Counterproductive and Cost-Increasing Litigation Tactics Are Objectively Unreasonable in Section 285 Attorney Fee Award Analysis
November 20, 2019 | Blog | By Andrew DeVoogd, Kara E. Grogan
Nearly six years ago, the Supreme Court in Octane Fitness v. ICON Health & Fitness promulgated a “totality of the circumstances test” for awarding reasonable attorney fees to the prevailing party in exceptional cases under 35 U.S.C. §285. As lower courts have applied this standard, it has become clear that the motivation and conduct of the losing party is a focal point of the exceptionality analysis. However, two recent decisions emphasize that bad faith arguments and litigation tactics—by both parties and in all stages of litigation—are critical to the exceptionality analysis in Section 285 attorney fee awards.
November 12, 2019 | Blog | By Ken Jenkins, Jeff Giering
On October 30, 2019, the Federal Circuit held that evidence of copying may be used to rebut an obviousness challenge, even if that evidence does not relate to the copying of a specific product. (Liqwd, Inc. v. L’Oreal USA, Inc.; appeal from PGR2017-00012).
Can Infringement Contentions be Amended to Add New Claims Resulting from an Ex Parte Reexam Filed after IPRs Invalidated Some but Not All Claims?
November 5, 2019 | Blog | By Brad M Scheller, Rithika Kulathila
Judge Gilliam of the Northern District of California recently answered this question and provided helpful guidance on the interplay of IPRs, reexaminations and district court litigation. In IXI Mobile (R&D) Ltd., et al., v. Samsung Elec. Co. Ltd. and IXI Mobile (R&D) Ltd., et al. v. Apple Inc., Judge Gilliam denied plaintiffs’ (“IXI”) motion for leave to amend their infringement contentions and asserted claims because IXI was not diligent in identifying new contentions or new accused products.
November 5, 2019 | Blog | By Michael Renaud, James Wodarski, Matthew Galica
The adoption of multiple, standardized technologies looms on the horizon. This presents the challenge of balancing innovator’s intellectual property rights with implementer’s desire for fair access to technology. As more implementers adopt efficient infringement to circumvent this equilibrium altogether, standard-essential patent (“SEP”) licensing disputes have increased.
Federal Circuit Holds Appointment of PTAB Judges Violates the Constitution, Vacates and Remands Final Written Decision
November 4, 2019 | Blog | By Michael Newman, Daniel Weinger, Tiffany Knapp, Courtney Herndon
In a decision with potential far-reaching implications, Arthrex, Inc. v. Smith & Nephew, Inc., the Federal Circuit held Thursday that appointments of Administrative Patent Judges of the Patent Trial and Appeal Board violated the Appointments Clause of the U.S. Constitution.
ITC rejects minimum threshold requirement for domestic industry economic prong and emphasizes the importance of contextual evidence and case-by-case analyses
November 4, 2019 | Blog | By Michael Renaud, Aarti Shah, Andrew DeVoogd, Matthew Karambelas, Nana Liu
In a recent decision clarifying the legal standards of the International Trade Commission’s domestic industry requirement, the Commission has upheld, with modified reasoning, Chief Administrative Law Judge Bullock’s initial determination (“ID”), finding no domestic industry in Certain Carburetors and Products Containing Such Carburetors, Inv. No. 337-TA-1123, Comm’n Op. (Oct. 28, 2019).
October 30, 2019 | Blog | By Michael Renaud, James Wodarski, Matthew Galica
Litigation involving standard-essential patents (“SEPs”) is on the rise. The now longstanding and disturbing impact of efficient infringement by recalcitrant implementers is the predominant cause of the increase.
October 25, 2019 | Blog | By Daniel Weinger, Vincent Ferraro
Earlier this week, the United States Patent and Trademark Office (“USPTO”) proposed rule changes for amending patents in AIA proceedings. The proposed rule changes would apply to inter partes review (“IPR”), post-grant review (“PGR”), and covered business method patent review (“CBM”) (collectively, “post-grant trial”) proceedings before the Patent Trial and Appeal Board (“PTAB”) to make explicit that a patent challenger bears the burden of persuasion regarding motions to amend filed during these proceedings.
Federal Circuit Reverses PTAB Finding Tarceva® Method of Treatment Claims Invalid for Lack of Reasonable Expectation of Success Based on over 99.5% Failure Rate among Treatment Candidates
October 15, 2019 | Blog | By Peter Cuomo, Joe Rutkowski
In a precedential opinion on October 4, 2019, the United States Court of Appeals for the Federal Circuit, in OSI Pharmaceuticals v. Apotex, No. 2018-1925, reversed the Board’s Final Written Decision in an inter partes review (“IPR”) finding that claims of United States Patent No. 6,900,221 (the “‘221 patent”) were invalid as obvious.
October 10, 2019 | Blog | By Adam Samansky, Peter Cuomo, Nana Liu
Recently, in Sanofi-Aventis v. Mylan, 2:17-cv-09105-SRC-CLW, Judge Stanley Chesler of the United States District Court, District of New Jersey, denied a motion by defendant Mylan for summary judgment of invalidity of asserted patent claims that were found to be obvious by the Patent Trial and Appeal Board (“PTAB”).
October 7, 2019 | Blog | By Andrew D. Skale, Justin J. Leisey
During patent prosecution, Examiners often liberally apply the broadest reasonable interpretation standard in rejecting claims. When responding to these rejections, it is important to remember that there are limits to an Examiner’s broadest reasonable interpretation.
September 30, 2019 | Blog | By Terri Shieh-Newton, Marguerite McConihe
Artificial Intelligence (AI) inventions have aided development in nearly every industry, but perhaps none more so than synthetic biology. For synthetic biology researchers, AI has developed into a vital tool to create cutting edge applications.
September 24, 2019 | Blog | By Ken Jenkins, Gali Steinberg-Tatman
On August 29, 2019, the Patent Trial and Appeal Board (PTAB) designated as precedential its January 31, 2019 decision in Cisco Systems, Inc. v. Chrimar Systems, Inc. In Cisco, the PTAB held that 35 U.S.C. § 315(a)(1) bars institution of IPR if the petitioner filed an earlier civil action, even if such action was voluntarily dismissed by the petitioner without prejudice.
September 23, 2019 | Blog | By Michael Renaud, Aarti Shah, Andrew DeVoogd, Matthew Karambelas, Nana Liu
Recently, Chief Administrative Law Judge (“CALJ”) Bullock of the U.S. International Trade Commission (“ITC”), in Certain Carburetors and Products Containing Such Carburetors, Inv. No. 337-TA-1123, Order No. 77, suggested that “significant” or “substantial” domestic industry investments must amount to greater than 5% of domestic industry product sales in the United States.
September 17, 2019 | Blog | By Marc Morley, Michael Renaud, Paul Brockland
Artificial Intelligence (AI) is increasingly becoming important across a diverse spectrum of technologies and businesses. As AI grows in importance in business and technology, so too grows the number of patent applications and the potential for uncertainty. Therefore, the U.S. Patent and Trademark Office (USPTO) must continue to ensure the appropriate balance in the administration of our IP system.
International Trade Commission ALJ Holds that Relying on Pre-Suit Testing Waives Privilege Protection
September 10, 2019 | Blog | By Andrew DeVoogd, Kara E. Grogan
A recent order from International Trade Commission Administrative Law Judge Elliott provides helpful guidance regarding a common ITC discovery dispute: whether a party may withhold from discovery as work product pre-suit test results and methods where those results and methods were relied upon in forming the pleaded allegations of the complaint or to support a party’s contentions.
September 3, 2019 | Blog | By Aarti Shah, Kara E. Grogan
In a recent initial determination, Administrative Law Judge (“ALJ”) Cheney of the U.S. International Trade Commission (“ITC”) held that domestic industry products do not need to be commercially available to satisfy section 337’s domestic industry requirement.
Patent Prosecution and FDA Compliance Expenses May Help Satisfy the ITC’s Domestic Industry Requirement
September 3, 2019 | Blog | By Aarti Shah, Kara E. Grogan
In a recent initial determination, Administrative Law Judge (“ALJ”) Cheney of the U.S. International Trade Commission (“ITC”) provided useful guidance for patentees by reaffirming that there is no categorical rule that patent prosecution expenses cannot be included in the domestic industry analysis at the ITC, and also finding that complainants may rely upon expenses relating to FDA compliance to satisfy the domestic industry requirement.
August 27, 2019 | Blog | By Daniel Weinger, Kara E. Grogan
The PTAB’s Precedential Opinion Panel, colloquially referred to as “the POP,” ruled that the one-year window to file inter partes review (“IPR”) petitions begins once a complaint alleging infringement is served—even if the complaint is defective.
Recent ITC Ruling Highlights Ability of Patentees to Rely on Accused Infringers’ Investments to Satisfy Domestic Industry Requirement and Potential Pitfall of Affirmative Defense
August 27, 2019 | Blog | By Michael Renaud, Aarti Shah, Nana Liu
On July 1, 2019, Administrative Law Judge (“ALJ”) Elliot of the U.S. International Trade Commission (“ITC”) issued a ruling indicating that it may be possible for complainants to rely on respondents’ products to satisfy the ITC’s domestic industry requirement in certain circumstances.
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