Rob Maier

January 24, 2023 | New York Law Journal

The decision in 'Amgen v. Sanofi' has the potential to have a significant impact on inventors and patent drafters, and the breadth with which they may be able to claim their inventions.

By Rob Maier

7 minute read

November 22, 2022 | New York Law Journal

In his Patents and Trademarks column, Rob Maier discusses 'In re Fedex', where the U.S. Court of Appeals for the Federal Circuit granted a petition for writ of mandamus and ordered an Eastern District of Texas district court to reconsider a denial of a motion seeking a transfer of venue for convenience. The author notes that the court's analysis may provide helpful guidance for future cases on the issue.

By Rob Maier

8 minute read

September 27, 2022 | New York Law Journal

In August of this year, Senator Thom Tillis introduced the Patent Eligibility Restoration Act of 2022 which would provide guidance for how to analyze patent claims to determine eligibility. This article discusses the potential impact the bill would have on software and biotechnology inventions and also patent litigation.

By Rob Maier

8 minute read

July 27, 2022 | New York Law Journal

USPTO guidelines provide welcomed clarity and certainty—for both patent owners and petitioners—regarding application of the 'Fintiv' factors, and effectively provide a number of "safe harbors" against 'Fintiv' discretionary denials when there is parallel district court litigation.

By Rob Maier

7 minute read

May 24, 2022 | New York Law Journal

In his Patent and Trademark Law column, Rob Maier looks back at the Supreme Court decision in 'Kimble v. Marvel Entertainment,' which dealt with the issue of collecting royalties for a license term that extends beyond the expiration date of a licensed patent. The court's decision clarified whether and to what extent this is proper and offers "practical guidance in the complex area of patent licensing."

By Rob Maier

7 minute read

March 22, 2022 | New York Law Journal

In the end, while the Federal Circuit did overrule 'Shaw', and now provides uniform guidance to district courts that IPR estoppel does, in fact, apply to grounds that reasonably could have been raised in an IPR proceeding, the Federal Circuit also clarified that IPR estoppel still applies only as to patent claims actually challenged in an IPR petition.

By Rob Maier

8 minute read

February 02, 2022 | New York Law Journal

'Biogen Int'l GMBH v. Mylan Pharms.' highlights the importance of considering invalidity under the written description requirement as a potential defense in litigation—particularly in ANDA cases, in which therapeutic efficacy for specific conditions, and drugs dosage amounts, may be at issue—and for patent applicants to remain mindful of written description pitfalls throughout patent prosecution.

By Rob Maier

8 minute read

November 19, 2021 | New York Law Journal

The Federal Circuit's precedential decision earlier this month in 'Celgene v. Mylan Pharmaceuticals', No. 20-1154 (Fed. Cir. Nov. 5, 2021) provided further guidance regarding what constitutes an act of infringement for venue purposes in the ANDA context.

By Rob Maier

8 minute read

September 20, 2021 | New York Law Journal

In his Patent and Trademark Law column, Rob Maier discusses the recent Supreme Court case 'Minerva Surgical v. Hologic,' and writes that "while the court rejuvenated the aging doctrine, it also limited the scope of its application, permitting assignors in certain situations to challenge the validity of the assigned patent in situations where fairness principles should allow."

By Rob Maier

8 minute read

July 28, 2021 | New York Law Journal

In this edition of his Patent and Trademark Law column, Rob Maier discusses the Supreme Court's decision in 'United States v. Arthrex', which had the potential to upend the U.S. patent litigation landscape. However, rather than topple the PTAB and its patent invalidation proceedings, the court preserved it and its administrative patent judges' decisions in IPR proceedings.

By Rob Maier

9 minute read