Allergan’s Battle to Stay in Court: Does Inter Partes Review Violate the Constitution by Circumventing Courtroom Adjudication?
Ashley E. Petrarca Since its institution in 2011, inter partes review has caused considerable disruption in the intellectual property world, with some industry players questioning the process’ constitutionality. One of these players is Dublin-based pharmaceutical company Allergan, Inc., which asserts that it is unfair to force patent owners to defend their USPTO-granted patent rights before the Patent Trial and Appeal Board (“PTAB”), a non-Article III sanctioned forum. Central to this debate is the question of whether patents confer private or public rights. This article discusses both sides of the dialogue over inter partes review constitutionality, and postulates that the process...
Deference Runs Deep
Brooks Kenyon Under 35 U.S.C ยง101, a patent must be either a new and useful process, machine, manufacture, or composition of matter and, thus, must not lay claim to any idea that is abstract. This abstraction can be increasingly difficult to eliminate when drafting software claims because the implementation of code onto a generic computer is somewhat abstract in nature. Areas of software that are, and are not, abstract have been hotly debated and a thorn in the side of court system. Hence, when Justice Thomas opined that the Supreme Court “need not labor to delimit the precise contours of...
Intersection of American Law and Technology: The Innovation Act’s Fight Against Patent Trolls
Mohamed Elfarra The economic and social burdens of frivolous litigation have led “academics, policymakers, and even judges to suggest that patent law[s] may have overleaped its proper bounds, or at least become too likely to frustrate, rather than to fulfill, its constitutional purpose of ‘promot[ing] the progress of science and useful arts’. The primary causes of this problem are the overly litigious entities pejoratively known as patent trolls, who are collectively responsible for the majority of today’s patent infringement cases. Although solutions to this complex problem are evasive, the need for reform is readily apparent. One of the most important...
A Review of the Modern IPR Process
Michael Thomas Once a patent is issued for a drug there is still a chance that the validity of the patent may be challenged. One such way a purported infringer or competitor can challenge a patent’s validity is through an inter partes review (IPR) Process allowed by the United States Patent and Trademark Office (USPTO). Until recently the use of this process by generic drug-makers to invalidate patents has had no success. However, a recent decision by the Patent Trial and Appeal Board (PTAB) gave generic drug-makers their first break when they invalidated the patent for the multiple sclerosis drug...
Do Business Method Patents Encourage Innovation?
Rajnish Kumar Rai; Srinath Jagannathan Although the United States Patent and Trademark Office (“PTO”) had issued business method patents (“BMPs”) prior to 1999, the decisions of the United States Court of Appeals for the Federal Circuit (“Federal Circuit”) in State Street Bank & Trust Co. v. Signature Financial Group, Inc. in 1998 and AT&T Corp. v. Excel Communications, Inc. in 1999 led to a significant increase in the number of BMP applications filed with and granted by the PTO. Although grants of such patents have considerably stabilized in recent years, many policy issues raised by financial, electronic commerce and software...
Patent Litigation: What About Qualification Standards for Court Appointed Experts?
Dolly Wu “The descriptions in patents are not addressed to the public generally, to lawyers or to judges, but, as [35 U.S.C.] section 112 states, to those skilled in the art to which the invention pertains.” This leads to a tenet of patent law, that the meaning of patents and claim terms must be construed by a person of ordinary skill in the relevant art (“POSA”). However, federal district court docket statistics show that for tasks such as claim construction, the “experts” hired by courts to aid the courts themselves may, in fact, not meet the POSA standard In contrast,...
Utility Models and Their Comparison with Patents and Implications for the US Intellectual Property Law System
Hans-Peter Brack European Patent Office (EPO) practice, guided by the European Patent Convention (EPC) is in many aspects very similar to Europe’s national patent practice, such as the German patent law. In this article, the US practitioner is briefly reminded of some of the considerable differences between US Patent and Trademark Office (USPTO) patent prosecution practice and its European counterparts, primarily the EPO. The utility model is highlighted and discussed using the patent laws of Germany as a case study for comparison. Additionally, this paper examines the potential benefits of utility model protection in the US, as well as what...
Shopping for Expedient, Inexpensive & Predictable Patent Litigation
Kevin A. Meehan Intellectual property has experienced an explosion in recent decades as the value of American corporations has become increasingly reliant on intangible assets. This explosion is reflected in the massive increase in patents issued by the United States Patent and Trademark Office (“USPTO”) and the corresponding spike in patent litigation. Moreover, patent litigation has become a high stakes game that is time consuming and unpredictable. Faced with a system of patent litigation that most people agree is too expensive, too time-consuming, and too unpredictable, plaintiffs frequently attempt to capitalize on their virtually unencumbered choice of venue to shop...