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BPCIA Helps Amgen Gain Dismissal of Genentech Complaint

March 20, 2017 | Blog | By Thomas Wintner

Recently, the U.S. District Court of Delaware dismissed a complaint filed by Genentech under the Biologics Price Competition and Innovation Act (“BPCIA”). The complaint was filed in response to Amgen seeking FDA approval to commercialize a biosimilar version of Genentech’s cancer drug, Avastin®.
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Federal Circuit Reverses PTAB’s Holding of Anticipation Despite an Element Missing from the Prior Art

March 20, 2017 | Blog | By Kongsik Kim, Peter Cuomo

On March 14, 2017, the United States Court of Appeals for the Federal Circuit clarified, in a precedential opinion, that an anticipating reference must supply all of the claim elements, regardless of what a person of skill in the art might envision when reading the reference.
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Federal Circuit Reiterates That Patent Prosecution Disclaimers Must Be “Clear and Unmistakable”

March 16, 2017 | Blog | By Adam Samansky, Peter Cuomo, Joe Rutkowski

On March 3, 2017, the United States Court of Appeals for the Federal Circuit reaffirmed, in a precedential opinion, that prosecution disclaimers may only limit the scope of a claim where the disclaimer is “both clear and unmistakable to one of ordinary skill in the art.”
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Failure to Explain Why Misappropriated Information is a Trade Secret May Lead to Dismissal of a DTSA Complaint With Prejudice

March 7, 2017 | Blog | By Michael Renaud, Nick Armington

A recent decision in the Western District of Kentucky highlights the importance of explaining in a complaint under the Defend Trade Secrets Act why the allegedly misappropriated information qualifies for trade secret protection.
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Approaching an NDA From the Client’s Perspective – A Checklist of General Considerations

March 6, 2017 | Blog | By Thomas Wintner, Robert Moore

Nondisclosure or confidentiality agreements (NDAs) are among the most common documents attorneys draft and review for clients.  They are so common, in fact, that where a client needs to execute a large number of facially distinct but substantively similar NDAs, it may make sense for the client to draft and review these documents itself.
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Federal Circuit Reminds PTAB to Explain its Reasoning

March 1, 2017 | Blog | By Brad M Scheller

The Court of Appeals for the Federal Circuit (the Federal Circuit) has more recently been indicating to the Patent Trial and Appeal Board (the Board) the importance of explaining its reasoning when invalidating patent claims.
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Federal Circuit Clarifies Scope of Covered Business Method Review

February 27, 2017 | Blog | By William Meunier

The Federal Circuit has further clarified the scope of the covered business method (CBM) review program under the America Invents Act (AIA), explaining in Secure Axcess, LLC. v. PNC Bank National Association that in order for patent to be a CBM patent, it is not enough that the claimed subject matter may be used in a financial activity.
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The Defend Trade Secrets Act: Securing Your Trade Secrets in 2017 LIVE Webcast

February 17, 2017 | Blog | By Brad M Scheller, Christina Sperry

As regular readers of this blog will know, our cross-disciplinary Trade Secrets team has been closely monitoring the development of the Defend Trade Secrets Act (DTSA).
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New Rules in the Northern District of California Aim to Encourage Patent Case Settlements

February 8, 2017 | Blog | By Michael Newman, Marguerite McConihe

New rules for patent cases in the Northern District of California will significantly affect litigation and settlement of cases in Silicon Valley’s backyard. Lawyers litigating cases in the district after the January 17, 2017 change should be wary of the new requirements that set the Northern District of California apart.
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PTAB Provides A Possible Roadmap For Patent Owners To Successfully Argue Secondary Considerations Of Nonobvious

February 1, 2017 | Blog | By William Meunier

For just the third time ever, the Patent Trial and Appeals Board (“PTAB” or the “Board”) recently sided with a Patent Owner in an inter partes review (“IPR”) to find that evidence of secondary considerations of non-obviousness compelled rejection of the Petitioner’s invalidity challenges.
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The DTSA and Civil Seizure Under Federal Rule of Civil Procedure 65

January 30, 2017 | Blog | By Michael Renaud, Nick Armington

The Defend Trade Secrets Act (DTSA) civil seizure mechanism provides victims of trade secret theft with a tool to immediately freeze dissemination of stolen proprietary information. Using civil seizure, a court may direct federal marshals to seize property necessary to prevent the promulgation of stolen trade secrets.
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How to Search Like an Examiner With the Scientific and Technical Information Center

January 27, 2017 | Blog | By Lisa Adams

The latest trend in patent examiner prior art searches is pushing examiners to use the Scientific and Technical Information Center (STIC) Program to use more foreign patents and foreign non-patent literature during patent prosecution.
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Beware of the USPTO’s Push for Clarity

January 24, 2017 | Blog | By Lisa Adams

The Clarity of the Record Pilot program is an ongoing and evolving program that is part of an attempt by the U.S. Patent and Trademark Office (USPTO) to produce high-quality patents as part of the Enhanced Patent Quality Initiative (EPQI).
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Highlights of the USPTO Performance and Accountability Report for Fiscal Year 2016

January 23, 2017 | Blog | By Christina Sperry

The U.S. Patent and Trademark Office (USPTO) recently released a Performance and Accountability Report (PAR) for the 2016 fiscal year, evaluating a variety of programs at the USPTO and detailing ongoing goals of the USPTO. 
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European Unified Patent Court Roll-Out Planned For 2017

January 17, 2017 | Blog | By Christina Sperry, Monique Winters Macek

On January 16, 2017, the European Unified Patent Court (UPC) announced that a Preparatory Committee is currently working under an assumption that the Provisional Application Phase (PAP) of the UPC will presumably begin in May 2017, and the UPC can become operational in December 2017.
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Losing IPR Petitioners May Lack Standing To Appeal

January 17, 2017 | Blog | By Michael Renaud, William Meunier

When the Patent Trial and Appeal Board issues a final written decision finding against an IPR Petitioner, can that Petitioner necessarily appeal that adverse decision? In a case of first impression, the Federal Circuit recently answered “no.”
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Supreme Court Declines to Revisit Broad Personal Jurisdiction Over ANDA Filers

January 12, 2017 | Blog | By Adam Samansky, Joe Rutkowski

On Monday, January 9, 2017, the U.S. Supreme Court denied, without comment, Mylan Pharmaceuticals’ petition for certiorari to reverse an opinion by the Court of Appeals for the Federal Circuit, which affirmed a broad scope of personal jurisdiction over generic ANDA filers in patent infringement suits under the Hatch-Waxman Act.
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IP Cases to Watch in 2017

January 12, 2017 | Blog | By Brad M Scheller

The New Year brings excitement and anticipation of changes for the best. Some of the pending patent cases provide us with ample opportunity to expect something new and, if not always very desirable to everybody, at least different.
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Year in Review: The Most Popular Blog Posts of 2016

January 9, 2017 | Blog | By Christina Sperry

As 2017 begins and IP strategies are being developed for the new year, it is a good time to reflect on what IP issues were prominent in 2016. According to the many readers of Global IP Matters, hot topics included navigating the waters of patent prosecution, subject matter eligibility under § 101, and the Defend Trade Secrets Act.
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ClassCo, Inc. v. Apple, Inc.: A Reminder Of Obviousness Analysis Under KSR

January 6, 2017 | Blog | By Brad M Scheller, Anthony Faillaci

In ClassCo, Inc. v. Apple, Inc. the Federal Circuit upheld a decision from the Patent Trial and Appeal Board (“the Board”), which invalidated several claims of ClassCo’s US Patent No. 6,970,695 (“the ’695 patent”) that discussed caller ID technology that would verbally announce the name of an incoming caller before the call is connected.
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