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Lower Courts Continue to Grapple with Venue in the Wake of In re Micron and In re Cray

December 19, 2017 | Blog | By Andrew DeVoogd, Anthony Faillaci

Further to our ongoing coverage of the post-TC Heartland patent litigation landscape, a pair of recent and interesting cases from Texas and Delaware further evolved this important venue-related jurisprudence.

Federal Circuit Rules that BPCIA Preempts State Law Biosimilars Claims

December 18, 2017 | Blog | By Thomas Wintner, Joe Rutkowski

In an opinion issued on December 14, 2017, the United States Court of Appeals for the Federal Circuit held that the 2010 Biologics Price Competition and Innovation Act (“BPCIA”) preempts the use of state law to penalize biosimilars applicants who fail to disclose information about their abbreviated Biologics License Applications (“aBLAs”) or manufacturing processes as required by 42 U.S.C. § 262(l)(2)(A).

SAS v. Matal – Overview of Oral Arguments in the Supreme Court

December 12, 2017 | Blog | By Adam Samansky, Brad M Scheller, Inna Dahlin

On Monday, November 27, 2017, the Supreme Court heard oral arguments in SAS Institute v. Matal.

Supreme Court Hears Oral Arguments in Oil States Regarding Constitutional Challenge to Inter Partes Review

December 8, 2017 | Blog | By Michael Renaud, Andrew DeVoogd, Chris Duerden

We first covered the Supreme Court’s grant of certiorari in Oil States Energy Servs., LLC v. Greene's Energy Grp., LLC, 137 S. Ct. 2239 (2017), a case with the potential to substantially alter the patent litigation landscape, back in June. On Monday, November 27, 2017 the Court heard oral arguments on whether inter partes review – an adversarial process used by the Patent and Trademark Office (PTO) since September 16, 2012 to analyze the validity of existing patents – violates the Constitution by extinguishing private property rights through a non-Article III forum and without a jury.

Patent Quality Chat: How Is A USPTO Examiner’s Work Product Reviewed?

December 4, 2017 | Blog | By Christina Sperry, John L. Buchanan

In patent prosecution, the feedback loop between interested parties including patent prosecutors, inventors, and in-house counsel helps to provide the best patent applications and office action responses for a high quality issued patent.

PTAB Guidance on Motions to Amend in View of Aqua Products

November 30, 2017 | Blog | By Brad M Scheller, Jinnie Reed

On November 21st, the PTAB issued guidance on motions to amend based on the Federal Circuit’s en banc decision in Aqua Products, Inc. v. Matal, 872 F.3d 1290 (Fed. Cir. 2017).
In a nonprecedential opinion issued on November 13, 2017, the United States Court of Appeals for the Federal Circuit affirmed a district court finding that Apotex’s aBLAs for biosimilar versions of Neulasta® and Neupogen® did not infringe an Amgen protein folding patent.

District Court Denies Motion to Stay Pending Supreme Court Decision in Oil States

November 17, 2017 | Blog | By Andrew DeVoogd, Chris Duerden

In June, we covered the Supreme Court’s grant of certiorari in Oil States Energy Servs., LLC v. Greene's Energy Grp., LLC, 137 S. Ct. 2239 (2017). The Court will decide whether inter partes review – an adversarial process used by the Patent and Trademark Office (PTO) since September 16, 2012 to analyze the validity of existing patents – violates the Constitution by extinguishing private property rights through a non-Article III forum without a jury.

Federal Circuit Affirms Delaware Alice Decision

November 16, 2017 | Blog | By Michael Renaud, Brad M Scheller, Tiffany Knapp

In issuing its precedential decision earlier this month in Two-Way Media v. Comcast, the Federal Circuit affirmed a Delaware district court determination that four data streaming patents were directed to ineligible subject matter pursuant to § 101 and the Alice framework.
On November 15, 2017, the United States Court of Appeals for the Federal Circuit resolved a split among district courts on the question whether the United States Supreme Court’s TC Heartland decision constituted a change in the law, or merely a course-correction to honor preexisting law.

USPTO Publishes New Rule Governing Privilege for Patent Attorneys and Agents

November 14, 2017 | Blog | By Matthew Hurley, Matthew Galica, Anthony Faillaci

Earlier this week, the United States Patent and Trademark Office (“USPTO”) published a new rule governing when privilege exists for communications between clients and their domestic or foreign patent attorneys and patent agents before the Patent Trial and Appeal Board (“PTAB”).
In an interesting development in the post-TC Heartland world, it appears that the Federal Circuit will soon answer the question whether the Supreme Court’s venue decision was a change in the law, or merely a course-correction to honor preexisting law.
In Vecco Instruments Inc. v. SGL Carbon, LLC, No. 17-CV-2217 (E.D.N.Y. Nov. 2, 2017), Judge Pamela Chen in the Eastern District of New York recently granted Vecco’s motion for a preliminary injunction enjoining SGL Carbon.
On November 1, 2017 the U.S. Patent and Trademark Office (USPTO) implemented an expansion of the Collaborative Search Pilot Program (CSP), which began in 2015 and ended earlier in 2017, to expedite prosecution of related applications at the USPTO and the Japanese Patent Office (JPO) or Korean Intellectual Property Office (KIPO).

Apple and Samsung Are Headed Back to the Court Room

October 25, 2017 | Blog | By Andrew DeVoogd, Serge Subach

Following a lengthy and extensive litigation that began in 2011 that culminated in a U.S. Supreme Court decision in December of 2016, smartphone industry titans Apple and Samsung will again find themselves in Federal District Court Judge Lucy Koh’s courtroom on remand to determine appropriate damages for Samsung’s infringement of Apple’s design patents.

Federal Circuit Clarifies the Requirements for a Teaching Away by the Prior Art

October 23, 2017 | Blog | By Adam Samansky, Peter Cuomo, Joe Rutkowski

In a precedential opinion issued on October 11, 2017, the United States Court of Appeals for the Federal Circuit reversed the Patent Trial and Appeals Board’s (“PTAB”) finding of non-obviousness where the prior art taught away from some, but not all, of the embodiments covered by the challenged claims.
Last month, following a jury verdict in federal district court in Delaware awarding Plaintiff Idenix Pharmaceuticals LLC $2.54 billion in damages—“the largest damages verdict ever returned in a patent [infringement] trial”—Chief Judge Leonard Stark denied Idenix’s motion for enhanced damages.

General Plastic Industrial Co. v. Canon Kabushiki Kaisha: PTAB Explains Factors for Follow-On Petitions

October 9, 2017 | Blog | By Brad M Scheller, Peter Cuomo, Inna Dahlin

On September 6, 2017, an expanded panel of the Patent Trial and Appeal Board issued an “informative” decision in General Plastic Industrial Co., Ltd, v. Canon Kabushiki Kaisha setting forth the Board’s framework for analyzing follow-on inter partes review (IPR) petitions.
On September 21, 2017, the Comprehensive Economic and Trade Agreement (CETA) signed between the European Union (EU) and Canada provisionally entered into force in Canada. 

ALJ Shaw: ITC is a Viable Forum for Enforcement of SEPs

October 6, 2017 | Blog | By Michael Renaud, James Wodarski, Aarti Shah, Robert Moore

The public version of ALJ Shaw’s Initial Determination (ID) in U.S. International Trade Commission (ITC) investigation Certain Magnetic Data Storage Tapes and Cartridges Containing the Same, Inv. No. 337-TA-1012 (1012 Investigation), provides important guidance on enforcement of standard-essential patents (SEPs) in the ITC. 
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