Category Archives: Post Grant Review

Mohawks To The Rescue? Can You Immunize Patents From PTAB Review By Assigning To A Native American Tribe?

By Tom Engellenner In an unusual move to combat the perceived bias in favor of patent challengers at the U.S. Patent Office’s Patent Trial and Appeal Board (PTAB), the Irish drug company Allergan has decided to warehouse its key patents … Continue reading

Posted in America Invents Act, Covered Business Methods, Inter Partes Review, Post Grant Review, Sovereign Immunity, Trial Tactics, USPTO | Tagged , , , , , , , , ,

Federal Circuit Criticizes PTAB for Failing to Properly Weigh Objective Evidence of Non-Obviousness

By Tom Engellenner The Federal Circuit Court of Appeals again vacated a Patent Trial and Appeal Board (PTAB) panel decision for failing to properly evaluate “objective evidence of non-obviousness” and remanded the case for determinations consistent with its opinion. Specifically, … Continue reading

Posted in America Invents Act, Anticipation/Obvious, Court of Appeals Fed Circuit, Final PTAB Decision, Inter Partes Review, Post Grant Review, PTAB Procedure, Reexamination, USPTO | Tagged , , , , ,

AIA On-Sale Bar Applies to Publicized Sales, Even When Knowledge of Sale Did Not Disclose the Underlying Invention

By Reza Mollaaghababa The Court of Appeals for the Federal Circuit (CAFC) recently construed the on-sale bar provision of 35 U.S.C. 102(a) in a way that will make it easier for petitioners to challenge third party patents. While in an … Continue reading

Posted in America Invents Act, Court of Appeals Fed Circuit, District Court, Federal Circuit, On-Sale BAR, Post Grant Review, Trial Tactics | Tagged , , , , , ,

IPR Estoppel Provisions May Not Be That Scary After All

By Yue (Joy) Wang IPR petitioners wary of the statutory estoppel under 35 U.S.C. § 315(e)(2) may have reason to be cautiously optimistic.   Judge Sue Robinson of the Federal District Court of Delaware recently held that Toshiba is not estopped … Continue reading

Posted in America Invents Act, Anticipation/Obvious, Appeals, Court of Appeals Fed Circuit, District Court, Estoppel, Federal Circuit, Final PTAB Decision, Instittion Decision, Post Grant Review, Section 315(e) bar | Tagged , , , , , , , , , , , ,

State Universities Rejoice: PTAB Recognizes Sovereign Immunity Defense

By Sean Gloth In Covidien LP v. University of Florida Research Foundation Inc., the Patent Trial and Appeal Board (the “Board”) upheld a defense of sovereign immunity asserted by the University of Florida Research Foundation (the “Foundation”) and dismissed three … Continue reading

Posted in America Invents Act, Final PTAB Decision, Inter Partes Review, Post Grant Review, PTAB Procedure, Sovereign Immunity, Trial Tactics, USPTO | Tagged , , , , , , ,