Tag Archives: patent

New Estoppel Concern For Petitioners Raised In BTG v. Amneal

The Court of Appeals for the Federal Circuit is poised to decide a case which may create new estoppel concerns for AIA petitioners under 35 USC § 315(e)(2).   The appeal resulted from a Hatch-Waxman litigation in BTG v. Amneal, in which the lower court found that the patent claims at issue were invalid over the same … Continue reading this entry

Federal Circuit Affirms PTAB Ruling That Tribal Immunity Does Not Apply To IPRs

On July 20, 2018, the Federal Circuit held in St. Regis Mohawk Tribe v. Mylan Pharmaceuticals that tribal sovereign immunity does not prevent IPR on a patent assigned to a tribe asserting such immunity.  The court expressly declined to make any decision about state sovereign immunity in this case.  The PTAB has found that state … Continue reading this entry

Proposed Legislation Would Require Choice Between ANDA Litigation Or AIA Challenges

On June 13, 2018, Sen. Hatch (R-Utah) introduced an amendment that would require generic ANDA filers to choose between litigating validity in Hatch-Waxman district court litigation or an AIA challenge (IPR or PGR), and on June 14th, the Senate Judiciary Committee voted 16-5 to bring it to the Senate floor for a vote.  Presently, generic ANDA … Continue reading this entry

Supreme Court Upholds Constitutionality Of IPRs In Oil States

Today in Oil States v. Greene’s Energy, the Supreme Court upheld the constitutionality of IPR proceedings, finding that they are a permissible second review of patents conducted by the administrative agency that issues them and not a violation of the right of a property owner to have adjudication of property rights by an Article III … Continue reading this entry

Attacking Patents on Written Description & Enablement Grounds in Inter Partes Review

Although Inter Partes Review (IPR) is limited to grounds of unpatentability based upon prior art references, it is nevertheless possible to raise issues of written description or enablement by applying intervening prior art that is published between two priority dates for a claimed invention. Such intervening prior art may even be applied between two filing dates created … Continue reading this entry