Updated Guidance on Section 101 Subject Matter Eligibility

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John P. Isacson

On October 17, 2019, the U.S. Patent and Trademark Office issued a 22-page updated guidance document on subject matter eligibility under 35 USC §101.  Subject matter eligibility is becoming increasingly important in the computer and life sciences areas.

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IPR Institution Is Not Permanent, and Is Nonappealable

Biodelivery Sciences Int’l, Inc. v. Aquestive Therapeutics, Appeal Nos. 2019-1643, -1644, -1645 (Fed. Cir. August 29, 2019)

Photo of John P. Isacson
John Isacson

On motion, the Federal Circuit dismissed the second appeals in three IPRs pertaining to oral films used for the delivery of active components.  The PTAB initially instituted the three IPRs, but not on all the grounds contained in the petitions.  In total, there were seventeen grounds in the petitions, and the PTAB instituted on only three.

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A Party Who Lacks Standing Can Still Trigger the Section 315(b) Time Bar

GoPro, Inc. v. 360Heros, Inc., IPR2018-01754 (Precedential Opinion Panel, August 23, 2019)

By John Isacson

Section 315(b) of Title 35 prohibits institution of an IPR where the petition is filed more than one year after service of a complaint alleging patent infringement.

In GoPro v. 360Heros, the Precedential Opinion Panel (POP) considered a situation where GoPro petitioned for an IPR more than one year after 360Heros filed a counterclaim alleging patent infringement.  Before the district court, GoPro successfully challenged 360Heros’ standing to sue on the basis that 360Heros had not been formally assigned title to the asserted patent by the inventor at the time of filing its counterclaim.  Subsequently, 360Heros did receive an assignment.

GoPro filed its petition more than one year after 360Heros’ counterclaim was served.  360Heros sought to have the IPR barred for failure to comply with 35 USC 315(b), which states: Continue reading “A Party Who Lacks Standing Can Still Trigger the Section 315(b) Time Bar”