Tribal Sovereign Immunity Doctrine Does Not Insulate Tribes From Board Actions
By: Tom Koglman and Joe Sauer – The PTAB denied Allergan’s motion to terminate IPR based on tribal sovereign immunity doctrine. In doing so, the Board “recognized differences between the state sovereign immunity and tribal immunity doctrines. In sum, Mylan has eliminated the possibility of relying on tribal immunity to insulate patents from IPR.
Be Advised: Settlement Does Not Necessarily End An IPR Or PGR
By: John Marlott – PTAB declines parties’ joint motion to terminate a post-grant proceeding filed one day after reaching settlement where the joint termination request came “very near the conclusion of the proceeding” and after the Board already “deliberated and decided the merits of the proceeding.”
Unsupported Assertions: Expert’s Persuasive Authority Suffers Without Directly Engaging Claim Limitations
By: John Evans, Ph.D. and Dave Cochran – Federal Circuit upholds a PTAB determination that an Expert’s unsupported assertion of equivalence undermined the Expert’s persuasive authority and carried no weight.
Not So Common Sense? Reliance on Common Sense to Establish Obviousness
By: Albert Liou – A common defect when relying on “common sense” is the failure to provide explicit and clear reasoning with some rational underpinning why common sense compels a finding of obviousness. The decision reminds Practitioners that “common sense” is reached by explicit reasoning; it’s not an explanation in and of itself.
PTO’s Rehearing Petition in Bosch: Signaling Future Rulemaking After Aqua Products?
By: Jason Garr and Emily Tait – The PTO petitioned for rehearing of Bosch Auto seeking clarification from the Federal Circuit of whether § 316(e) is ambiguous as to the burden of persuasion, as the Court held in Aqua Products, which would leave the door open to future rulemaking to return the burden of proof to the Patent Owner.