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**FEDERAL CIRCUIT HAS JURISDICTION OVER ANTI-SLAPP MOTION
IQE PLC v. Newport Fab, LLC, 24-1124 — On Wednesday in an opinion by Justice HUGHES, the Federal Circuit vacated district court denial of Newport’s motion under the California anti-Strategic Lawsuits Against Public Participation (SLAPP) law, filed in response to IQE’s complaint alleging trade secret misappropriation. Newport argued the Federal Circuit had subject matter and appellate jurisdiction over the anti-SLAPP motion.
The Federal Circuit agreed it had subject matter jurisdiction because IQE’s well-pleaded complaint included a claim created by federal patent law, for correction of inventorship under 35 U.S.C. § 256. The court also had appellate jurisdiction under the collateral order doctrine because 1) the district court’s denial of the anti-SLAPP motion determined the disputed issue below, that the anti-SLAPP statute did not apply to the challenged claims; 2) the anti-SLAPP motion resolved an important issue separate from the merits; and 3) he district court’s denial would also “be effectively unreviewable on appeal from a final judgment. ”
(1 to 4 stars rate impact of opinion on patent & trademark law)
USPTO PROPOSES RULE TO LIMIT REPEATED IPR CHALLENGES
Today the U.S. Patent and Trademark Office (USPTO) issued a Notice of Proposed Rulemaking in the Federal Register seeking public comment on proposed amendments to regulations governing inter partes reviews before the Patent Trial and Appeal Board. A USPTO notice announcing the proposed rule indicates that the agency “is concerned that even extremely strong patents become unreliable when subject to serial or parallel challenges” and notes that “Congress gave the USPTO Director broad discretion to identify circumstances when inter partes review (IPR) proceedings would or would not benefit the patent system. And repeated challenges do not benefit the patent system.”
Under the new regulations, the USPTO will deny institution of an IPR if the same claims were previously adjudicated or are likely to be resolved first in another proceeding. Petitioners will be required to stipulate that they will not pursue overlapping invalidity challenges in district court or the International Trade Commission on the same grounds. The proposal will permit the USPTO to institute an IPR in exceptional circumstances despite a prior adjudication or expected earlier determination. Written comments on the proposed rule are due by November 17, 2025. IPO’s U.S. Post-Grant Patent Office Practice Committee is studying the notice.
GET YOUR AWARDS CELEBRATION TICKET TODAY!
Purchase your tickets for the December 16 Awards Celebration today! Join IPO Education Foundation at JW Marriott in Washington, DC to celebrate the recipients of the 2025 IP Champion and Inventor of the Year awards for their accomplishments in innovation, creativity, and IP. Learn more about the honorees at IPOEF.org. The event is a great way to promote the IP system and an opportunity to engage with distinguished members of the IP community. For questions about the event or information about sponsorships, contact foundation@ipo.org.
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HELPING NONEXPERTS UNDERSTAND THE PHRASE “PATENT ELIGIBILITY”
People debate the scope of Patent Act section 101. (It’s an introductory section, like English 101 or math 101.) The section tells us that the subject matter categories for a patent are processes, machines, manufactures, and compositions of matter. If an invention falls into one or more of the categories, it’s called “patent eligible.” If, in addition, it satisfies the other substantive requirements — new, nonobvious, and description/claiming — it’s called “patentable.”
Patent experts have their views on the scope of eligibility. But nonexperts often don’t grasp the distinction between “patent eligibility” and “patentability.” They think that if an invention is eligible, it must deserve a patent. After all, one of the dictionary definitions of “eligible” is “worthy of being chosen” (Merriam-Webster).
I suggest writing “patent subject matter eligibility” instead of just “patent eligibility.” Or writing “patent eligibility categories” instead of just “patent eligibility.” Sometimes greater clarity requires more words.
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