May 15, 2019 | Blog | By Ken Jenkins, Jeff Giering
We previously reported here on a Patent Trial and Appeal Board (PTAB) decision involving a case in which a patent eligibility rejection was overcome by replacing a “comparing” step with a recitation that the sample is from a particular patient population. However, because the eligibility rejection was dropped by the examiner before appeal, the PTAB did not revisit the issue.
April 9, 2019 | Blog | By Christina Sperry
The general rule is that a patent claim’s preamble does not limit the claim unless the preamble gives life, meaning, and vitality to the claim. The Federal Circuit’s recent decision in Arctic Cat Inc. v. GEP Power Products, Inc. (March 26, 2019) considers the situation where a patentee wants a preamble to be a required claim limitation, unlike the more typical situation where a patentee does not want a claim preamble to be limiting, such as in Pacing Technologies v. Garmin International previously discussed HERE. The court deciding in Arctic Cat that the preambles at issue were not required claim limitations highlights important considerations for patent application drafting and for crafting post-issuance arguments.
Commission Reverses Apple Infringement Finding, Thereby Mooting the Public Interest Inquiry...For Now
March 27, 2019 | Blog | By Michael Renaud, James Wodarski, Sandra Badin, Rithika Kulathila
Yesterday afternoon, the International Trade Commission issued its Final Determination in Certain Mobile Electronic Devices and Radio Frequency and Process Components Thereof, 337-TA-1065. The 1065 Investigation is one of several actions Qualcomm has brought against Apple both here and abroad.
Precedential PTAB Panel Says Petitioners Can Join Their Own Earlier-Filed IPRs and Join New Issues in Limited Circumstance
March 19, 2019 | Blog | By William Meunier, Brad M Scheller, Vincent Ferraro, Rithika Kulathila
In its first decision since its inception, the Precedential Opinion Panel (“POP”) for the U.S. Patent Trial and Appeal Board (“Board”), in Proppant Express Investments, LLC v. Oren Technologies, LLC, IPR2018-00914, held that under 35 U.S.C. § 315(c) the Board has discretion to allow a party, in limited circumstances, to join its own earlier-filed inter partes review (“IPR”) and join new issues, even if the party was otherwise time-barred under 35 U.S.C. § 315(b). Specifically, the Board may use this discretion only where fairness requires it and to avoid undue prejudice to a party. The POP nevertheless denied Proppant Express Investments LLC’s (“Petitioner”) motion for joinder as Petitioner’s motion was “a result of Petitioner’s errors,” and therefore did not fall within the limited circumstances it envisioned.
February 12, 2019 | Blog | By John Bauer, Jeff Giering
In the February 1, 2019 decision of Mylan Pharms. Inc. v. Research Corp. Techs., 2019 U.S. App. LEXIS 3282, __ F.3d __, 2019 WL 405682, the Federal Circuit affirmed a PTAB final written decision (FWD) holding claims of U.S. Reissue Patent 38,551 not unpatentable. The Federal Circuit also held that time-barred petitioners who participated in an IPR as a result of joinder have standing to appeal. In finding such standing, the Federal Circuit analyzed the interplay between 35 U.S.C. §§ 315(b), 315(c), and 319.
Federal Circuit Dismisses Appeal of IPR Final Written Decision for Lack of Standing After Appellant Terminated Development of Potentially Infringing Pharmaceutical Product
February 11, 2019 | Blog | By Adam Samansky, Peter Cuomo, Joe Rutkowski
On February 7, 2019, the United States Court of Appeals for the Federal Circuit, in Momenta Pharmaceuticals v. Bristol-Myers Squibb, No. 2017-1694, dismissed Momenta’s appeal of a Final Written Decision in an Inter Partes Review (“IPR”) because Momenta had terminated its potentially infringing drug development program. According to the panel, this left Momenta without a sufficiently concrete interest in the action to satisfy the standing requirements of Article III of the United States Constitution.
PTAB Finds that Allowing IPR Petitioner to Avoid a Statutory Bar by Retroactively Adding Missing Real Party in Interest Is “In the Interest of Justice”
February 8, 2019 | Blog | By William Meunier, Daniel Weinger, Courtney Herndon
Recently, in ZTE (USA) Inc. v. Fundamental Innovation Int’l LLC, IPR2018-00425, Paper No. 34 (Feb. 6, 2019), the Patent Trial and Appeal Board (“PTAB”) allowed Petitioner’s motion to retroactively correct its defective IPR petition to identify a previously undisclosed real party in interest and thereby avoid a mandatory statutory bar.
January 2, 2019 | Blog | By John Bauer, Vincent Ferraro, Courtney Herndon
Recently in Nuna Baby Essentials, Inc. v. Britax Child Safety, Inc., IPR2018-01683, Paper No. 11 (PTAB Dec. 18, 2018), the Patent Trial and Appeal Board (“Board”) denied Petitioner’s motion to excuse the late filing of exhibits to the Petition, finding that Petitioner failed to establish good cause for such late filing or that consideration of the late-filed exhibits would be in the interests of justice.
December 20, 2018 | Blog | By Peter Snell, Rithika Kulathila
This year the Supreme Court, United States Court of Appeals for the Federal Circuit, and the Federal District Courts penned a number of opinions impacting patent law. Here are some key takeaways from the past year.
November 5, 2018 | Blog | By Andrew DeVoogd, Serge Subach
The U.S. Court of Appeals for the Federal Circuit opinion issued on November 1, 2018 clarifies the standard for a document to qualify as a “printed publication” under pre-AIA 35 U.S.C. §102(b) and reversed an earlier Patent Trial and Appeal Board (“PTAB”) decision.1 Specifically, the requirement that a reference be “publicly available” is not as narrow as the PTAB had interpreted. The Court held that “the standard for public accessibility [of an alleged prior art reference] is one of reasonable diligence, to locate the information by interested members of the relevant public.”
October 29, 2018 | Blog | By William Meunier, Daniel Weinger, Matthew Galica
U.S. Patent and Trademark Office Director, Andrei Iancu, recently gave a speech to the American Intellectual Property Law Association where he discussed a new rule proposal aimed at improving the patent amendment process during post-grant proceedings. Specifically, he informed the audience—and patent practitioners, generally—that the USPTO “will formally publish a notice seeking comments on a new claim amendment process for post grant proceedings.” The stated purpose of the proposed rule change is to “ensure balance” in post-grant proceedings by making the amendment process “feasible and meaningful” for the owners of challenged patents.
October 18, 2018 | Blog | By Aarti Shah, Andrew DeVoogd, Daniel Weinger, Chris Duerden
In an Initial Determination finding that Fujifilm violated Section 337 by infringing two patents held by Sony, ALJ Cheney found another patent invalid after ruling that inter partes review (“IPR”) estoppel does not apply to the International Trade Commission’s (“ITC”) Office of Unfair Imports Investigations (“OUII”) Staff. In Magnetic Tape Cartridges and Components Thereof, Investigation 337-TA-1058, ALJ Cheney remarked that even if IPR estoppel prevents a respondent from raising certain references during an investigation before the ITC, IPR estoppel does not prevent Staff from raising those same references to invalidate a patent where Staff was not a party to the IPR. Id. at 106-07.
Federal Circuit Upholds Trade Show Catalog As Prior Art in Nobel Biocare Servs. AG v. Instradent USA, Inc.
September 25, 2018 | Blog | By Peter Cuomo, Courtney Herndon
Recently in Nobel Biocare Services AG v. Instradent USA, Inc., the Federal Circuit affirmed a decision of the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board (“the Board”) in an inter partes review (“IPR”) finding certain claims of U.S. Patent No. 8,714,977 (“the ’977 Patent”), directed to dental implants, unpatentable as anticipated. The Nobel decision is the latest in a recent line of Federal Circuit cases holding that materials distributed at conferences, trade shows, and meetings are publically available “printed publications” within the meaning of pre-AIA 35 U.S.C. § 102(b).
PTAB Finds Recycled Art and Advanced State of Parallel District Proceeding Warrant Denial of IPR Trial
September 17, 2018 | Blog | By Peter Snell, Daniel Weinger, Vincent Ferraro, Chris Duerden
Last week the Patent Trial and Appeal Board (“PTAB”) provided yet another arrow in the patent owner’s quiver for defending against institution of IPRs. In NHK International Corp. v. Intri-Plex Technologies, Inc., IPR2018-00752, the PTAB exercised its discretion under 35 U.S.C. § 325(d) and denied institution because the asserted art was already considered during the original examination of the patent. The PTAB also found that denial was warranted under 35 U.S.C. § 314(a) in light of the additional factor that a district court trial on the same patent was imminent.
May 9, 2018 | Blog | By Michael Newman, Peter Cuomo, Patrick Driscoll
The U.S. Patent and Trademark Office announced a propose change to the standard for construing both unexpired and amended patent claims in Patent Trial and Appeal Board (PTAB) proceedings under the America Invents Act (“AIA”).
May 4, 2018 | Blog | By Michael Renaud, Sandra Badin, Inna Dahlin
As we noted in our blog post last week, the USPTO held its “Chat with the Chief on SAS” webinar on April 30, 2018, to advise the public on the implications of the Supreme Court’s opinion in SAS Institute for practice before the Board going forward.
January 24, 2018 | Blog | By Christina Sperry, Monique Winters Macek
When trying to overcome an obviousness rejection of a patent claim, an argument that two or more cited references cannot be combined may be used. For example, it can be argued that the combination is improper because the modification of a reference completely changes its “fundamental principle of operation.”
Wi-Fi One v. Broadcom: en banc Federal Circuit Held The Time-Bar Determinations (§ 315(b)) Appealable
January 16, 2018 | Blog | By Michael Newman, Catherine Xu
In its first en banc decision of 2018, the Federal Circuit held that “judicial review is available for a patent owner to challenge the U.S. Patent and Trademark Office’s determination that the petitioner satisfied the timeliness requirement of 35 U.S.C. § 315(b) governing the filing of petitions for inter partes review.”
December 28, 2017 | Blog | By Thomas Wintner
On December 19, 2017, an expanded panel of the Patent Trial and Appeal Board (PTAB) ruled that the state of Minnesota waived its Eleventh Amendment immunity to challenges to patent validity by inter partes review (IPR) by filing suit in federal court alleging infringement of the same patent being challenged by IPR.
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