October 6, 2017 | Blog | By Michael Renaud, James Wodarski, Aarti Shah, Robert Moore
The public version of ALJ Shaw’s Initial Determination (ID) in U.S. International Trade Commission (ITC) investigation Certain Magnetic Data Storage Tapes and Cartridges Containing the Same, Inv. No. 337-TA-1012 (1012 Investigation), provides important guidance on enforcement of standard-essential patents (SEPs) in the ITC.
AQUA PRODUCTS: The Federal Circuit Shifts The Burden of Proof On Amending Claims During An IPR From The Patent Owner To The Petitioner
October 5, 2017 | Blog | By Michael Renaud, William Meunier, Michael Newman, Matthew Galica
The United States Court of Appeals for the Federal Circuit’s recent decision in Aqua Products Inc., v. Matal materially changes the burden of proof associated with the patentability of amended claims during an inter partes review (“IPR”), shifting the burden from the Patent Owner seeking the amendment to the IPR Petitioner opposing it.
September 29, 2017 | Advisory | By Andrew DeVoogd, Anthony Faillaci, Daniel Weinger, Tiffany Knapp
The United States Supreme Court decided earlier this year that a 1957 opinion is still valid and still limits venue choices for patent infringement actions under 28 U.S.C. § 1400. See TC Heartland LLC v. Kraft Foods Group Brands LLC, 581 U.S. ___ (2017) (citing Fourco Glass Co. v. Transmirra Products Corp., 353 U.S. 222, 226 (1957)).
“In Light of the Specification”: Federal Circuit Weighs in on the Broadest Reasonable Interpretation
September 27, 2017 | Blog | By Brad M Scheller
The Federal Circuit yesterday issued an opinion in In re: Smith Int’l, Inc., No. 2016-2303 (Fed. Cir. Sept. 26, 2017) reversing an affirmance by the Patent Trial and Appeal Board of the rejection of several claims of U.S. Patent No. 6,732,817 being challenged in ex parte reexamination.
September 27, 2017 | Blog | By Andrew DeVoogd, Anthony Faillaci
The United States Supreme Court decided earlier this year that a 1957 opinion is still valid and still limits venue choices for patent infringement actions under 28 U.S.C. § 1400.
Federal Circuit Clarifies Venue Requirement Post-TC Heartland by Granting Mandamus Relief in In re Cray
September 25, 2017 | Blog | By Peter Snell, Daniel Weinger, Anthony Faillaci
Late last week, the Federal Circuit granted a writ of mandamus in In re Cray, 2017-129 (Fed. Cir. Sept. 21, 2017), overturning Judge Gilstrap’s four-factor test for determining whether a defendant possesses “a regular and established place of business” in a district such that the defendant could be sued for patent infringement in that district.
Am I Being Clear Enough? - PTAB Reaffirms Lower Pre-Issuance Threshold for Indefiniteness in Ex Parte McAward
September 20, 2017 | Blog | By Brad M Scheller, Kevin Amendt
On August 25, 2017, the Patent Trial and Appeal Board issued a precedential opinion in Ex Parte McAward, reaffirming the Patent Office’s use of a lower pre-issuance threshold for indefiniteness distinct from the Supreme Court’s Nautilus standard.
September 19, 2017 | Blog | By Andrew DeVoogd
After an eight-year battle through the Federal Courts, the fight over attorneys’ fees in Octane Fitness v. ICON Health & Fitness has likely reached its end with the Federal Circuit upholding the hotly disputed $1.6 million award to Defendant Octane Fitness.
In a Reversal, Federal Circuit Finds Data Processing Claims Patent-Eligible Under Section 101 in Visual Memory v. NVIDIA
August 23, 2017 | Blog | By Michael Renaud, Brad M Scheller, Robert Moore
Last week, the Federal Circuit held computer memory system patent claims not abstract and thus patent-eligible under Section 101, reversing a lower court dismissal of the case under Rule 12(b)(6).
August 21, 2017 | Blog | By Brad M Scheller, Tiffany Knapp
The Supreme Court’s decision five months ago in TC Heartland v. Kraft Food Group Brands was a sea change in the way courts interpret venue for patent infringement cases.
August 15, 2017 | Blog | By Jim Cleary, Paul Brockland
On July 20, 2017, the United States Court of Appeals for the Federal Circuit in In re OptumInsight denied OptumInsight’s petition for writ of mandamus on privilege waiver.
ITC Denies Suspension or Temporary Rescission of Remedial Orders After PTAB Invalidates Patents at Issue
July 28, 2017 | Blog | By Michael Renaud, Aarti Shah, Patrick Driscoll, Tiffany Knapp
In a first of its kind decision with important ramifications for patentees, the U.S. International Trade Commission (“ITC”) denied a petition to suspend or temporarily rescind remedial orders issued in Investigation No. 337-TA-945 pending appeal of the Patent Trial and Appeal Board’s (“PTAB”) separate finding that the patent claims at issue are invalid.
July 26, 2017 | Blog | By Adam Samansky, Joe Rutkowski
On July 17, 2017, the United States Court of Appeals for the Federal Circuit reversed, in a precedential opinion in Millennium Pharmaceuticals, Inc. v. Sandoz, Inc., No. 2015-2066 (Fed. Cir. July 17, 2017), a district court ruling that claims of a patent directed to the Velcade® cancer treatment drug compound were invalid as obvious.
June 28, 2017 | Blog | By William Meunier, Peter Cuomo
In EmeraChem Holdings LLC v. Volkswagen Group of Am. Inc., the Federal Circuit reminded the PTAB that it must abide by the APA’s requirements of adequate notice and an opportunity to respond when conducting a post-grant review.
ITC Issues Public Commission Opinion Clarifying Methodology for Allocating Domestic Industry Expenses and Issuing Exclusion Order against Product with Medical Applications
June 23, 2017 | Blog | By Aarti Shah, Daniel Weinger
On May 17, 2017, the International Trade Commission (ITC) reversed an ALJ’s ruling and found a violation of Section 337 in Certain Air Mattress Systems, Components Thereof and Methods of using the Same (“Certain Air Mattress Systems”), Inv. No. 337-TA-971, due to the importation of certain air mattresses, and components of air mattresses, by the named respondents.
June 22, 2017 | Blog | By Michael Renaud, Andrew DeVoogd, Chris Duerden
In a move that could drastically change the patent law landscape, the United States Supreme Court recently granted certiorari in Oil States Energy Services LLC v. Greene’s Energy Group LLC, No. 16-712, to answer the question whether the inter partes review (IPR) process violates the U.S. Constitution by “extinguishing private property rights through a non-Article III forum without a jury.”
June 14, 2017 | Blog | By Thomas Wintner, Joe Rutkowski
In a unanimous decision issued on June 12, 2017, the Supreme Court for the first time interpreted key provisions of the 2010 Biologics Price Competition and Innovation Act (“BPCIA”).
June 14, 2017 | Blog | By Aarti Shah, Patrick Driscoll
The Patent Trial and Appeal Board (“PTAB”) issued Final Written Decisions regarding Cisco’s U.S. Patent Nos. 6,377,577 (the “’577 Patent”) and 7,023,853 (the “’853 Patent”) on May 25, 2017 and U.S. Patent No. 7,224,668 (the “’668 Patent”) on June 1, 2017.
June 13, 2017 | Blog | By Andrew DeVoogd
A flurry of activity from various courts this past week on “exceptional cases” under Section 285 of the Patent Act provided notable guidance for practitioners and patent owners, with a particular emphasis on the motivation and conduct of the litigants.
May 31, 2017 | Blog | By Andrew DeVoogd, Vincent Ferraro
In keeping with recent erosion of patent rights, patent owners’ power to control the post-sale use and sale of their patented products was severely limited this week by the U.S. Supreme Court in the highly anticipated case regarding the patent exhaustion doctrine, Lexmark Int’l, Inc. v. Impression Prods., Inc., No. 15-1189.
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