CAFC Rules Petitioner has Burden of Proof to Demonstrate Unpatentability of Patent Owner’s Amended Claims in an Inter Partes Review

On October 4, 2017, the U.S. Court of Appeals for the Federal Circuit (CAFC) sitting en banc, ruled that the petitioner has the burden of persuasion with respect to demonstrating unpatentability of amended claims proposed by the patent owner in an inter partes review (IPR). Aqua Products v. Matal, 872 F.2d 1290, 124 USPQ2d 1257 (Fed. Cir. 2017). In an earlier panel decision, the CAFC had affirmed the final decision of the Patent Trial and Appeal Board (PTAB), allocating the burden of proof on the patentee.…

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Update on Regeneron Pharmaceuticals Inc. v. Merus N.V.

On Tuesday, September 12, 2017, as expected, Regeneron Pharmaceuticals Inc. petitioned  the Court of Appeals for the Federal Circuit (CAFC) for a rehearing en banc of its panel decision rendered in Regeneron Pharmaceuticals Inc. v. Merus N.V., 864 F3d 1343, 123 USPQ2d 1469 (Fed. Cir. 2017). On September 26, 2017, Washington Legal Foundation (WLF) filed an amicus brief with the CAFC requesting the court grant Regeneron’s petition for rehearing en banc. WLF’s brief asserts that the panel decision conflicts with the court’s earlier precedent in Therasense, Inc. v.…

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CAFC Affirms Patent-in-Suit Unenforceable by Drawing an Adverse Inference of Intent to Deceive the USPTO During its Procurement

On July 27, 2017, in a panel decision, the Court of Appeals for the Federal Circuit (CAFC) affirmed the district court’s ruling below (Southern District of New York) that Regeneron’s US Patent No. 8,502,018 is unenforceable due to inequitable conduct during the patent’s procurement. According to the majority panel, the district court did not abuse its discretion in sanctioning Regeneron for litigation misconduct by applying an adverse inference of specific intent to deceive the USPTO during prosecution. Regeneron Pharmaceuticals Inc. v. Merus N.V., 864 F.3d…

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U.S. Supreme Court Rules Anti-disparagement Clause of Lanham Act Violates Free Speech Clause of the First Amendment

On June 19 , 2017, the U.S. Supreme Court in Matal v. Tam, 137 S. Ct. 1744, ruled the anti-disparagement clause under section 2(a) of the Lanham Act violates the Free Speech Clause of the First Amendment and is therefore invalid, affirming the decision of the Court of Appeals for the Federal Circuit. Prior to this decision, the anti-disparagement clause permitted refusal of registrations of trademarks that might disparage or bring into contempt or disrepute any persons, living or dead, institutions, beliefs, or national symbols. In 2011, Simon Tam, the leader of…

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