IPRs and Sovereign Immunity

IPRs and Tribal Sovereign Immunity On July 20, 2018, the Federal Circuit held in Saint Regis Mohawk Tribe v. Mylan Pharmaceuticals, Inc. that Native American tribes cannot assert tribal immunity to avoid inter partes review (IPR) proceedings. IPR proceedings, enacted under the America Invents Act and conducted by the Patent Trial and Appeal Board (PTAB), allow parties to challenge patent claims’ novelty or nonobviousness over certain forms of prior art. Pharmaceutical company Allergan sued competitor Mylan Continue Reading →

Return Mail v. USPS: Can the Government Petition for Post-Issuance Reviews?

A few weeks ago, on February 19th, 2019, the Supreme Court heard oral arguments in Return Mail, Inc. v. United States Postal Service. 868 F.3d 1350 (Fed. Cir. 2017), cert. granted in part sub nom., 139 S. Ct. 397 (Oct. 26, 2018) (No. 17-1594). The question before the Court: whether the government qualifies as a “person” capable of petitioning for the institution of post-issuance patent reviews under the AIA. See 35 U.S.C.  §§ 311-19 (IPR); Continue Reading →

USPTO Attorney Fees Go Up to The Supreme Court

On March 5th, 2019, the Supreme Court granted writ of certiorari in Iancu v. NantKwest Inc. The question for the Court is whether the phrase “[a]ll the expenses of the proceedings” in 35 U.S.C. §145 includes the salaries of personnel (e.g., attorneys and paralegals) employed by the U.S. Patent and Trademark Office (“PTO”) to defend against the suit. Options for Judicial Review of the Patent Trial and Appeal Board There are two ways for patent Continue Reading →

OSS and FRAND: Complementary Models for Innovation and Development

Editor’s Note: This post was written by guest contributor Van Lindberg. Mr. Lindberg is a member at Dykema Gossett and General Counsel of the Python Software Foundation. Previously, he served as Vice President of Intellectual Property and Associate General Counsel at Rackspace, a managed cloud hosting provider. A PDF of the following article can be found here and will be published in a forthcoming edition of the Columbia Science and Technology Law Review. I.     Introduction Continue Reading →

Can A SEP Holder Refuse to License Its SEP to A Willing License-Seeker?

Standard-essential patents (“SEPs”) are patents that embody industry-adopted technical standards. While standardization presents many benefits, including interoperability of standardized products and lower manufacturing costs, to the consumers and the industries, it may also lead to the “hold-up” problem where a SEP holder demands a high royalty rate from an implementer using the standard-development leverage. To mitigate the hold-up problem, standard-setting organizations (“SSOs”) often require the participants to agree to license their SEPs to implementers on Continue Reading →

USPTO’s Patent Trial and Appeal Board Moves to Phillips Standard

Background On October 11, 2018 the United States Patent and Trademark Office (USPTO) adopted a final rule that changed the standard of claim construction in the Patent Trial and Appeal Board (PTAB) to the standard used in district court as articulated in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). The PTAB is the adjudicatory body of the USPTO that hears appeals regarding rejected patents and conducts trials regarding validity of Continue Reading →

The Truth About OSS-FRAND: By All Indications, Compatible Models in Standards Settings

Editor’s Note: This post was written by guest contributors David J. Kappos and Miling Y. Harrington. Mr. Kappos is a partner at Cravath, Swaine & Moore LLP. Previously, he served as the Under Secretary of Commerce and Director of the United States Patent and Trademark Office from August 2009 – January 2013. Ms. Harrington is an associate at Cravath, Swaine & Moore LLP. A PDF of the following article can be found here and will be published in a forthcoming edition Continue Reading →

Has a Federal Circuit Decision Ended the CRIPSR/Cas Patent Battle?

On September 10, 2018, the U.S. Court of Appeals for the Federal Circuit’s decision in Regents of the University of California v. Broad Institute, Inc. may have ended perhaps the most heated biotech patent battle today: who owns the fundamental patents for the powerful CRISPR/Cas gene-editing tool. Unless University of California, Berkeley (UCB) successfully appeals the decision to the U.S. Supreme Court, the Broad Institute will keep its patents on CRISPR/Cas technology.   History of Continue Reading →

Is the New IPR Investment Strategy Bust?

An October 2016 report estimates the number of hedge funds at a staggering 11,000, managing an aggregate of $3 trillion or more. Each firm seeks ways to make a profit for investors and managers through a variety of ways – including conventional methods like identifying certain market-influencing events, mispriced stocks, and betting that share prices will either rise or fall. Dallas-based Hayman Capital is one such firm, led by billionaire investor J. Kyle Bass. According Continue Reading →

I Am My Own Man: The Ownership of Genetic Material

Our knowledge of DNA continues to expand and, by extension, so does our ability to manipulate it. Recently, researchers have created a viable organism with a chromosome incorporating pairs of synthetic bases. [1] Others have engineered an organism containing only the genes necessary for life. [2] In addition to advancing our understanding of the life sciences, which may indirectly enhance human welfare, working with genes also has direct applications to human health: for example, genetic Continue Reading →