• January 10, 2018
      Wi-Fi One, LLC v. Broadcom Corp. (Fed. Cir. 2018) By David Emery In an en banc decision, the Federal Circuit reigned in the scope of 35 U.S.C. § 314(d) by deciding that time-bar determinations under  § 315(b) are appealable.  While § 314(d) states that a determination whether to institute is nonappealable, the Court limited this prohibition...
    • November 30, 2017
      On November 27, 2017, the Supreme Court Justices posed many interesting questions to attorneys representing the parties involved in two underlying Inter Partes Reviews (IPRs) and the federal respondents in these two cases, which will impact the future of IPRs significantly.  Of the two cases, Oil States Energy Services v. Greene’s Energy Group (16-612) has...
    • October 25, 2017
      General Plastic Industrial Co., Ltd. v. Canon Kabushiki Kaisha. (IPR2016-01357 through IPR2016-01361; “Decision”) In an expanded panel where General Plastics sought reversal of multiple decisions that denied instituting follow-on petitions, the PTAB confirmed these decisions were proper based on the factors established in NVIDIA.  This decision has been added to the PTAB’s list of precedential...
    • October 10, 2017
      In Aqua Products, Inc., v. Matal, 2015-1177, Oct. 4, 2017, the en banc Federal Circuit cut against the grain of current PTAB proceeding and held that the petitioner in an inter partes review proceeding has the burden to prove unpatentability for amended claims. The patent owner in a patent office trial may file one motion...
    Patent Office Trials Blog
    • 1/17/2018
      Sughrue Mion, PLLC is pleased to announce that our firm has been ranked among the top 2 patent firms in the annual rankings done by Ocean Tomo and IAM (International Asset Management) Magazine. This ranking was based on the quality of the patents obtained by Sughrue among other high volume patent firms. Rather than focusing only on USPTO statistics as a measure of quality, this year's IAM ranking considered how well patents would withstand being challenged in a more adversarial setting, such as U.S. district court litigation and post-grant proceedings such as inter partes review.
    • 1/15/2018
      Sughrue partner, Jennifer Hayes, will be part of a webinar on Friday, January 26th from 12 pm - 1:30 pm EST.  The webinar will cover the topic of "Patent Protection for Pharma and Biotechnology in 2018". 
    • 12/13/2017
      On December 12, 2017, the Federal Circuit ruled in favor of Sughrue’s client Accord Healthcare, affirming the PTAB’s inter partes judgment that two Orange Book listed patents for an anti-clotting drug prasugrel (Effient®) were invalid. Accord was sued in the Southern District of Illinois by Eli Lilly and Daiichi-Sankyo for patent infringement based on their filing of an ANDA seeking approval for prasugrel. Sughrue attorneys Michael Dzwonczyk, Chid Iyer and Azy Kokabi, along with several codefendants, successfully obtained a stay of the litigation based upon the PTAB’s institution of two inter partes review petitions, without extending the automatic 30-month stay of FDA approval for ANDAs covering the generic versions. At the U.S. Patent Office, Accord and petitioners successfully argued that every claim of the two patents claiming a combination of prasugrel and aspirin were unpatentable based on prior art that showed it would have been obvious to coadminister the two compounds. Less than one week after the oral argument before the Federal Circuit, the Court summarily affirmed the Board’s decision that the patents were invalid as obvious.
    • 11/30/2017
      On November 27, 2017, the Supreme Court Justices posed many interesting questions to attorneys representing the parties involved in two underlying Inter Partes Reviews (IPRs) and the federal respondents in these two cases, which will impact the future of IPRs significantly.  Of the two cases, Oil States Energy Services v. Greene's Energy Group (16-612) has received the most commentary by far.  This is not surprising since Oil States will answer the question of whether IPRs violate the Seventh Amendment right to jury by allowing the Patent Trial and Appeal Board (PTAB), a non-Article III tribunal, to extinguish patent claims.  In other words, must questions of unpatentability be reserved for an Article III court? The second case, SAS Institute v. Matal (16-969) focuses on a narrower issue of whether the PTAB must issue final written decisions for every claim challenged by Petitioner, or whether the PTAB may properly issue final written decisions only for claims instituted for an IPR proceeding, a question of the proper interpretation of IPR statute 35 U.S.C. 318(a).
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