On October 11, 2018, the USPTO published in the Federal Register a rule change, 83 F.R. 51340, to take effect today, November 13, 2018.  For all AIA post-grant petitions (IPRs, PGRs, and CBMs) filed on or after this date, the broadest reasonable interpretation (BRI) standard will no longer be used in claim construction for these …

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SCOTUS Watch: Is the U.S. Government a Person?

AIA CBM IPR patent PGR SAS scotus watch

An interesting question has been presented to the U.S. Supreme Court when it granted a writ of certiorari on October 26, 2018.  That is, is the United States Government, through one of its agencies, a “person” for purposes of the America Invents Act (AIA), the most recent Patent Act from 2012.  The case, Return Mail …

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SCOTUS Watch: Challenge to Secret AIA On-Sale Bar as Helsinn Granted Certiorari

102 AIA fed circuit watch on-sale bar patent pre-AIA scotus watch

On June 25, 2018, the United States Supreme Court granted the petition for writ of certiorari requested by Helsinn Healthcare S.A.  In the appellate case which had been winding its way through the federal courts, Helsinn Healthcare S.A. v. Teva Pharmaceuticals USA, Inc.,[1] the Court of Appeals for the Federal Circuit ruled against Helsinn in …

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SCOTUS Watch: Supreme Court Vacates CBM Scope Definition

103 AIA CBM obviousness patent PTAB scotus watch

On May 14, 2018, the U.S. Supreme Court granted PNC Bank National Assoc.’s petition for writ of certiorari and vacated the Fed Circuit’s ruling limiting the scope of a covered business method (CBM), in PNC Bank Nat’l Ass’n v. Secure Axcess, LLC.[1]  The Supreme Court, in its orders, wrote: The petition for writ of certiorari …

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SCOTUS Watch: No PTAB Partial Review of Claims

AIA IPR patent PTAB scotus watch

In the second of two patent decisions handed down by the United States Supreme Court on April 24, 2018, SAS Inst. Inc. v. Iancu[1] was the less visible of the two cases.  However, SAS’s close split decision and more practical effect on the patent practice will make it the much more important patent case handed …

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SCOTUS Watch: IPRs Do Not Violate Article III or Seventh Amendment

AIA IPR judicial review patent PTAB scotus watch

Article III of the U.S. Constitution states: The judicial power of the United States, shall be vested in one Supreme Court, and in such inferior courts as the Congress may from time to time ordain and establish.[1] Also, the Copyright and Patent Clause of the U.S. Constitution states: The Congress shall have power . . …

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Fed Circuit Watch: Helsinn Redux: En Banc Denied

102 AIA fed circuit watch on-sale bar patent

On January 16, 2018, in a non-precedential per curiam order (the order was not published, but was made available from our colleagues at the Patently-O blog), the United States Court of Appeals for the Federal Circuit issued an order denying Helsinn’s petition for rehearing and en banc rehearing. Judge O’Malley, a member of the original …

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