Skip to main content

Intellectual Property

Viewpoints

Filter by:

Patent Prosecution and Strategic Counseling Viewpoint Thumbnail

PATENT 101: Key Considerations and Activities for Establishing a Patent Program (Part 2 of 3)

December 1, 2021 | Blog | By Michael Van Loy, Kevin Amendt, Nicholas Eadie

Tasked with starting an innovation protection and patent development program at your company but do not know where to begin? This three part series describes the key components to a patent development program for any company, small or large. This second installment in the series describes subject matter for educating the innovator technical team tasked with developing or evaluating potential patentable innovations within a company.
Read more
Intellectual Property Viewpoints Thumbnail
In "ROHM Semiconductor USA, LLC v. MaxPower Semiconductor, Inc.", th Federal Circuit held that an arbitrator, not a federal district court, should decide whether a dispute arising from a technology license is subject to mandatory arbitration. Agreeing with a long line of decisions from other circuits, the Federal Circuit found that where an agreement incorporates by reference rules allowing an arbitrator to determine arbitrability, those rules should be given effect and an arbitrator, not a court, should decide whether the dispute is subject to arbitration.
Read more
IPRs and Other Post-Grant Porceedings Viewpoint Thumbnail

Discretion Retained: USPTO Dodges Attack from Big Tech to Rein in Discretionary IPR Denials

November 22, 2021 | Blog | By Michael McNamara, Daniel Weinger, Kara E. Grogan

The U.S. Patent and Trademark Office (USPTO) recently thwarted an attempt by big tech companies such as Apple, Cisco, Google, and Intel, to rid themselves of discretionary denials under the Fintiv factors. While these companies will almost assuredly seek other avenues to dismantle such discretionary denials, last week’s developments are a win for patent owners in the short term.
Read more
Intellectual Property Viewpoints Thumbnail

Examining Art Units to Avoid Subject Matter Eligibility Challenges for Bioinformatics and AI-related Patents

November 18, 2021 | Blog | By Terri Shieh-Newton, Lily Zhang, Mark Hammond

Computer-based inventions – especially in the machine learning (ML), bioinformatics, and artificial intelligence (AI) fields – are susceptible to subject matter eligibility challenges. Subject matter eligibility challenges may prevent a patent application from being granted by the United States Patent and Trademark Office (USPTO) and may even be asserted to invalidate a patent post-grant. In recent years, the Federal Circuit has implemented a multi-step test to determine whether patent claims would survive a subject matter eligibility challenge.
Read more
Intellectual Property Viewpoints Thumbnail

Federal Circuit Affirms Dismissal of Hatch-Waxman Defendants for Lack of Venue and Failure to State a Claim

November 12, 2021 | Blog | By Adam Samansky, Peter Cuomo, Joe Rutkowski

On November 5, 2021, the U.S. Court of Appeals for the Federal Circuit in Celgene Corp. v. Mylan Pharmaceuticals Inc., Case No. 21-1154, affirmed a decision from the District Court of New Jersey dismissing a suit brought by Celgene Corporation (“Celgene”) under Rule 12(b)(6) for improper venue as to defendants Mylan Pharmaceuticals Inc. (“MPI”) and Mylan Inc. and for the failure to state a claim against defendant Mylan N.V. Celgene had brought suit after MPI submitted an ANDA seeking approval to market a generic version of the drug Pomalyst used to treat multiple myeloma. In assessing venue, the court held that it was MPI’s ANDA submission to the U.S. Food and Drug Administration (“FDA”), and not the sending of a notice letter to Celgene in New Jersey, that was the artificial act of infringement pursuant to the Hatch-Waxman Act. The district court thus held, and the Federal Circuit affirmed, that venue in New Jersey was improper.
Read more
Intellectual Property Viewpoints Thumbnail

Apple Backs Down: Commits to Take Global FRAND License to Avoid Exile from UK Market

November 5, 2021 | Blog | By Michael Renaud, James Wodarski, Matthew Galica

Read more
Intellectual Property Viewpoints Thumbnail

Federal Circuit Clarifies that Willful Infringement Does Not Require Egregious Conduct

October 26, 2021 | Blog | By Adam Samansky, Peter Cuomo, Joe Rutkowski

On September 28, 2021, in a precedential opinion, the United States Court of Appeals for the Federal Circuit, in SRI Int’l, Inc. v. Cisco Systems, Inc., Nos. 2020-1685, -1704, clarified its decision from a prior appeal in the same case to hold that a finding of willful infringement requires only deliberate or intentional infringement, not egregious, wanton, malicious, or bad-faith infringement conduct.
Read more
Intellectual Property Viewpoints Thumbnail

Patent Owner Tip #19 for Surviving an Instituted IPR: Sur-Reply Strategies

October 25, 2021 | Blog | By Brad M Scheller, Courtney Herndon

In this final patent owner tip for surviving an instituted IPR we discuss sur-reply strategies. At this point, the Patent Owner has filed its Response, developed all the facts and evidence, and taken and defended expert depositions.
Read more
Intellectual Property Viewpoints Thumbnail

Invalidity of Terminal Patents Not Tied to Disclaimed Patent-in-Suit’s Expiration

October 6, 2021 | Blog | By Andrew DeVoogd, Courtney Herndon

In an interesting recent case of first impression, Judge Albright in the Western District of Texas denied a motion for judgement on the pleadings filed by Defendants Google and YouTube because the asserted patent was terminally disclaimed to two other patents that had been invalidated prior to its issuance. In VideoShare, LLC v. Google, LLC, 6:19-cv-663 (W.D. Tex. Sept. 29, 2021) (Albright, J.), the Court rejected the argument that the invalidation of the terminal patents was the “expiration” of the terminal patents, and that the asserted U.S. Patent No. 10,362,341 (“the ’341 patent”) was therefore also necessarily expired because it allegedly shares the expiration date of the terminal patents. Judge Albright concluded that, to the contrary, the prior finding of invalidity of the terminal patents had no impact on the expiry of the terminally-disclaimed ’341 patent.
Read more
Intellectual Property Viewpoints Thumbnail

Optis Puts Apple’s Feet to the UK Fire: Commit to FRAND or Be Snuffed Out

October 4, 2021 | Blog | By Michael Renaud, Daniel Weinger, James Thomson

Recent developments indicate that the UK is a favorable jurisdiction that owners of standard essential patents (“SEP”) can leverage to obtain appropriate SEP rates from what would otherwise be unwilling licensees. Demonstrating the point, a recent order from Justice Meade of the High Court in the sprawling Pan Optis/Unwired Planet SEP dispute with Apple provides an outline to the UK’s approach to handling SEP implementers who are unwilling to commit to court-determined FRAND licenses.
Read more
Intellectual Property Viewpoints Thumbnail

PTAB “Overlooks” Rehearing Consequences and Swings the Rehearing Door Wide Open

October 1, 2021 | Blog | By Daniel Weinger, William Meunier, Sean Casey

A recent decision by a Patent Trial and Appeal Board (PTAB) panel in Canadian Solar Inc., et al v. The Solaria Corporation may have opened the door for aggrieved parties to seek rehearing for any reason, rather than the prescribed situation where the panel “misapprehended or overlooked” some issue in an inter partes review (IPR).
Read more
Patent Litigation Viewpoint Thumbnail

Custom Servers Pin Netflix In the Eastern District of Texas

September 30, 2021 | Blog | By Daniel Weinger, Jessica Perry

Patent owners searching for an appropriate venue for cases against alleged infringers may be able to point to the activity of an infringer’s agents, based on a new decision from the Eastern District of Texas. In recommending denial of a Netflix motion to dismiss, Magistrate Judge Payne explained that the nature and extent of Netflix’s relationship with internet service providers (“ISPs”) within the district gives rise to proper venue as a regular and established place of business of Netflix.
Read more
Intellectual Property Viewpoints Thumbnail

Patent Owner Tip #18 for Surviving an Instituted IPR: Defending Depositions

September 23, 2021 | Blog | By Michael Newman, Sean Casey

In our penultimate patent owner tip for surviving an instituted IPR, we turn our discussion to defending the deposition of your expert. At this stage of the proceeding, your Patent Owner Response has been filed, and all the facts and arguments you need have already been developed, including any necessary expert testimony.
Read more
Intellectual Property Viewpoints Thumbnail
In what appears to be a case of first impression, on August 23, 2021 U.S. District Judge John Z. Lee of the United States District Court for the Northern District of Illinois denied a biosimilar applicant’s motion to dismiss a patent infringement suit brought under the Biosimilar Price Competition and Innovation Act (“BPCIA”) against a foreign parent corporation that did not file or sign the relevant abbreviated Biologics License Application (“aBLA”).
Read more
Intellectual Property Viewpoints Thumbnail

When It Isn’t Better Late Than Never: ALJ Reins in on Redesigns First Disclosed in the Last Week of Fact Discovery

September 21, 2021 | Blog | By Michael Renaud, Adam Rizk, Matthew Karambelas, Tianyi Tan

In a recent IAM article, Levelling the playing field in ITC patent cases by identifying redesigns to a set deadline, we commented on best practices for ITC complainants to protect their interests against the nascent uptick of redesign submissions at the tail end of fact discovery. Although reasonable minds can differ as to whether the uptick in motion practice is coincidence or a more troubling sign that some respondents are using late redesign disclosures as a vehicle to put complainants at a disadvantage in fast-paced Section 337 proceedings, such late disclosures undoubtedly prejudice complainants’ ability to fully review and assess such disclosures for possible infringement.
Read more
Intellectual Property Viewpoints Thumbnail

Genus Claims: Foiled again by Written Description

September 16, 2021 | Blog | By Thomas Wintner

In late August of 2021, the Federal Circuit reversed a jury verdict of $1.2 billion in favor of Juno Therapeutics and Sloan Kettering Institute because the jury’s finding that four of the asserted patent claims did not lack adequate written description under 35 U.S.C. § 112 was not supported by substantial evidence.
Read more
Intellectual Property Viewpoints Thumbnail

US Open for FRAND Business: The Fifth Circuit Vindicates Ericsson, Finding that Ericsson’s Offers were FRAND

September 3, 2021 | Blog | By Michael Renaud, Daniel Weinger, Meena Seralathan

The United States FRAND jurisprudence had a recent watershed moment in a decision that is sure to reverberate through the standard essential patent (SEP) world, and specifically SEP litigation in the United States. Earlier this week, a Fifth Circuit panel affirmed a jury verdict that found licensing offers made by Ericsson to HTC for Ericsson’s 4G SEPs complied with Ericsson’s FRAND obligations, the first jury verdict of its kind in the United States.
Read more
Intellectual Property Viewpoints Thumbnail
After an inter partes review (“IPR”) is instituted, a patent owner may move to amend challenged claims to overcome the prior art. Here we provide some further information for patent owners considering ways to amend claims that are challenged in IPR by filing a reissue application or requesting reexamination.
Read more
Sign up to receive email updates from Mintz.
Subscribe Now
International Comparative Legal Guides 2022 Chapter 27

Chapter 27

Explore Other Viewpoints: