Intellectual Property

Viewpoints

Filter by:

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.
Read more

USPTO “Forecloses” on Mortgage Processing Patent under Alice

February 25, 2016 | Blog | By Brad M Scheller

Patent owners continue to face an uphill battle at the Patent Trial and Appeal Board.  According to U.S. Patent Office statistics as of December 31, 2015, a majority (72%) of the 529 Inter Partes Reviews (IPR) proceeding to trial and receiving Final Written Decisions ended in all examined claims being invalidated. 
Read more

Federal Circuit Backs Finding of Inequitable Conduct in Reexamination of Prosthetics Patent

February 25, 2016 | Blog | By Brad M Scheller

The Federal Circuit has affirmed a district court’s awarding of attorneys’ fees to Alps South (Alps) based on inequitable conduct by Ohio Willow Wood (OWW) during reexamination of its patent for gel-coated, cushioned socks that fit over an amputated limb (U.S. Patent No. 5,830,237).
Read more

Federal Circuit Declines to Disturb Established Precedent Regarding the Exhaustion of Patent Rights

February 16, 2016 | Blog | By Andrew DeVoogd

On February 12, 2016, the Federal Circuit Court of Appeals issued a decision confirming two important aspects of the doctrine of patent exhaustion in the anticipated en banc decision in Lexmark Int’l, Inc. v. Impression Prods., Inc., Nos. 14-1617, -1619 (slip op.) (Fed. Cir. Feb. 12, 2016) (“Lexmark”).
Read more

First Monoclonal Antibody Biosimilar in U.S. Gets One Step Closer to FDA Approval

February 10, 2016 | Blog | By Thomas Wintner, Joanne Hawana

Yesterday, the FDA's Arthritis Advisory Committee voted 21-3 to recommend that CT-P13, Celltrion's proposed biosimilar of Janssen Biotech, Inc.'s Remicade® (infliximab) be approved for all indications -- including, among others, Crohn's disease, ulcerative colitis, rheumatoid arthritis (RA), and ankylosing spondylitis (AS).
Read more

Med Tech and Biotech Entrepreneurs - $100k Challenge is OPEN for 5 More Days!

February 2, 2016 | Blog | By William Geary

The University of Massachusetts' Medical Device Development Center (M2D2) has launched the 5th Annual M2D2 $100K Challenge, an opportunity designed to showcase the innovative ideas and entrepreneurial spirit of seed and early-stage biotech and medical technology companies.
Read more

Biosimilars and FDA Regulatory Webinar Recap

February 2, 2016 | Blog | By Joe Rutkowski

Mintz Levin’s Biosimilar webinar series continued this month with Linda Bentley and Joanne Hawana’s Biosimilars FDA/Regulatory Overview presentation on the Biologics Price Competition and Innovation Act (“BPCIA”) and its implementation.
Read more

Pfizer v. Lee: A Patent Term Adjustment Double Standard?

February 1, 2016 | Blog | By Christina Sperry

In Pfizer v. Lee (No. 2015-1265, January 22, 2016), the Federal Circuit upheld the U.S. Patent and Trademark Office’s (USPTO) determination that the toll period for A-type patent term adjustment (PTA) delay stops upon the mailing of a deficient USPTO paper.
Read more

Inphi v. Netlist: Alternative Features Satisfy the Patent Written Description Requirement for a Negative Claim Limitation

February 1, 2016 | Blog | By Christina Sperry, Catherine Xu

It can be tricky to evaluate written description support under 35 U.S.C. § 112 for negative claim limitations since the support may amount to the absence of a feature from an invention that is described positively with respect to what it includes, as opposed to what it does not.
Read more

ClearCorrect: ITC and Patentee Align Submit Petitions for Rehearing En Banc, Asking Federal Circuit to Reconsider Whether the ITC Has Jurisdiction Over Digital Imports

January 29, 2016 | Blog | By Nick Armington, Daniel Weinger

On January 27, 2016, the International Trade Commission (ITC) formally requested a rehearing en banc of a November 10, 2015, Federal Circuit panel decision in ClearCorrect Operating, LLC v. ITC.
Read more

Westlake Services v. Credit Acceptance: PTAB’s Precedential Decision to Apply Estoppel on a Claim-by-Claim Basis

January 25, 2016 | Blog | By William Meunier , Matthew Galica

The Patent Trial and Appeal Board recently designated as precedential its decision in Westlake Services, LLC v. Credit Acceptance Corp., CBM2014-00176, Paper 28 (PTAB May 14, 2015)  addressing the scope of estoppel under 35 U.S.C. § 325(e).
Read more

PTAB Designates Decision Concerning One-Year Statutory Bars As Precedential

January 21, 2016 | Blog | By William Meunier , Nick Armington

Last week, the PTAB designated two recent post-grant proceeding decisions as “precedential,” marking only the second and third time it has designated one of its opinions as binding on all PTAB judges.
Read more

Year in Review: The Most Popular Blog Posts of 2015

January 21, 2016 | Blog | By Christina Sperry

As 2016 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 2015.  According to the many readers of Global IP Matters, hot topics included navigating the waters of U.S. patent prosecution, analyzing Federal Circuit appeals from the International Trade Commission, and handling Japanese patent oppositions.
Read more

USPTO Implementation of AIA Does Not Violate Due Process: Federal Circuit Affirms the PTAB Panel Determining Institution of an IPR can also Issue the Final Written Decision

January 15, 2016 | Blog | By William Meunier

In Ethicon Endo-Surgery, Inc. v. Covidien LP, a 2-1 panel split of the Federal Circuit held that neither the American Invents Act (“AIA”) nor the Constitution precludes the same panel of the Patent Trial & Appeal Board (“PTAB” or “Board”) from both deciding whether to institute an inter partes review (“IPR”) of a challenged U.S. Patent and making the final patentability determination in that IPR.
Read more

Federal Circuit Hears Argument on Personal Jurisdiction in Two Hatch-Waxman Appeals

January 12, 2016 | Blog | By Adam Samansky, Joe Rutkowski

On Monday, January 4, the Court of Appeals for the Federal Circuit heard oral argument in two appeals that may determine what effect the Supreme Court’s Daimler AG v. Bauman decision will have on the exercise of personal jurisdiction over generic pharmaceutical manufacturers in Hatch-Waxman litigation.
Read more

Judge Gilstrap awards Section 285 fees where Plaintiff’s Section 101 positions cross the “threshold of exceptionality.”

January 7, 2016 | Blog | By Michael Newman, Robert Moore

On December 17, 2015, Judge Rodney Gilstrap of the Eastern District of Texas (EDTX) ruled that, in light of Alice Corporation Pty. Ltd. v. CLS Bank International, 134 S. Ct. 2347 (2014) (“Alice”), a plaintiff’s position on the validity of the patent-in-suit under § 101 was “objectively unreasonable” and that the harm to the defendants was compounded by the plaintiff  litigating in “an unreasonable manner[,]” meriting an award of attorneys’ fees under 35 U.S.C. § 285. eDekka LLC v. 3balls.com, Inc.et al., C.A. Nos. 2:15-cv-541 and 2:15-cv-585 (Dec. 17, 2015).
Read more

Reminder - Biosimilars Webinars: A Five-Part Legal and Regulatory Issues Series

January 6, 2016 | Blog | By Terri Shieh-Newton, Joanne Hawana

Join us for the first webinar in our five-part Biologics/Biosimilars series, “Legal and Regulatory Overview” tomorrow, January 7, 2016 at 3:00 PM ET, featuring Terri Shieh-Newton and Joanne Hawana!
Read more

Review of 2015 Federal Circuit Decisions Addressing IPR Claim Construction and Procedural Issues

December 29, 2015 | Blog | By Michael Newman, Nick Armington

2015 was a busy year for post-grant review appeals at the Federal Circuit and produced notable opinions in the areas of claim construction, IPR procedural issues, and the constitutionality of IPRs in general. In 2015, the Federal Circuit reversed the Board’s claim construction in an IPR for the first time, and found that IPRs do not violate Article III and the Seventh Amendment of the Constitution.
Read more

When a Quirk of Copyright Law Creates a Christmas Classic: It’s a Wonderful Life and the Public Domain

December 17, 2015 | Blog | By Lisa Adams

George Bailey stands on a bridge begging for another chance at life. Upon being granted a second chance, he joyously runs home to embrace his family. As the community of Bedford Falls rallies around him and raises funds to save the endangered Building and Loan and George Bailey personally from an unjustified failure, someone proclaims a toast to George Bailey, “the richest man in town.”
Read more

Smartphone Wars – The Supreme Court Awakens: Samsung Files Petition for Certiorari in New Hope to Harmonize Design Patent Law

December 17, 2015 | Blog | By Michael Renaud, Michael Newman

On Monday, in the latest episode of the smartphone wars, Samsung filed a petition for certiorari with the Supreme Court. Samsung is appealing a Federal Circuit decision that upheld a $399 million judgment against Samsung for infringing three of Apple’s design patents.
Read more

Subscribe

Sign up to receive email updates from Mintz.
Subscribe Now
Mintz_Monetization_PDF_blog_button

Infographic: Comprehensive Approach to Patent Monetization

Patent Transactions Promo Button

Focus on Patent Transactions

International Comparative Legal Guides 2022 Chapter 27

International Comparative Legal Guide – Patent

Chapter 27

Viewpoint Editors

Explore Other Viewpoints:

I'm Looking For...