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Not Obvious to Combine for a Person of Ordinary Skill in the Art (POSITA)
May 3, 2016 | Blog | By Michael Van Loy, Monique Winters Macek
Summary: Appellant appealed to the Patent Trial and Appeal Board (“Board”) an obviousness rejection to claims directed to a user interface that displays currency trading information.
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Between a Rock and a Hard Place: Federal Circuit Says Its Required to Accord the PTAB Deference Until Instructed Otherwise by SCOTUS or Congress
April 27, 2016 | Blog | By Brad M Scheller
On Tuesday, April 26, 2016, the Federal Circuit issued an order denying a petition filed by Merck & Cie for rehearing en banc of an Inter Partes Review (“IPR”) final written decision by the Patent Trial and Appeal Board holding several Merck patents invalid as obvious.
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Failure to Update Infringement Contentions with New Reexamination Claims Fatal for Patentee
April 25, 2016 | Blog | By Brad M Scheller
On April 22, 2016, a three judge panel of the United States Court of Appeals for the Federal Circuit, consisting of Judges Prost, Dyk and O’Malley, affirmed a district court’s decision to dismiss as moot a patent case involving only cancelled claims.
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Key Lessons from Patent Litigation for Drafting and Prosecuting Utility Patent Applications
April 15, 2016 | Blog | By Fred Hernandez, Gurneet Singh
In almost every U.S. patent suit, the patentee’s counsel considers how the case could have been facilitated had the patent at issue been drafted and prosecuted differently. These considerations demonstrate that patents should be drafted and prosecuted with an eye toward the possibility of litigation.
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Federal Circuit Decides Not to Rehear ClearCorrect Operating, LLC v. ITC, Finding the ITC Does Not Have Jurisdiction over Digital Imports
April 6, 2016 | Blog | By Nick Armington
On March 31, 2016, in a blow to the software and entertainment industries, the Federal Circuit denied the International Trade Commission’s (“ITC”) request for a rehearing en banc of the Federal Circuit’s November 10, 2015 decision in ClearCorrect Operating, LLC v. ITC, in which the Federal Circuit found that the ITC’s jurisdiction was limited to “material things” and did not include the ability to bar digital imports.
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Four Reasons to File an RCE with a Request to Suspend Processing
March 29, 2016 | Blog | By Christina Sperry
The U.S. Patent and Trademark Office (USPTO) allows a Request for Continued Examination (RCE) to be filed with a request to suspend processing of the RCE for up to 3 months, in accordance with 37 CFR 1.103(c).
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Supreme Court Decides to Hear Samsung v. Apple, Appears Ready to Weigh-In on Patent Damage Calculations
March 28, 2016 | Blog
This week, in Samsung Electronics Co. v. Apple Inc., No. 15-777, the Supreme Court granted Samsung’s petition for certiorari and agreed to hear the case about Apple’s smartphone design patents in its upcoming term.
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Federal Circuit Finds Personal Jurisdiction over Mylan in Two Hatch-Waxman Appeals
March 24, 2016 | Blog | By Adam Samansky, Joe Rutkowski
On Friday, March 18, the Court of Appeals for the Federal Circuit affirmed two District of Delaware rulings that non-resident defendant generic ANDA filer, Mylan, is subject to personal jurisdiction in two Hatch-Waxman suits filed in the state.
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Maintaining a Wall Around U.S. Intellectual Property: Federal Circuit says Disputes over U.S. Patents, Trademarks and Copyrights should be Decided by U.S. Courts
March 23, 2016 | Blog | By Brad M Scheller
The Federal Circuit rejected an attempt by accused infringers of U.S. intellectual property rights to have claims litigated in a foreign country in Halo Creative & Design Ltd. v. Comptoir Des Indes, Inc., No. 15-1375 (Fed. Cir. Mar. 14, 2016).
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PTAB Cannot Rely on Key Factual Assertions First Made at Oral Argument—Patent Owners are Entitled to Notice of and a Fair Opportunity to Meet All Grounds
March 18, 2016 | Blog | By Brad M Scheller
This week the Federal Circuit handed a positive development to Patent Owners working to keep their patent rights before the Patent Trial and Appeal Board.
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Could the Eastern District of Texas’s Reign Come to an End?
March 17, 2016 | Blog | By Brad M Scheller, Robert Moore, Serge Subach
It has become a patent litigation trope, discussed at every Silicon Valley water cooler, that patent litigation is broken because all patent cases are tried in the plaintiff-friendly Eastern District of Texas. While this reputation is arguably undeserved, the Eastern District of Texas does end up with the majority of patent cases.
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What are the USPTO’s Patent Plans for Fiscal Year 2017?
March 14, 2016 | Blog | By Christina Sperry
The U.S. Patent and Trademark Office (USPTO) explains several patent prosecution trends, goals, and programs to justify proposed spending of its collected fees in its recently-issued Fiscal Year 2017 Congressional Justification report.
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BPCIA Patent Litigation Webinar Recap
March 11, 2016 | Blog | By Thomas Wintner, Joe Rutkowski, Matthew Show
Our Biosimilar webinar series continued this month with Tom Wintner’s BPCIA Patent Litigation presentation. Tom discussed the general framework of litigation under the Biologics Price Competition and Innovation Act (“BPCIA”), including the “patent dance” information exchange under 42 U.S.C. §262(l), and three case studies that inform our current understanding of emerging judicial interpretation of BPCIA requirements.
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The Federal Circuit Newly Recognizes Patent-Agent Privilege
March 11, 2016 | Blog | By Christina Sperry
On March 7, 2016, the Court of Appeals for the Federal Circuit recognized “a patent-agent privilege extending to communications with non-attorney patent agents when those agents are acting within the agent’s authorized practice of law before the Patent Office.”
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In Daubert Ruling Excluding Both Parties’ Damages Experts, Judge Andrews Rejects FRAND Portfolio Rate as Ceiling on Reasonable Royalty, and Finds Use of Surveys Not Properly Tied to Relevant Technology
March 3, 2016 | Blog | By Robert Moore
On February 25, 2016, Judge Richard Andrews granted the parties’ cross-motions to exclude both sides’ damages experts in M2M Solutions LLC v. Motorola Solutions, Inc., C.A. No. 12-33-RG.
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Kyle Bass’ Another Three IPRs: Targeting Anacor
March 2, 2016 | Blog | By Christina Sperry
Kyle Bass continues to make waves throughout the pharmaceutical industry. Since Bass founded Coalition for Affordable Drugs X LLC (“CFAD”) to challenge pharmaceutical patents, CFAD has filed over three dozen petitions as of this date with the Patent Trial and Appeal Board ( “PTAB”) of the U.S. Patent and Trademark Office ( “Office”) seeking to institute inter partes review (“IPR”) proceedings to invalidate a number of pharmaceutical patents.
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Design Patents – Unlocking the Value of The User Experience
March 1, 2016 | Blog
The oft-overlooked design patent has seen somewhat of a revival recently (at least in the media) ever since a jury in California awarded Apple $399 million in damages — i.e., all Samsung profits from the sale of several of its smartphone and tablet devices — for Samsung’s infringement of three Apple design patents in Apple, Inc., v. Samsung Electronics Co., Ltd.
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William B. Kezer Joins Mintz's IP Practice
February 29, 2016 | Blog | By Michael Renaud, Matthew Hurley
We are excited to announce the arrival of Bill Kezer, PhD, the newest Member in our Intellectual Property Practice. Bill joins our team in San Francisco, where he deepens our bench in the chemical and pharmaceutical spaces.
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Viewpoint Editors
Brad M. Scheller
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Christina Sperry
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