Search Results for: oil states

Oil States Energy Services, LLC v. Greene’s Energy Group, LLC, et al.: The Magic Happens Around the Word “Franchise”

In Oil States Energy Services, LLC v. Greene’s Energy Group, LLC, et al  the Supreme Court found that inter partes review is constitutional under Article III and the Seventh Amendment of the Constitution in a 7-2 opinion delivered by Justice Thomas. The Court determined that inter partes review falls “squarely” within the public rights doctrine.  … Continue Reading

New Treatments for COVID-19: Recent International Activity Relating to IP and Some Tools the US Already Has in Place

As potential COVID-19 treatments enter human trials, the question of pricing, access, and intellectual property has naturally entered the discussion. With numerous private entities working on a cure, the industry, governments, payers, healthcare groups, and other stakeholders are quickly pushing their respective (and, in most cases, expected) positions relating to the balance between IP rights … Continue Reading

The Federal Circuit Shuts the Door on Use of Tribal Immunity in IPRs

The Federal Circuit has rejected Allergan’s ploy to shield its Restasis patents from the scrutiny of inter partes review by assigning them to the St. Regis Mohawk Tribe, finding that tribal immunity does not apply in such proceedings.  The case is Saint Regis Mohawk Tribe, Allergan, Inc., v. Mylan Pharmaceuticals Inc., et al., Case No. 18-1638, … Continue Reading

The USPTO Proposes to Interpret Claims in Post-Grant Proceedings in the Same Way as the Federal Courts, and to Consider Prior Claim Constructions by Courts

With IPRs here to stay, the USPTO is proposing to drop its BRI standard and interpret claims under the same standards as used by federal courts.  Specifically, the USPTO has proposed to change the standard for interpreting claims in inter partes review, post grant review, and covered business method patent proceedings conducted by the PTAB … Continue Reading

The Federal Circuit Will Decide Whether Sovereign Immunity Can be Used to Escape Patent Invalidation by the PTAB – If the Supreme Court Finds Inter Partes Review Constitutional

When Allergan assigned its Restasis patents to the Saint Regis Mohawk Tribe last September, so that sovereign immunity could be used to help prevent their invalidation by the Patent Trial and Appeals Board (PTAB), politicians and the public cried foul. This past month, after the PTAB decided that sovereign immunity did not apply and scheduled … Continue Reading

Are Inter Partes Reviews “Quintessential” Agency Adjudications?

A superlative or excessive statement is often a dead give-away that the statement may not be true.  In deciding whether the America Invents Act’s inter partes review provisions violate Article III of the Constitution of the United States, the Federal Circuit in MCM Portfolio LLC v. Hewlett-Packard Company, 815 F.3d 1284, 1291 (Fed. Cir. 2015) … Continue Reading

Twelve Cannabis Plant Patents and Counting

The year 2020 saw increasing acceptance of cannabis in the US, as indicated by legalization in another five states, proposed federal legalization, and the designation of cannabis (where available) as essential during the coronavirus pandemic. The United Nation’s recent reclassification of cannabis signals similar changes on a global scale. As a result of these changes, … Continue Reading

USPTO Closes Year with Second Patent Subject Matter Eligibility Roundtable and Updated Guidance

As a follow-up from November’s roundtable discussion, the United States Patent and Trademark Office (“USPTO”) held its second roundtable discussion on the current state of subject matter eligibility under 35 U.S.C. §101.  This meeting focused on the legal boundaries of subject matter eligibility, versus earlier considerations of technicalities and challenges in applying the recent developments … Continue Reading

USPTO’s Public Roundtables on Patent Subject Matter Eligibility Off to Promising Start

Following the recent Federal Circuit decisions in BASCOM and McRO, the United States Patent and Trademark Office (“USPTO”) responded by providing all stakeholders with a helpful memorandum discussing these cases and how they affect patent subject matter eligibility. In addition, the USPTO continues its outreach efforts to identify where gaps exist in its guidance, and … Continue Reading

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