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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).
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Double Check Your Filings, A Cautionary Tale at the PTAB

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.
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Significant 2018 Patent Decisions and a Look Ahead

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.
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Brewery Defeats Trademark Opposition by Conservative Public Figure Phyllis Schlafly

December 18, 2018 | Blog | By Michael Graif, Tiffany Knapp

Relatives of the late conservative political activist, Phyllis Schlafly, lost their appeal to prevent the Saint Louis Brewery, LLC (“the Brewery”) from trademarking the Schlafly name in connection with various beer products on November 26, 2018. 
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CAFC Affirms Prior Jury Verdict Admissible in Upholding $140M Verdict against Time Warner

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”).
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ITC to Review Controversial Apple-Qualcomm Decision

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.
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Efficacy of Preliminary Injunction Against Apple Called into Question

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.
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Developing Methodologies for Resolving FRAND Disputes

December 6, 2018 | Video | By James Wodarski

Jim Wodarski discusses the global reach of SEP portfolios and the developing worldwide consensus among sophisticated intellectual property courts on methodologies for resolving FRAND disputes, specifically citing the decision in TCL v. Ericsson by a United States District Court.
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Judge Applies WesternGeco Principles to Direct Infringement Under 35 U.S.C.§ 271(a)

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). 
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Understanding Priority Claims for U.S. Patent Applications: Part 2

November 27, 2018 | Blog | By Christina Sperry, Elissa Kingsland

This article is second in a two-part series focusing on various issues related to priority claims in U.S. patent applications.  While Part 1 is a general overview of how to make a proper priority claim, this article addresses how to make a timely post-filing priority claim in an application and how to correct an improper priority claim.  Timeliness is crucial to avoid high fees and ensure that an earlier priority date is not lost.  The procedures discussed below are post-America Invents Act (AIA) procedures applicable to applications and issued patents filed on or after March 16, 2013.
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Prosecution Strategies for Avoiding Patent Eligibility Rejections for Diagnostics

November 19, 2018 | Blog | By Ken Jenkins, Jeff Giering

Under the Mayo/Alice test for patent eligibility, answering the questions of whether any particular claim is “directed to” a “judicial exception” without “significantly more” remains in many ways a substantial and unpredictable challenge for U.S. patent applicants in the diagnostic space.  In cases where the detection processes are typically deemed “routine and conventional” (e.g., PCR) and the targets are known (e.g., expression of a known gene), claims must be crafted in ways that avoid rejections for both patent eligibility and anticipation and/or obviousness over the prior art.  The recent PTAB decision in In re Srivastava et al. expressly addresses obviousness in this context, while highlighting a possible strategy for dealing with patent eligibility challenges as well (Appeal 2017-1981, Application 13/974,007, decided October 22, 2018; hereafter “In re Srivastava”).
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European Patent Office Issues New Guidelines on Artificial Intelligence and Machine Learning

November 7, 2018 | Blog | By Michael Renaud, Marguerite McConihe

On November 1, 2018, the European Patent Office (“EPO”) issued new guidelines for the patentability of artificial intelligence (“AI”) and machine learning (“ML”) inventions which indicate that applications within this subject matter may be treated as largely unpatentable. The new guidelines, G-II 3.3.1, provide that AI and ML are “based on computational models and algorithms for classification, clustering, regression and dimensionality reduction, such as neural networks, genetic algorithms, support vector machines, k-means, kernel regression and discriminant analysis.” These “computational models and algorithms” are, according to the guidelines, “per se of an abstract mathematical nature.”
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§102(b) Printed Publication: Unrestricted Distribution at a Trade Show

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.”
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“A New Day” for Amending Claims in Post-Grant Proceedings

October 29, 2018 | Blog | By William Meunier, Daniel Weinger, Matthew Galica

U.S. Patent and Trademark Office Director, Andrei Iancu, recently gave a speech to the American Intellectual Property Law Association where he discussed a new rule proposal aimed at improving the patent amendment process during post-grant proceedings.  Specifically, he informed the audience—and patent practitioners, generally—that the USPTO “will formally publish a notice seeking comments on a new claim amendment process for post grant proceedings.”  The stated purpose of the proposed rule change is to “ensure balance” in post-grant proceedings by making the amendment process “feasible and meaningful” for the owners of challenged patents.  
Viewpoint General
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).
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MintzEdge 101: IP Strategies for Start-ups - Sean Grygiel (Mintz)

October 24, 2018 | Podcast | By Samuel Asher Effron, Sean Grygiel

Sam Effron, a Member in the Mintz Venture Capital & Emerging Companies Practice and co-editor of MintzEdge, sits down with Sean Grygiel, a Member in the Mintz Intellectual Property Practice, to discuss key IP considerations and strategies for new companies.
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District of Delaware Dismisses ANDA Applicant for Lack of Venue under TC Heartland

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.
Viewpoint General

ALJ Cheney Holds that IPR Estoppel Does Not Apply to ITC Investigative Staff

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.
Viewpoint General
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. 
Viewpoint General
As in any technology area, it is important to consider patent protection early in the development of an AI-related invention. However, AI inventions raise a number of particular issues that, if not addressed fully or at the right time, could be fatal to securing U.S. patent protection that would otherwise be available to prevent others from making, using, selling, or importing the invention. This article identifies common pitfalls in getting a patent for AI inventions and provides insights on how to avoid them. These principles apply not only to AI-related inventions, but also to digital health inventions more broadly.

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