As 2020 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 2019. According to many readers, hot topics included § 112 written description, prosecution history estoppel, and venue in the wake of TC Heartland.
Here are 2019’s top 5 most popular Mintz IP posts:
1. Effect of A Restriction Requirement on Prosecution History Estoppel – This article discusses how the Federal Circuit’s decision in UCB, Inc. v. Watson Laboratories Inc. helps highlight that while an examiner’s decision to issue a Restriction Requirement may in some circumstances lead to prosecution history estoppel preventing a later application of the doctrine of equivalents, it is not an automatic danger sign that future claim scope will be limited.
2. Understanding the USPTO’s Interpretation of 35 U.S.C. § 112 for Computer-Implemented Functional Claim Limitations – The U.S. Patent and Trademark Office (USPTO) held a webinar in June 2019 entitled “Examining Computer-Implemented Functional Claim Limitations for Compliance with 35 U.S.C. § 112” in light of § 112 USPTO Guidance issued earlier in the year. This article summarizes the webinar’s highlights.
3. Dueling Declaratory Judgment Suits Result in a Dismissal and Boomerang Transfer Back to the First-filed Forum Under TC Heartland – This article discusses the Eastern District of Texas’s decision in Apicore v. Beloteca, which held that while the court could exercise personal jurisdiction over a generic drug manufacturer in connection with the patentee’s action seeking a declaratory judgment of noninfringement, venue was not appropriate in the Eastern District of Texas under the applicable patent venue statute.
4. Representations Made by a Patentee during Foreign Prosecution May Be Used in Claim Construction for U.S. Patents – When looking to construe U.S. patent claims from a litigation or diligence perspective, foreign prosecution history could be an important repository for analysis. This article discusses Federal Circuit case law regarding when the prosecution history of a related foreign patent or patent application must be considered and limits on its consideration.
5. Collateral Estoppel Bars Assertion of Patent Claims That Do Not “Materially Alter the Question of Invalidity” Relative to Claims Invalidated in IPR Proceedings – This article provides an overview of the U.S. District Court for the District of Massachusetts decision in Intellectual Ventures I, LLC v. Lenovo Group Ltd., where the court held that a final determination of invalidity in inter partes review proceedings (IPR) collaterally estops the patent owner from asserting in district court another claim of the same patent that does not “materially alter the question of invalidity.”