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Tag Archives: IPR

Hogan Lovells’ U.S. + Germany Patent Update – July 2019 (English, 日本語, 한국어)

Hogan Lovells’ U.S. + German Patent Update reports on recent patent news and cases from Germany and the United States. The full July 2019 update can be accessed in the following languages: English available here 日本語 available here 한국어 available here The July 2019 Update covers the following developments across the U.S. and Germany: United

When Can A Patent Challenger Appeal The PTO’s Decision To Uphold A Patent?

In 2011, Congress passed the America Invents Act (“AIA”), which established new ways to challenge the validity of an issued patent before the U.S. Patent and Trademark Office (“PTO”).  These procedures were seen by many as a cheaper alternative to litigation in court and have become popular.  Over 1,600 inter partes review (“IPR”) petitions were

Hogan Lovells’ U.S. + German Patent Update – January 2019 (English, 日本語, and 한국어)

Hogan Lovells’ U.S. + German Patent Update reports on recent patent news and cases from Germany and the United States. The January 2019 Update is available in the following languages: English language available here 日本語(Japanese language) available here 한국어 (Korean language) available here The January 2019 spotlight article covers a recent Federal Constitutional Court (FCC) decision in Germany

U.S. + Germany Patent Update – November 2018 (English, 日本語 & 한국어)

IN THIS ISSUE  PTAB Denies Institution as Duplicative Due to Earlier IPR Challenge by Different Petitioner – Shenzhen Silver Star Intelligent Tech. v. iRobot Corp. (5 September 2018) German Federal Patent Court on Filing Auxiliary Requests With Narrower Claims in Patent Nullity Proceedings – “Satellite Based Paging System with Location Transmission,” Federal Patent Court of

Phillips claim construction standard used by U.S. Courts to now apply to PTAB proceedings

The United States Patent and Trademark Office (“USPTO”) has published its new Final Rule on the standard of review used in construing challenged patent claims in the Patent Trial and Appeal Board (“PTAB”).  Currently, the PTAB relies on the “broadest reasonable interpretation” (“BRI”) standard in construing challenged patent claims.  However, the new rule directs the

US – Patent IPRs: Sovereign immunity defence heading on up?

In this post, we discuss the sovereign immunity defence for IPRs which has garnered much attention, with the final chapter likely ending up at SCOTUS. The article was first published in Intellectual Property Magazine, April 2018. Summary So how does the sovereign immunity saga end? The PTAB and Congress have already made their scepticism of tribal

US: PTAB – What’s in store for the rest of the year?

In this post we examine how Section 101, IPRs and sovereign immunity defences are set to shape the board’s procedures and strategies over the coming months. The article was first published in Intellectual Property Magazine, March 2018. Before projecting the future, it is important to reflect on the past. The US Patent Trial and Appeal Board (PTAB)

Federal Circuit Shifts Burden of Proof for Amendments in Post-Grant Proceedings

On October 4, 2017, the Federal Circuit, sitting en banc, issued a ruling in Aqua Products, Inc. v. Matal, placing the burden of persuasion on the petitioner to prove the invalidity of amended claims in post-grant proceedings, such as Inter Partes Reviews (IPRs).  While the decision comprised five separate opinions, the majority rejected the Patent

European Commission paper on Brexit and IP

The European Commission has released a position paper on “Intellectual property rights (including geographical indications)” giving us the first indication of how the Commission will approach the Brexit negotiations with the UK regarding Intellectual Property Rights (“IPR“). The Commission has set up a Taskforce on Article 50 negotiations with the United Kingdom to prepare the

U.S. Patent Legislation: The STRONGER Patents Act of 2017

In June, three democratic senators (Chris Coons from Delaware, Dick Durbin from Illinois, and Mazie Hirono from Hawaii) and one republican senator (Tom Cotton from Arkansas) introduced the “STRONGER Patents Act of 2017.” One of the motivations for the bill appears to be that the U.S. Chamber of Commerce recently ranked the U.S. patent system

US: Time to simplify patent challenges (perspective)

The America Invents Act (AIA) became law roughly five years ago, and with its implementation came new administrative proceedings by which companies may challenge the validity of patents at the U.S. Patent and Trademark Office. Rather than establishing a single uniform procedure that permits challenges to any patent based on any statutory ground, however, Congress

USPTO issues new rules for post-grant proceedings effective May 2

The U.S. Patent and Trademark Office (“PTO”) issued amendments to its “Rules of Practice for Trials before the Patent Trial and Appeal Board” for IPR, CBM, and PGR proceedings, which will be effective in all current and future proceedings starting on May 2, 2016. Most notably, these amendments allow a patent owner to submit testimonial

US: IPR institution denied for redundancy – Neither appealable nor grounds for estoppel

Parties that regularly submit inter partes review (IPR) and other post-grant petitions with multiple, potentially redundant grounds for review now have clearer guidance on (1) whether the institution of those petitions can be reviewed; and (2) whether estoppel applies to rejected grounds for review. In the recent Automated Creel Systems v. Shaw Industries decision, the

USPTO Considering New Rules for Post-Grant Proceedings

On August 20, 2015, the U.S. Patent and Trademark Office (“PTO”) published proposed amendments to the “Rules of Practice for Trials before the Patent Trial and Appeal Board” for IPR, CBM, and PGR proceedings. The proposed rule changes include: adopting the claim construction standard used in district courts and set forth in Phillips v. AWH

US: Pharma-friendly trends at USPTO and PTAB

Recent USPTO activity may signal a shift in treatment of pharmaceutical patents in AIA proceedings. The America Invents Act (“AIA”) provides for adversarial proceedings for challenging patents in the United States Patent and Trademark Office (“USPTO”) — including inter partes review (“IPR”) and post grant review (“PGR”) — which are faster, cheaper, and have a lower