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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.
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MintzEdge 101: IP Strategies for Start-ups - Sean Grygiel (Mintz)

October 24, 2018 | Podcast | By Samuel Asher Effron

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

October 18, 2018 | Blog | By Aarti Shah, Andrew DeVoogd, Daniel Weinger

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.
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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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PTAB Adopts the Phillips Claim Construction Standard in AIA Proceedings

October 11, 2018 | Blog | By Brad M Scheller, Daniel Weinger, Courtney Herndon

Today the Patent Trial and Appeal Board announced a final rule changing the claim construction standard for interpreting claims in inter partes review (“IPR”), post-grant review (“PGR”), and covered business method patent (“CBM”) proceedings.  The Board retired the broadest reasonable interpretation (“BRI”) standard in favor of the standard used to construe patent claims in federal court and the International Trade Commission (“ITC”) as articulated in Phillips v. AWH Corp.  In doing so, the Board announced that it will now consider prior constructions, either from a federal district court or the ITC, in construing a claim term in an IPR, PGR, or CBM, where such prior constructions are timely made of record.  This rule change is another positive development for patent owners and should provide for consistent construction of the same term across multiple tribunals going forward.
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ALJ Pender: Apple Infringes, but No Exclusion Order for Qualcomm

October 4, 2018 | Alert | By Michael Renaud, James Wodarski, Aarti Shah, Robert Moore, Marguerite McConihe

Read about an International Trade Commission in which a judge ruled that Apple infringed a valid Qualcomm patent, but recommended against an exclusion order for Qualcomm.
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Recently in Nobel Biocare Services AG v. Instradent USA, Inc., the Federal Circuit affirmed a decision of the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board (“the Board”) in an inter partes review (“IPR”) finding certain claims of U.S. Patent No. 8,714,977 (“the ’977 Patent”), directed to dental implants, unpatentable as anticipated.  The Nobel decision is the latest in a recent line of Federal Circuit cases holding that materials distributed at conferences, trade shows, and meetings are publically available “printed publications” within the meaning of pre-AIA 35 U.S.C. § 102(b).
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PTAB Finds Recycled Art and Advanced State of Parallel District Proceeding Warrant Denial of IPR Trial

September 17, 2018 | Blog | By Peter Snell, Daniel Weinger, Vincent Ferraro

Last week the Patent Trial and Appeal Board (“PTAB”) provided yet another arrow in the patent owner’s quiver for defending against institution of IPRs.  In NHK International Corp. v. Intri-Plex Technologies, Inc., IPR2018-00752, the PTAB exercised its discretion under 35 U.S.C. § 325(d) and denied institution because the asserted art was already considered during the original examination of the patent.  The PTAB also found that denial was warranted under 35 U.S.C. § 314(a) in light of the additional factor that a district court trial on the same patent was imminent. 
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RPX Requests en banc Review in Applications in Internet Time v. RPX

September 13, 2018 | Blog | By Peter Snell, Daniel Weinger, Kara E. Grogan

On September 7, 2018, RPX Corporation (“RPX”) requested a rehearing en banc of the Federal Circuit’s July 2018 Applications in Internet Time, LLC v. RPX Corp. decision, which 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”).
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PTAB Denies Institution of IPR after Successive Petitions by Unrelated Co-Defendants

September 11, 2018 | Blog | By Brad M Scheller, Daniel Weinger, Courtney Herndon

Last week, the Patent Trial and Appeal Board (the “Board”) denied a second challenge to a patent where the petitioners were co-respondents in an ITC investigation. 
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Six months later, and more than 2.5 years after service of the complaint on Activision, Bungie filed IPRs challenging Worlds’ patents.
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Massachusetts Adopts Uniform Trade Secrets Act

September 6, 2018 | Blog | By Michael Renaud, Nicholas Armington

On October 1, 2018, Massachusetts will become the 49th state to adopt a version of the Uniform Trade Secrets Act. The version of the UTSA that Massachusetts will adopt bears notable similarities to the Defend Trade Secrets Act, the two year old federal trade secrets statute.
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Not just for crypto – How blockchain technology will affect medical devices

September 4, 2018 | Blog | By Lisa Adams, Linda Azrin, Derek Constantine

Most people are familiar with blockchain technology because of its use in cryptocurrency, but its use is going to be far more widespread than just as a ledger for digital currency. 
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Inventorship

August 27, 2018 | Video | By Ken Jenkins

Ken Jenkins discusses the confusion surrounding inventorship and the need for inventors to maintain proper documentation once the initial inventorship determination is made to protect themselves as their patents gain value.
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Valuable IP Portfolios

August 27, 2018 | Video | By Terri Shieh-Newton

Terri Shieh-Newton explains how a valuable IP portfolio is one that not only protects the company against competitors but also provides reassurances for investors.
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A Sales Agent’s Home Office May Qualify as a Regular and Established Place of Business

August 20, 2018 | Blog | By Andrew DeVoogd, Daniel Weinger, Anthony Faillaci

In our continued post-TC Heartland coverage, the Southern District of New York recently held that an employee’s home office in New York constituted a “regular and established place of business” in the state as required by the patent venue statute, 28 U.S.C. § 1400(b).
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The Patent Trial and Appeal Board (PTAB) issued an August 2018 update to the American Invents Act Trial Practice Guide (the “Updated TPG”).  The Updated TPG incorporates the PTAB’s current practices and provides further explanation of certain aspects of the PTAB’s standard practices to the public. 
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In our continued post-TC Heartland coverage, Judge Gilstrap in the Eastern District of Texas recently held that venue was proper because Google exercises exclusive control over physical servers implicated by the litigation, as well as the physical space within which the server is located and maintained.
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International Trade Commission Clarifies Domestic Industry Requirements in Favor of Patent

August 6, 2018 | Alert | By Michael Renaud, James Wodarski, Aarti Shah, Andrew DeVoogd, Matthew Galica

A recent International Trade Commission decision, Vacuum Cleaning Devices, improves a patent owner’s ability to demonstrate that it possesses a statutorily required “domestic industry” and can therefore obtain relief from the Commission when others infringe its intellectual property. This alert reviews the Vacuum Cleaning Devices ruling, which serves to better align the statutory purpose of the ITC’s domestic industry requirement with contemporary business practices.
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