Posts filtered by tags: Iancu[x]


Friday round-up

Briefly: Joan Biskupic reports at CNN that “Justice Ruth Bader Ginsburg’s cancer surgery and ongoing recuperation have cast an atmosphere of uncertainty over the Supreme Court at a critical time for its future and as the legal fate of several controversial White House policies hang in the balance.” At the Goldwater Institute’s In Defense of Liberty blog, Jacob Huebert urges the justices to hear a challenge to an Illinois campaign-finance law and to “and make clear that governments cannot use co...
Tags: Supreme Court, Law, White House, Cnn, Illinois, Ruth Bader Ginsburg, Round-up, Adam Feldman, Heritage Foundation, Kavanaugh, Brunetti, Goldwater Institute, Joan Biskupic, Iancu, RBG, Elizabeth Slattery

PTAB Must Consider All Claims AND All Grounds

by Dennis Crouch AC Techs v., Inc. (Fed. Cir. 2019) This case focuses on AIA-Trial Procedure following SAS Institute, Inc. v. Iancu, 138 S.Ct. 1348 (2018).   In SAS, the Supreme Court held that the USPTO’s institution decision is binary — “either institute review or don’t.”  If the USPTO institutes an IPR then the PTAB must issue a final written decision regarding each claim challenged in the petition.  Prior to SAS, the USPTO commonly issued partial-institution orders — instituting t...
Tags: Amazon, Supreme Court, Law, Uspto, Patent, Sas, Fed, Board, Federal Circuit, IPR, SAS Institute Inc, Dennis Crouch, PTAB, Iancu, Aquestive Therapeutics Inc, AC Techs

Wednesday round-up

The justices wrap up the first week of the January session today with one oral argument, in Franchise Tax Board of California v. Hyatt, in which the court will consider whether to overrule a precedent that allows a state to be sued in the courts of another state without its consent. Richard Re previewed the case for this blog. Clotilde Le Roy and Jarrett Field have a preview at Cornell Law School’s Legal Information Institute. In his first Supreme Court opinion, Justice Brett Kavanaugh wrote for...
Tags: Supreme Court, Law, Washington Post, Washington, Court, America, Bloomberg, Cnn, New York Times, New Orleans, Fox News, Republican, Economist, Hyatt, Trump, Round-up

Monday round-up

This morning the Supreme Court kicks off the January argument session with oral arguments in two cases. The first is Merck Sharp & Dohme v. Albrecht, which raises questions about whether a state-law failure-to-warn claim is pre-empted by federal law regulating the safety and efficacy of prescription drugs. Elizabeth McCuskey previewed the case for this blog. Garion Liberti and Tayler Woelcke have a preview for Cornell Law School’s Legal Information Institute. The second case today is Obduskey v....
Tags: Texas, Maryland, Supreme Court, Law, Washington Post, Washington, Massachusetts, Bloomberg, Gop, Wyoming, North Carolina, Ruth Bader Ginsburg, Justice Department, Cornell, Trump, Round-up

More on today’s orders

This afternoon the justices issued orders from their private conference earlier in the day. In addition to the two partisan-gerrymandering cases set for argument in the March session, the justices also granted review in four other new cases, involving issues ranging from “immoral” copyright marks to  vagueness in a federal criminal law. In Iancu v. Brunetti, the justices will take up a First Amendment challenge to a federal law that bans the registration of “immoral” or “scandalous” trademarks. ...
Tags: Featured, Supreme Court, Law, United States, Davis, Dallas, Howe, U S Court of Appeals, Glover, U S Patent and Trademark Office, U S Court of Appeals for the Federal Circuit, Brunetti, Taggart, Lorenzen, Merits Cases, Iancu

POP! – Precedential Opinion Panel takes on Late-Joinder Attempt

by Dennis Crouch In September 2018, the USPTO rewrote several Standard Operating Procedures (SOPs) for the Patent Trial and Appeal Board (PTAB). Revised SOP2 creates the Precedential Opinion Panel (POP) to be convened to rehear issues of “exceptional importance” as well as for re-designating prior opinions as precedential, when deemed appropriate.  According to SOP2, the Precedential Opinion Panel will “typically” include the PTO Director, Commissioner for Patents, and the PTAB Chief Judge. In w...
Tags: Law, Congress, Pop, Patent, Fed, PTO, Oren, Wallach, IPR, Target Corp, Destination Maternity Corp, Dennis Crouch, PTAB, Iancu, Nidec Motor Corp, Zhongshan Broad Ocean Motor Co

United States: Error 101: Director Iancu Wants to Clarify Patentable Subject Matter - Finnegan, Henderson, Farabow, Garrett & Dunner, LLP

Director Iancu indicated that the USPTO is contemplating revised guidance to help categorize the exceptions and provide additional instructions to examiners on how to apply them.
Tags: News, United States, Uspto, Iancu, Finnegan Henderson Farabow Garrett, Dunner LLP

Remarks by Director Iancu at the AIPLA Annual Meeting

In remarks today, USPTO Director Iancu has proposed the PTAB’s next step in reforming AIA Trials — giving the patent owner a six-week window following an institution decision to file a motion to amend. See below.  October 25, 2018 As prepared for delivery This is a new day for the USPTO and our Patent Trial and Appeals Board (PTAB). For we are now increasing balance, consistency and transparency, especially in post grant proceedings. And in doing so, we are increasing confidence in these importa...
Tags: Law, Congress, Uspto, Itc, AIA, Patent, Board, Phillips, PTO, Federal Circuit, Petitioner, IPR, Patent Trial and Appeals Board, PTAB, Iancu, Standard Operating Procedures for PTAB

Indian Tribes, States, and Sovereign Immunity before the PTAB

by Dennis Crouch Saint Regis Mohawk Tribe v. Mylan Pharmaceuticals Inc., App. No. 18-1638 (Fed. Cir. 2018) The Federal Circuit has denied the Mohawk Tribe’s petition for en banc rehearing on the issue of whether sovereign immunity may be asserted in inter partes review (IPR) proceedings.  Although the case focused on immunity of federally recognized Indian tribes, the Federal Circuit decision is broadly written to also include patents owned by individual states.  [Fed.Cir.St.Regis.Decision] A pa...
Tags: Minnesota, Supreme Court, Law, Allergan, Patent, Fed, FMC, Patent Office, St Regis, Federal Circuit, IPR, Dennis Crouch, Fed Cir, Mylan Pharmaceuticals Inc, Iancu, Mohawk Tribe

The Impact of 101 on Patent Prosecution

Guest Post By: Colleen Chien , Professor, Santa Clara University Law School Over the last several years, the USPTO has continued to release high-quality data about the patent system. This is the first of a series of posts by Professor Chien based on insights developed from that data. (The accompanying Patently-O Law Journal Paper includes additional views and methodological notes, and links to queries for replication of the analysis by Chien and Jiun-Ying Wu, a 3L at Santa Clara Law. ) “Everyth...
Tags: Google, Supreme Court, Law, Ipo, US, Uspto, Albert Einstein, Santa Clara, Patent, Prometheus, Alice, Cpc, Miller, Chien, Marco, Mayo

United States: CAFC Affirms PTAB's Priority Determination In Natural Alternatives v. Iancu - Finnegan, Henderson, Farabow, Garrett & Dunner, LLP

In Natural Alternatives International, Inc. v. Iancu., No. 2017-1962 (Fed. Cir. Oct. 1, 2018), the CAFC affirmed the PTAB's priority determination invalidating Natural Alternative's patent directed to a human dietary supplement that increases the anaerobic working capacity of muscle and other tissues.
Tags: News, United States, Iancu, Dunner LLP, Natural Alternatives International Inc, Iancu Finnegan Henderson Farabow Garrett, Fed Cir Oct

R.36: PTO’s Failure to Explain Affirmed without Explanation

by Dennis Crouch LG v. Iancu, stems from an obviousness determination by the PTAB in its IPR of LG’s U.S. Patent No. 7,664,971.  On appeal, LG argued that the PTAB had failed to explain its decision as required by the Administrative Procedures Act.  In a silent commentary on the current state of patent law, the Federal Circuit has affirmed the PTAB decision without issuing any opinion or explanation for judgment. The ’971 patent claims both an apparatus and method for controlling power to the co...
Tags: Law, Lg, Patent, Board, PTO, Federal Circuit, IPR, Dennis Crouch, PTAB, Iancu, Hughes Chen

Petitions of the Week

This week we highlight petitions pending before the Supreme Court that address the constitutionality of the Lanham Act’s prohibition on registering “immoral” or “scandalous” marks, standing requirements for a consumer seeking injunctive relief with regard to allegedly misleading consumer products, and the law that governs common-fund fee awards. The petitions of the week are: Chieftain Royalty Co. v. Nutley 18-301 Issue: Whether common-fund fee awards are governed in diversity cases by sta...
Tags: Supreme Court, Law, Davidson, Nutley, Brunetti, Cases in the Pipeline, Iancu, Chieftain Royalty Co, First Amendment Kimberly Clark Corp

Empirical SCOTUS: The wide arc of the Supreme Court

The Supreme Court now hears around 70 arguments a term, and each case tends to have issues unique from others on the court’s docket. After the court’s merits docket is assembled each term, however, similarities between cases become apparent and these similarities may present an area of law in which the court is more invested and wants greater resolution. Such areas can be either broad-based or narrow. Last term the court settled multiple issues surrounding the First Amendment. The court resolved...
Tags: Supreme Court, Law, Samsung, Alabama, Medicare, Robins, Madison, Young, Lexmark, Jennings, Jam, Harrison, Carpenter, Department of Health and Human Services, Ion Geophysical Corp, U S Fish and Wildlife Service

United States: USPTO Director Iancu Reveals Proposed New Patent Eligibility Guidelines - Foley & Lardner

The proposed new guidance would preserve Step 2B, as recently clarified in the Berkheimer memo.
Tags: News, United States, Uspto, Foley, Lardner, Iancu

Director Iancu Produces Glimmer of Patent Eligibility Hope

By Kevin E. Noonan -- U.S. Patent and Trademark Office Director Andrew Iancu gave the introductory keynote address at the 46th Annual Meeting of the Intellectual Property Owners (IPO) Association on Monday, and his talk provided the prospect of a Patent Office administration dedicated, as former Solicitor Nancy Linck advocated several years ago at a Biotechnology Innovation Organization annual meeting, to adopt policies aimed at helping the courts (including the Supreme Court) come to the correc...
Tags: Supreme Court, Law, Office, Patent Office, Trademark Office, U S Patent and Trademark Office, Patent Office Rules & Procedures, Patent Docs, Patentable Subject Matter, Kevin E Noonan, Biotechnology Innovation Organization, Iancu, Andrew Iancu, Intellectual Property Owners IPO Association, Nancy Linck

United States: Attorneys' Fees Not Awardable Expenses In Section 145 Actions - Marshall, Gerstein & Borun LLP

In NantKwest, Inc. v. Iancu, No. 2016-1794 (Fed. Cir. Jul. 27, 2018) (en banc), the Federal Circuit decided en banc that attorneys' fees are not "expenses" required to be paid by an applicant who appeals
Tags: News, United States, Federal Circuit, Fed Cir, Iancu, NantKwest Inc, Marshall Gerstein, Borun LLP

Director Iancu: If it was Good Enough for Judge Rich

The following excerpt comes from Dir. Iancu’s recent speech in Chicago where he discussed his proposal for expanding Section 101 patent eligibility. – DC  Remarks delivered at the Intellectual Property Owners Association 46th Annual Meeting by Director of the U.S. Patent and Trademark Office Andrei Iancu, September 24, 2018 (Chicago, Illinois) As delivered Good morning everyone, and thank you, Henry [Hadad] for that generous introduction. And thank you for inviting me. . . . . . . A significan...
Tags: Supreme Court, Law, China, Diamond, Chicago, United States, Uspto, Patent, Newton, Rich, Alice, Benson, Thomas, Newman, PTO, Chicago Illinois

Iowa Law Review Symposium guest post by Prof. Vishnubhakat: Managing the PTAB’s Legacy of Partial Institution

Guest post by Saurabh Vishnubhakat, Associate Professor at the Texas A&M University School of Law and the Texas A&M College of Engineering.  Although Prof. Vishnubhakat was an advisor at the USPTO until June, 2015, his arguments here should not be imputed to the USPTO or to any other organization.  This post is based on a paper for the Iowa Law Review symposium Administering Patent Law and is forthcoming in the Iowa Law Review.  The full draft is available at at
Tags: Texas, Supreme Court, Law, Office, Iowa, Uspto, Patent, Sas, Patent Office, Reyna, Federal Circuit, Patent Trial and Appeal Board, SAS Institute, Cuozzo, PTAB, Iancu

Supreme Court 2018 — Pending Cases for September Conference

by Dennis Crouch The Supreme Court now starting its Fall 2018 term with its first Conference set for September 24, 2018.  At that initial Conference, the Court is set to consider certiorari in for a rich set of pending patent cases.  The following is a rundown of some of the more interesting: Smartflash LLC v. Samsung Electronics America, Inc. et al., No. 18-189 (Three good questions): Whether Administrative Patent Judges of the [PTAB] are principal Officers of the United States who must be...
Tags: Supreme Court, Law, Seagate, Senate, United States, Patent, Samsung Electronics Co Ltd, E Aerospace Inc, Trademark Office, Federal Circuit, Boston Scientific Corporation, Samsung Electronics America Inc, Regeneron Pharmaceuticals Inc, Dennis Crouch, Smartflash LLC, Sandoz Inc

United States: USPTO Files Petition For Writ Of Certiorari In Brunetti "FUCT" Case - Wolf, Greenfield & Sacks, P.C.

On September 7, 2018, the USPTO filed at the Supreme Court a Petition for a Writ of Certiorari (pdf here) in Iancu v. Brunetti, seeking the Court's review of the judgment of the U.S.
Tags: News, Supreme Court, Court, United States, Uspto, Brunetti, Iancu, Wolf Greenfield

A Mixture of Known Compounds is Unpatentable without a Transformation

Bhagat v. Iancu is a newly filed petition for writ of certiorari now pending before the United States Supreme Court. (Case No. 18-277).   Bhagat is the founder and CEO of Asha Nutrition and is seeking to patent a lipid-formulation – that contains a mixture of omega-6 and omega-3 faty acids at a ratio of 4:1 or greater. The USPTO refused to issue the patent finding the claims barred both by on eligibility (101) and anticipation (102) grounds.  On appeal, the Federal Circuit affirmed.   The 101 de...
Tags: Supreme Court, Law, Uspto, Patent, United States Supreme Court, Myriad Genetics Inc, Federal Circuit, Iancu, Molecular Pathology, Bhagat, Asha Nutrition, Funk Bros Seed Co, Kalo Inoculant Co, Funk Brothers Seed Co

Guest Post: Patent Office Shows New Respect for Software

Guest Post from Richard P. Beem.  Beem’s firm handled the Intelligent Medical Objects case discussed below. – DC Software patents and applications are making a quiet comeback under Director Andrei Iancu’s leadership of the U.S. Patent and Trademark Office. This is a welcome shift, since thousands of applications have been held captive in the Office in the wake of Supreme Court decisions culminating in Alice v. CLS Bank, 134 S.Ct. 2347 (2014). In the hands of reductionists, the Alice formula for...
Tags: Supreme Court, Law, Office, Patent, Alice, Iowa State, Richard Beem, Patent Office, U S Patent and Trademark Office, Federal Circuit, Patent Trial and Appeal Board, Imo, IPR, Fed Cir, PTAB, Iancu

United States: CAFC Holds USPTO Cannot Recover Attorneys' Fees Under 35 USC 145 In Nantkwest V. Iancu - Finnegan, Henderson, Farabow, Garrett & Dunner, LLP

In Nantkwest, Inc. v. Iancu, No. 2016-1794 (Fed. Cir. July 27, 2018), the CAFC, sitting en banc (excl. Chen, C.J.)
Tags: News, United States, Usc, NantKwest, Fed Cir, Iancu, NantKwest Inc, Dunner LLP, Iancu Finnegan Henderson Farabow Garrett

United States: Expenses Under 35 U.S.C. § 145 Does Not Include Attorneys' Fees - Finnegan, Henderson, Farabow, Garrett & Dunner, LLP

In Nantkwest, Inc. v. Iancu, No. 2016-1794 (Fed. Cir. July 27, 2018), the Federal Circuit, sitting en banc (excl. Chen, C.J.), affirmed the district court's decision
Tags: News, United States, Chen, Federal Circuit, Fed Cir, Iancu, NantKwest Inc, Finnegan Henderson Farabow Garrett, Dunner LLP

USPTO Issues Updated PTAB Practice Guide for Post-grant Review Proceedings

By Kevin E. Noonan -- On August 8th, the U.S. Patent and Trademark Office issued revisions to its Patent Trial and Appeal Board (PTAB) Guide (see "Trial Practice Guide Update"), first promulgated in 2012 as part of the Office's implementation of inter partes review (IPR), post-grant review (PGR), and covered business methods review (CBM) proceedings established under the Leahy-Smith America Invents Act (AIA). As discussed in an accompanying memorandum from USPTO Director Iancu, this update is pa...
Tags: Law, Office, Uspto, U S Patent and Trademark Office, Patent Trial and Appeal Board, IPR, CBM, Patent Office Rules & Procedures, Patent Docs, Kevin E Noonan, PGR, Iancu, Leahy Smith America Invents Act AIA

United States: Fear No Fees: No Payment Of PTO Attorneys' Fees For District Court Patent Review - Jones Day

On July 27, 2018, the U.S. Court of Appeals for the Federal Circuit issued its en banc opinion in NantKwest, Inc. v. Iancu, No. 16-1794 (Fed. Cir. July 27, 2018),
Tags: News, United States, Fed, PTO, U S Court of Appeals for the Federal Circuit, Iancu, NantKwest Inc

Proposed USPTO Fee Increases and New Annual Patent Practitioner Fee

By Joseph Herndon -- On August 8, 2018, Director Iancu issued a letter to the Patent Public Advisory Committee notifying of proposed fee increases at the U.S. Patent and Trademark Office, and institution of new annual fee for active patent practitioners. The Director stated that the fee increases are needed to ensure commitment to fiscal responsibility, financial prudence, and operational efficiency. This is a patent fee proposal open for comment at this stage, and the Director stated that it is...
Tags: Law, U S Patent and Trademark Office, Patent Office Rules & Procedures, Patent Docs, Joseph Herndon, Iancu, Patent Public Advisory Committee

United States: Federal Circuit: "All The Expenses" Does Not Mean "Attorneys' Fees" - Jones Day

Last Friday, the Federal Circuit issued its en banc opinion in NantKwest, Inc. v. Iancu, No. 16-1794 (Fed. Cir. July 27, 2018). The Court held, by a 7-4 vote (Judge Chen, the former PTO Solicitor, was recused)
Tags: News, United States, Chen, PTO, Federal Circuit, Fed Cir, Iancu, NantKwest Inc

United States: Should Patent And Trademark Applicants Be Required To Pay USPTO Attorneys' Fees? - Foley Hoag LLP

The Federal Circuit just issued its en banc decision in Nantkwest v. Iancu, concluding that the proper statutory construction of Section 145 of the patent statute
Tags: News, United States, Federal Circuit, NantKwest, Iancu, Foley Hoag LLP