Northern District of California Holds That Patent Suit Against Only Foreign Entities Is Permissible Even Where Inclusion of Domestic Entities Would Alter Venue Analysis
March 1, 2019 | Blog | By Andrew DeVoogd, Daniel Weinger, Matthew Galica, Chris Duerden
A recent order from the Northern District of California in AU Optronics Corporation America v. Vista Peak Ventures, LLC, 4:18-cv-04638 (CAND 2019-02-19) (“AU Optronics”), provides further guidance for patent venue analysis post-TC Heartland. Specifically, the order teaches that bringing a patent suit against only a foreign parent company while omitting its domestic subsidiary will likely not run afoul of TC Heartland’s seminal venue holding.
Continental Circuits LLC v. Intel Corp., et al: Federal Circuit Reemphasizes Prohibition on Importing a Preferred Embodiment into Patent Claims
February 20, 2019 | Blog | By Andrew DeVoogd, Kristina Cary, Matthew Galica, Tiffany Knapp
The Court of Appeals for the Federal Circuit (CAFC) recently issued a precedential opinion finding that a lower court had improperly incorporated an embodiment from the specification of the asserted patents into the claims. In its decision, the CAFC reaffirmed longstanding claim construction law: the claims of a patent are interpreted in light of a specification, but not everything expressed in the specification must be read into all of the claims.
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.
February 6, 2019 | Blog | By Christina Sperry, Elissa Kingsland
On January 23, 2019, the Federal Circuit decided Supernus Pharmaceuticals, Inc. vs. Iancu and shed light on Patent Term Adjustment (PTA). PTA was established by the American Inventors Protection Act of 1999 and codified at 35 U.S.C. § 154(b), which defines three kinds of United States Patent and Trademark Office (USPTO) delays, “A” delay, “B” delay, and “C” delay, and sets forth certain reductions from the summation of the Type A, B, and C delays. One of these reductions relates to Applicant delays. For an overview of PTA, see our prior articles here and here.
January 30, 2019 | Blog | By Christina Sperry
As 2019 begins and intellectual property (IP) strategies are being developed for the new year, it is a good time to reflect on what IP issues were prominent in 2018. According to many readers, hot topics included handling IDSs and obviousness during U.S. patent prosecution, blockchain, PTAB rules, and subject matter eligibility under Section 101.
January 22, 2019 | Blog | By Brad M Scheller, Peter Snell, Vincent Ferraro
Today the United States Supreme Court unanimously affirmed the Federal Circuit and held that it remains the law under the America Invents Act (AIA) that a confidential sale to a third party can trigger the “on sale” bar to patentability.
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.
Written Description in Amgen v. Sanofi: Is the Federal Circuit Possessed? Will SCOTUS Grant Certiorari?
January 2, 2019 | Blog | By John Bauer
In the continuing Amgen v. Sanofi saga, Amgen has asked SCOTUS to take up the issue of written description, which is currently established by showing “whether the disclosure…reasonably conveys…that the inventor had possession of the claimed subject matter as of the filing date.” Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010)(en banc)(emphasis added).
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.
December 17, 2018 | Blog | By Stephen J. Akerley, Philip C. Ducker, Adrian Kwan
On November 30, 2018, the Federal Circuit affirmed a jury verdict awarding Sprint Communications Company, LP (“Sprint”) damages in the amount of $139,800,000.00 USD against Time Warner Cable, Inc., et al., for infringing five patents directed to Voice over IP technology (“VoIP”).
December 13, 2018 | Blog | By Michael Renaud, James Wodarski, Aarti Shah, Marguerite McConihe
As anticipated https://www.mintz.com/insights-center/viewpoints/2231/2018-10-alj-pender-apple-infringes-no-exclusion-order-qualcomm, on December 12, 2018, the International Trade Commission (“ITC”) issued a notice to review the Final Initial Determination and Recommended Determination (“FID”) issued by Administrative Law Judge (“ALJ”) Pender in In the Matter of Certain Mobile Electronic Devices and Radio Frequency and Process Components Thereof, 337-TA-1065 (“Certain Mobile Electronic Devices”), where ALJ Pender, despite finding that a valid patent was infringed and all jurisdictional requirements met, recommended that no Limited Exclusion Order be issued against Apple because it would be contrary to the public interest.
December 12, 2018 | Alert | By Michael Renaud, Adam Rizk, Robert Moore, Catherine Xu
Read about the preliminary injunction issued by the Fuzhou Intermediate People’s Court in China against Apple for its infringement of two Qualcomm patents.
November 30, 2018 | Blog | By Adam Samansky, Alexander Roan
A federal district court judge recently applied the recent U.S. Supreme Court decision in WesternGeco LLC v. ION Geophysical Corporation, in which the Supreme Court held that lost profits damages could be awarded for infringement occurring under 35 U.S.C.§ 271(f), to cover damages for direct infringement occurring under 35 U.S.C.§ 271(a) (see our prior post here for an overview of the case and the issues before the Court, and here for an overview of the Court’s June opinion).
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 26, 2018 | Blog | By Peter Snell, Daniel Weinger
Continuing our coverage of the Federal Circuit’s Applications in Internet Time, LLC v. RPX Corp. (“Internet Time”) decision, on Tuesday, October 23, 2018, the Federal Circuit denied RPX’s request to rehear the case en banc. Internet Time held that the Patent Trial and Appeal Board (“PTAB”) must use a flexible approach when determining what entities constitute real parties in interest for the purpose of inter partes review (“IPR”). See Applications in Internet Time, LLC v. RPX Corp., 897 F.3d 1336 (July 9, 2018) (“Internet Time”). Petitioners for IPR challenging a patent must identify all real parties in interest in their petition. 35 U.S.C. § 312(a)(2). The Director is not authorized to institute trial on the petition if the petitioner, real party in interest, or privy of the petitioner, was served with an infringement complaint for the patent in question more than one year before the petition’s filing. See 35 U.S.C. § 315(b).
October 24, 2018 | Blog | By Adam Samansky, Peter Cuomo, Joe Rutkowski
On October 18, 2018, the United States District Court for the District of Delaware, in Bristol-Myers Squibb v. Mylan Pharmaceuticals Inc., No. 17-00379, held that venue was not proper in Delaware over Mylan Pharmaceuticals Inc. (“MPI”) in connection with a claim for patent infringement arising from Mylan’s submission of an Abbreviated New Drug Application (“ANDA”) seeking approval to market a generic version of the drug, apixaban.
Patent Infringement Claim Involving Complicated Technology May Require Additional Detail in Complaint
October 18, 2018 | Blog | By Andrew DeVoogd, Chris Duerden
A recent opinion from the Northern District of Texas is a reminder to all patent practitioners to heed pleading standards when drafting a complaint for patent infringement. In Lexington Luminance LLC v. Service Lighting and Electrical Supplies, Inc. d/b/a 1000bulbs.com, 3-18-cv-01074 (TXND October 9, 2018, Order), the court denied the defendant, Service Lighting and Electrical Supplies, Inc. d/b/a 1000bulbs.com’s (“1000bulbs”) request to dismiss the case for failure to meet the pleading standard, but granted its alternative request for a more definite statement. The plaintiff, Lexington Luminance LLC (“Lexington Luminance”), is now required to provide a more detailed complaint.
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.
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