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Articles by Michael Joffre
Key Takeaways: Federal Circuit Mid-Year Review
Recent Federal Circuit decisions are reshaping the practical rules that govern patent appeals, PTAB proceedings, district court litigation, and IP portfolio strategy. In Sterne Kessler’s Federal Circuit Mid-Year Review, Directors Michael Joffre, William Milliken, and Melissa Haapala discussed developments in areas such as patent eligibility, estoppel, trade secret limitations, and design patent infringement, with a focus on what the court’s evolving approach means for business and legal leaders.
2024 Federal Circuit IP Appeals – Amarin Pharma, Inc. v. Hikma Pharm. USA Inc., 104 F.4th 1370 (Fed. Cir. 2024) (Moore, Lourie, Albright) | JD Supra
Amarin sells the drug icosapent ethyl under the brand name Vascepa. Vascepa is approved by the FDA for two indications: (i) to treat severe hypertriglyceridemia, a condition characterized by blood triglyceride levels greater than 500 mg/dL (the SH indication) and (ii) to reduce cardiovascular risk in patients with blood triglyceride levels greater than 150 mg/dL (the CV indication).
SNIPR Technologies Ltd. v. Rockefeller University, 72 F.4th 1372 (Fed. Cir. 2023) (Chen, Wallach, Hughes) | JD Supra
As part of the America Invents Act (“AIA”), Congress moved the patent system from a first-to-invent to a first-inventor-to-file system. For patents governed by the new first-to-file system, the Act also eliminated interferences, which are administrative priority contests before the PTAB. In this case, the PTAB declared an interference between five first-to-file (i.e., post-AIA) patents owned by SNIPR and a first-to-invent (i.e., pre-AIA) patent application owned by Rockefeller.
Introduction (Federal Circuit IP Appeals: Summaries of Key 2023 Decisions) | JD Supra
2023 saw a return to business as usual for the Federal Circuit. Oral arguments are once again in-person and open to the public, and the Court has resumed its former practice of holding occasional sittings outside of Washington, D.C. Turning to the statistics, the number of appeals from the U.S. Patent and Trademark Office (USPTO) held steady from 2022, as did appeals originating from district court patent cases.
Federal Circuit IP Appeals: Summaries of Key 2023 Decisions (8th Edition): In re Cellect, LLC, 81 F.4th 1216 (Fed. Cir. 2023) (Lourie, Dyk, Reyna) | JD Supra
Cellect owned four patents with claims that were found unpatentable by the PTAB in ex parte reexaminations for obviousness-type double patenting. The patents were granted Patent Term Adjustment (“PTA”) for the Office’s delay during prosecution pursuant to pre-AIA 35 U.S.C. § 154(b). The four patents claimed priority to a fifth Cellect patent—the ’036 patent—which was the only member of the patent family that did not receive a grant of PTA.
[Webinar] Federal Circuit IP Appeals: Summaries of Key 2023 Decisions - January 23rd, 1:00 pm - 2:00 pm EST | JD Supra
January 19, 2024 January 23rd, 1:00 pm - 2:00 pm EST Richard Crudo, Michael Joffre, Ph.D., William Milliken, Anna Phillips Sterne, Kessler, Goldstein & Fox P.L.L.C. + Follow x Following x Following - Unfollow Contact To embed, copy and paste the code into your website or blog: January 23rd, 2024 1:00 PM - 2:00 PM EST Directors Michael Joffre, Ph.D., William H. Milliken, Anna G. Phillips, and Richard A.
What practitioners need to know about patent invalidity at the Federal Circuit
What practitioners need to know about patent invalidity at the Federal Circuit Register for limited access Register to receive our newsletter and gain limited access to subscriber content. Register now Subscribe to unlock unlimited access Get news, unique commentary, expert analysis and essential resources from the IAM experts. Subscribe now Already have access?
In Dupree, Supreme Court Unanimously Decides “Purely Legal” Issues Decided at Summary Judgment are Preserved for Appeal | JD Supra
On May 25, 2023, the US Supreme Court issued its opinion in Dupree v. Younger, which resolved a split among the courts of appeals concerning whether “purely legal” issues raised at the summary-judgment stage must be re-raised in a post-trial motion to preserve them for appeal.
Supreme Court Affirms Federal Circuit’s Decision in Amgen v. Sanofi | JD Supra
This morning, the US Supreme Court issued its opinion in Amgen v. Sanofi, a closely watched case concerning patent law’s enablement requirement. Under that requirement, codified at 35 U.S.C. § 112(a), a patent specification must enable a person skilled in the relevant art “to make and use” the invention. In a unanimous decision, the Court affirmed the Federal Circuit’s ruling that the Amgen patent claims at issue are not enabled.
Federal Circuit Appeals from the PTAB and ITC: Summaries of Key 2022 Decisions: Introduction | JD Supra
As part of the recovery from the global COVID-19 pandemic, the U.S. Court of Appeals for the Federal Circuit took steps to return to normal operations. It began requiring live oral arguments in August 2022 and, by November, members of the public could attend. Turning to the statistics, the number of appeals from the U.S. Patent and Trademark Office (USPTO) stayed relatively the same as in 2021.
[Webinar] Federal Circuit Appeals from the PTAB and ITC: Summaries of Key 2022 Decisions - February 2nd, 1:00 pm - 2:00 pm EST | JD Supra
In conjunction with the release of the firm's year-in-review report, speakers will offer case summaries and analysis of the significant 2022 appellate rulings discussed in the report.
Federal Circuit Appeals from the PTAB and ITC: Summaries of Key 2021 Decisions: Uniloc 2017 LLC v. Facebook Inc., 989 F.3d 1018 (Fed. Cir. 2021) | JD Supra
Facebook filed an inter partes review (IPR) petition against claims 1–8 of Uniloc 2017 LLC’s patent on Voice over Internet Protocol. Meanwhile, an IPR proceeding was already pending on claims 1–6 and 8 of the same patent, based on a petition filed by Apple and later joined by Facebook.
Federal Circuit Appeals from the PTAB and ITC: Summaries of Key 2021 Decisions: Minerva Surgical, Inc. v. Hologic, Inc., 141 S. Ct. 2298 (2021) | JD Supra
The inventor of a patent assigned to Hologic subsequently founded Minerva Surgical. Hologic then filed a continuation with broader claims. Based on that broader patent, Hologic brought an infringement case against Minerva, which asserted the patent was invalid. Hologic argued that the invalidity defense was barred under the doctrine of assignor estoppel and the district court agreed.
Federal Circuit Appeals from the PTAB and ITC: Summaries of Key 2021 Decisions: Introduction | JD Supra
Last year, the continued global COVID-19 pandemic forced American courts to largely continue the procedures set in place in 2020. The U.S. Court of Appeals for the Federal Circuit was no exception. It briefly returned to live oral arguments towards the end of the year before returning to telephonic arguments due to the rise of various COVID-19 variants. Turning to the statistics, appeals from the U.S. Patent and Trademark Office (PTO) dipped for the second straight year in FY21.
Federal Circuit Appeals from the PTAB and ITC: Summaries of Key 2021 Decisions | JD Supra
[co-author: Jamie Dohopolski] Last year, the continued global COVID-19 pandemic forced American courts to largely continue the procedures set in place in 2020. The U.S. Court of Appeals for the Federal Circuit was no exception. It briefly returned to live oral arguments towards the end of the year before returning to telephonic arguments due to the rise of various COVID-19 variants.
Arthrex SCOTUS Oral Arguments on Monday! We’ll Be Live Tweeting Updates | JD Supra
When oral arguments commence in United States v. Arthrex, Inc., No. 19-1434 (U.S.) on Monday, March 1, William H. Milliken, a director in Sterne Kessler’s Trial & Appellate Practice Group, will be live tweeting updates from the firm’s account, @sternekessler. Updates will begin at 10:00 a.m. and continue throughout the duration of the proceedings. By way of background, in October 2020, the U.S. Supreme Court granted certiorari in Arthrex v.
Federal Circuit Appeals from the PTAB and ITC: Summaries of Key 2020 Decisions: Adidas AG v. Nike, Inc., 963 F.3d 1355 (Fed. Cir. 2020) | JD Supra
Adidas petitioned for inter partes reviews (IPR) of two Nike patents. The Patent Trial and Appeal Board concluded that Adidas had not met its burden to show that the challenged claims in Nike’s patents were obvious. Adidas appealed. As a threshold issue, the Federal Circuit addressed Adidas’s Article III standing to appeal.
Federal Circuit Appeals from the PTAB and ITC: Summaries of Key 2020 Decisions: Amneal Pharm. LLC v. Almirall, LLC, 960 F.3d 1368 (Fed. Cir. 2020) | JD Supra
Abbreviated new drug (ANDA) applicant Amneal petitioned for an inter partes review (IPR) of Almirall’s patent listed in the Food and Drug Administration’s (FDA) Orange Book for a prescription drug to treat acne. Almirall brought suit in district court after Amneal filed its ANDA. During settlement discussions, Almirall offered Amneal a covenant not to sue on one of its patents contingent upon dismissal of the IPR, but the parties could not reach a settlement.
Federal Circuit Appeals from the PTAB and ITC: Summaries of Key 2020 Decisions: Security People, Inc. v. Iancu, 971 F.3d 1355 (Fed. Cir. 2020) | JD Supra
Security People lost an inter partes review (IPR) and appealed to the Federal Circuit. It lost that appeal and was denied certiorari at the Supreme Court. Security People never raised constitutional arguments in any of these proceedings. Security People subsequently filed suit against the Patent and Trademark Office in district court alleging that the application of the IPR proceeding to cancel its patent violated Security People’s constitutional right to due process.
Federal Circuit Appeals from the PTAB and ITC: Summaries of Key 2020 Decisions: Thryv, Inc. v. Click-To-Call Technologies, Inc., 140 S. Ct. 1367 (2020) | Sterne, Kessler, Goldstein & Fox P.L.L.C. - JDSupra
In Thryv, Inc v. Click-To-Call Technologies, LP, 140 S. Ct. 1367 (2020), the Supreme Court held that patent owners cannot appeal determinations by the Patent Trial and Appeal Board declining to apply the time bar of 35 U.S.C. § 315(b). In reaching this conclusion, the Supreme Court had to reconcile this outcome in Thryv with its decision in SAS Institute Inc. v. Iancu, 138 S. Ct. 1348 (2018).
Federal Circuit Appeals from the PTAB and ITC: Summaries of Key 2020 Decisions: Sealy Tech., LLC v. SSB Manufacturing Co., 825 F. Appx. 795 (Fed. Cir. 2020) | Sterne, Kessler, Goldstein & Fox P.L.L.C. - JDSupra
SSB sought inter partes reexamination of a Sealy design patent. After reexamination, the decision was appealed to the Patent Trial and Appeal Board. The single claim in the patent recites “[t]he ornamental designs for a Euro-top mattress design, as shown and described.” Figure 1 of the patent (left) and the Aireloom Heritage mattress, which the Board found invalidated the patent, (right) are reproduced below.
Federal Circuit Appeals from the PTAB and ITC: Summaries of Key 2020 Decisions: Nike, Inc. v. Adidas AG, 955 F.3d 45 (Fed. Cir. 2020) and Uniloc 2017 LLC v. Hulu, LLC, 966 F.3d 1295 (Fed. Cir. 2020) | Sterne, Kessler, Goldstein & Fox P.L.L.C. - JDSupra
The patent claim survival rate before the Patent Trial and Appeal Board continues to strongly favor petitioners. Accordingly, motions to amend the challenged claims have been growing among patent owners in inter partes reviews (IPRs). While the Board is still confined to the petition and its rationales in reviewing the patentability of challenged claims, it is not so constrained in reviewing proposed amendments. In Nike, Inc. v. Adidas AG, 955 F.3d 45 (Fed. Cir.
Federal Circuit Appeals from the PTAB and ITC: Summaries of Key 2020 Decisions: Comcast Corp. v. Int’l Trade Comm’n, 951 F.3d 1301 (Fed. Cir. 2020) | JD Supra
The International Trade Commission found a violation of Section 337 by Comcast X1 set-top boxes, and Comcast appealed two issues of statutory interpretation underlying the Commission’s finding. First, Comcast argued that its set-top boxes did not infringe—directly or indirectly—at the time they were imported. Second, Comcast argued that others—not Comcast—imported the set-top boxes.
Federal Circuit Appeals from the PTAB and ITC: Summaries of Key 2020 Decisions: Mayborn Grp., Ltd. v. Int’l Trade Comm’n, 965 F.3d 1350 (Fed. Cir. 2020) | Sterne, Kessler, Goldstein & Fox P.L.L.C. - JDSupra
Mayborn petitioned the International Trade Commission to rescind a general exclusion order (GEO) after the complainants informed Mayborn that its self-anchoring beverage containers were potentially subject to the order. The petition sought to prove that the patent was invalid, and the Commission denied the petition because the discovery of potentially invalidating prior art was not a “changed condition” under § 1337(k)(1). Mayborn appealed, and the Commission challenged Mayborn’s standing.
Federal Circuit Appeals from the PTAB and ITC: Summaries of Key 2020 Decisions: United States v. Arthrex, Inc., No. 19-1434 (U.S.) | JD Supra
In October 2020, the Supreme Court agreed to review the Federal Circuit’s holding in Arthrex Inc. v. Smith & Nephew Inc., 941 F.3d 1320 (Fed. Cir. 2019), that the scheme for appointing the Patent Trial and Appeal Board’s administrative patent judges is unconstitutional under the Appointments Clause. The Constitution’s Appointments Clause provides that principal “Officers of the United States” must be appointed by the president with the advice and consent of the U.S. Senate.
Federal Circuit Appeals from the PTAB and ITC: Summaries of Key 2020 Decisions: Network-1 Tech., Inc. v. Hewlett-Packard Co. et. al., Nos. 2018-2338, -2339, -2395, -2396, 2020 WL 6814481 (modified November 20, 2020) (Fed. Cir. 2020) | Sterne, Kessler, Gol
Network-1 sued HP, among others, for patent infringement. Another defendant then filed an inter partes review (IPR) petition. Following institution, HP filed its own petition on different grounds and a motion to join the instituted IPR. The Board denied HP’s request. HP then filed another IPR petition containing only the grounds on which the Board had instituted and filed a motion to join the instituted IPR. The Board granted HP’s motion and held that the claims were not unpatentable.
Federal Circuit Appeals from the PTAB and ITC: Summaries of Key 2020 Decisions: Fanduel, Inc. v. Interactive Games LLC, 966 F.3d 1334 (Fed. Cir. 2020) | Sterne, Kessler, Goldstein & Fox P.L.L.C. - JDSupra
FanDuel petitioned for inter partes review (IPR) of certain claims of Interactive Games’ patent. The Patent Trial and Appeal Board instituted review and found all but dependent claim 6 to be unpatentable as obvious. Specifically, in its petition, FanDuel argued that claim 6 was obvious over three references: Carter, Walker, and an archived copy of a webpage (the Slot Payouts Webpage).
Federal Circuit Appeals from the PTAB and ITC: Summaries of Key 2020 Decisions: In re Google Tech. Holdings LLC, 980 F.3d 858 (Fed. Cir. 2020) | JD Supra
[co-author: Kathleen Wills] Google applied for a patent on video-on-demand systems. The Patent Trial and Appeal Board affirmed the examiner’s rejection of the claims as obvious, stating that Google’s responses to the examiner’s rejections were “conclusory” and failed to include any construction of the contested terms. Google appealed to the Federal Circuit.
Federal Circuit Appeals from the PTAB and ITC: Summaries of Key 2020 Decisions: Acoustic Technology, Inc. v. Itron Networked Solutions, Inc., 949 F.3d 1366 (Fed. Cir. 2020) | Sterne, Kessler, Goldstein & Fox P.L.L.C. - JDSupra
[co-author: Kathleen Wills] Acoustic sued Itron for infringement of its patent, and the two parties settled, with Itron taking a license to the patent. Acoustic later sued Silver Spring for infringement. Silver Spring petitioned for inter partes review (IPR) of the patent, while also discussing a potential merger with Itron. The Patent Trial and Appeal Board subsequently instituted review, and Silver Spring and Itron completed their merger. The Board ruled against Acoustic.
Federal Circuit Appeals from the PTAB and ITC: Summaries of Key 2020 Decisions: Data and Trends: AIA PTAB Appeals to the Federal Circuit (Infographics) | Sterne, Kessler, Goldstein & Fox P.L.L.C. - JDSupra
These charts and graphs appear in the firm's Federal Circuit Appeals from the PTAB and ITC: Summaries of Key 2020 Decisions report. Please click on the report link for more information and analysis. Appeals from the USPTO dipped in FY20, reaching their lowest level since FY15. After four consecutive years of declines in appeals from district courts, these cases levelled off in FY20.
Federal Circuit Appeals from the PTAB and ITC - Summaries of Key 2020 Decisions | JD Supra
[co-author: Kathleen Wills] Last year, the global COVID-19 pandemic created unprecedented challenges for American courts. By making several changes, however, the U.S. Court of Appeals for the Federal Circuit was able to largely continue its operations. The most visible of these changes was that the Court began to hear all arguments telephonically, with some early denials of at least some parties’ requests for an oral hearing.
PTAB Strategies and Insights - January 2021: Federal Circuit Appeals from the PTAB and ITC: Summaries of Key 2020 Decisions | JD Supra
[co-author: Kathleen Wills] Last year, the global COVID-19 pandemic created unprecedented challenges for American courts. By making several changes, however, the U.S. Court of Appeals for the Federal Circuit was able to largely continue its operations. The most visible of these changes was that the Court began to hear all arguments telephonically, with some early denials of at least some parties’ requests for an oral hearing.
Open Issues After Fed. Circ. PTAB Judge Appointments Ruling
Law360 (March 23, 2020, 6:57 PM EDT) -- Monday, the U.S. Court of Appeals for the Federal Circuit voted 8-4 not to rehear en banc its explosive decision in Arthrex Inc. v. Smith & Nephew Inc.[1] U.S. Circuit Judges Timothy Dyk, Pauline Newman, Evan Wallach and Todd Hughes dissented from the denial of en banc review, and several judges wrote separate opinions explaining the reasons for their votes.
Federal Circuit Appeals From The PTAB: Summaries of Key 2019 Decisions: Papst Licensing GMBH & Co. v. Samsung Elec. Am., Inc., 924 F.3d 1243 (Fed. Cir. 2019) | Sterne, Kessler, Goldstein & Fox P.L.L.C. - JDSupra
Updated: May 25, 2018: JD Supra is a legal publishing service that connects experts and their content with broader audiences of professionals, journalists and associations.
Federal Circuit Appeals From The PTAB: Summaries of Key 2019 Decisions: Data and Trends: AIA PTAB Appeals to the Federal Circuit | JD Supra
Updated: May 25, 2018: JD Supra is a legal publishing service that connects experts and their content with broader audiences of professionals, journalists and associations.
Federal Circuit Appeals From The PTAB: Summaries of Key 2019 Decisions | JD Supra
Updated: May 25, 2018: JD Supra is a legal publishing service that connects experts and their content with broader audiences of professionals, journalists and associations.
Fed. Circ.’s Arthrex Ruling: Unforeseen Consequences For IPR
Law360 (November 14, 2019, 1:15 PM EST) -- In Arthrex Inc. v. Smith & Nephew Inc., a panel of the U.S. Court of Appeals for the Federal Circuit unanimously held that the appointment scheme for the Patent Trial and Appeal Board’s administrative patent judges is unconstitutional under the appointments clause of the U.S. Constitution.
INSIGHT: Biopharma Patent Applicants Should Consider a Rarely Used Strategy
The standard course of action when a finally rejected patent applicant loses an intra-agency appeal to the U.S. Patent & Trademark Office’s Patent Trial & Appeal Board (PTAB) is a further appeal directly to the U.S. Court of Appeals for the Federal Circuit. But, for those seeking high-value patents in the biopharma space, there may be a better route to overturning the PTAB’s decision.
2019 Report: Federal Circuit Appeals from the PTAB - Summaries of Key 2018 Decisions | JD Supra
Updated: May 25, 2018: JD Supra is a legal publishing service that connects experts and their content with broader audiences of professionals, journalists and associations.
Federal Circuit Appeals from the PTAB: Summaries of Key 2017 Decisions | JD Supra
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Supreme Court to Review the Constitutionality of AIA Patent Review Proceedings
Your first step to building a free, personalized, morning email brief covering pertinent authors and topics on JD Supra: Already signed up? Log in here By using the service, you signify your acceptance of JD Supra provides users with access to its legal industry publishing services (the "Service") through its website (the "Website") as well as through other sources.
Sterne Kessler Strengthens Patent Litigation and Appellate Teams with Addition of John Christopher
"Having worked with J.C. and Mike for the past few years, we have learned that they are excellent lawyers and exceptional people," said Michael B. Ray, managing director of Sterne Kessler.
Sterne Kessler Appoints John Christopher Rozendaal and Michael Joffre as Directors
Sterne, Kessler, Goldstein & Fox P.L.L.C. is pleased to announce that John Christopher (J.C.) Rozendaal and Michael Joffre have joined the firm as directors.
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