Patent Litigation

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The USPTO Re-Explains What “Means” Means

On March 18, 2024, the United States Patent and Trademark Office (USPTO) issued a Memorandum containing guidance to help patent examiners analyze claim language that may be interpreted as “means-plus-function” or “step-plus-function” language under 35 U.S.C. § 112(f). The USPTO said that the Memorandum was not a change in practice for examiners. Sometimes, however, how something … Continue Reading

The USPTO Speaks on Obviousness – Do Patent Practitioners Have an Answer?

The United States Patent and Trademark Office (USPTO) recently published updated guidance emphasizing a very flexible approach to determining obviousness under 35 U.S.C. § 103, consistent with the U.S. Supreme Court’s opinion in KSR v. Teleflex. The guidelines are written for USPTO personnel but combined with the Manual of Patent Examining Procedure (MPEP), they provide … Continue Reading

Who Invented This? The Continuing Importance of Human Ingenuity in Patenting AI Related Inventions

Artificial Intelligence (AI) systems are becoming an increasingly important part of our lives and are affecting almost every industry. In compliance with section 5.2(c)(i) of the President’s October 30, 2023 Executive Order (EO) 14110, titled “Safe, Secure, And Trustworthy Development and Use of Artificial Intelligence (AI)”, the US Patent and Trademark Office (USPTO) has issued … Continue Reading

UK Supreme Court rules on AI and Patent Applications

In a much anticipated judgment, the UK Supreme Court delivered on 20 December 2023 its ruling in the case of Thaler v Comptroller-General of Patents, Designs and Trade Marks (Thaler (Appellant) v Comptroller-General of Patents, Designs and Trademarks (Respondent) – The Supreme Court) on whether an artificial intelligence (AI) system can be named as the … Continue Reading

A Win for Skinny Labels; Insights for Enforcing Use Patents

Most drugs are covered by multiple patents, with initial patents directed broadly to the compound and later patents directed to increasingly narrower uses of the compound. This provides opportunities for the compound to be approved as a generic drug before expiration of all of the patents, based on a “skinny” label – i.e., a label … Continue Reading

Proactive Strategies in IPRs after Allgenesis

A recent Federal Circuit decision, Allgenesis Biotherapeutics Inc. v. Cloudbreak Therapeutics, LLC, provides some interesting insights into patent challenge strategies, and their consequences, when a potentially infringing product is not yet on the market. Allgenesis, which has been developing a pterygium treatment product using nintedanib, filed an inter partes review (IPR) petition to try to … Continue Reading

Patent Linkage Litigation in China: A Two-Year Review

On June 1, 2021, the Fourth Amendment to the Chinese Patent Law became effective. An important part of the amendment is the introduction by Article 76 of the patent linkage system in China – a system for litigation of drug patents prior to market entry of generics, similar to that provided by the Hatch Waxman … Continue Reading

Federal Circuit Holds that Software Plaintiff Bears Evidentiary Burden of Copyrightability Where Defendant’s Evidence Shows Some Elements Not Copyrightable

In a case that could have some lasting impact, the Federal Circuit recently affirmed a 2020 ruling by Judge Rodney Gilstrap in the Eastern District of Texas dismissing claims that a competitor infringed non-literal elements of the plaintiff’s software. Because defendant World Programming Limited (“WPL”) had shown that some elements of plaintiff SAS Institute’s (“SAS”) … Continue Reading

District Court Gatekeeping Responsibility for Expert Witness Testimony to Increase Under Proposed Changes to Federal Rule of Evidence 702

Sister blog Global Investigations and Compliance Review posted a very read-worthy recent blog authored by our colleagues Marisa Darden, Ayako Russell and Jay Thomas. Addressing proposed changes to the Federal Rule of Evidence 702 standards regarding the admissibility of expert witness opinions, the post is a must read for anyone involved in or concerned with … Continue Reading

Rulemaking at the US Patent Office: Does Director Guidance On Discretionary Denials of Review Require Opportunity for Public Comment?

The Federal Circuit has refused to uphold the dismissal of a complaint alleging that the Director of the Patent and Trademark Office (PTO) improperly issued instructions to PTAB judges regarding whether to institute requested patent review proceedings. The complaint alleges that the so-called Fintiv factors – initially set forth in two opinions designated by the … Continue Reading

Reining in The Western District of Texas? Recent Developments Affecting That Court’s Status As A Patent Infringement Filing Hotbed

In a unanimous February 1, 2023 Order, a Federal Circuit panel granted Google LLC’s petition for a writ of mandamus directing the U.S. District Court for the Western District of Texas to vacate its order denying transfer of patent infringement claims to the Northern District of California. As discussed here, this precedential decision signals the … Continue Reading

Putting the Appeals of Both Sides to Bed: PTAB Rulings on the Patentability of Systems and Methods for Adjusting Air Pressure in a Mattress Affirmed

The Federal Circuit recently handed down an informative decision in American National v. Sleep Number Corporation affirming the Patent Trial and Appeal Board’s final decisions in two inter partes reviews finding some claims patentable and some claims not patentable. The claims at issue related to the systems and methods for adjusting pressure in an air … Continue Reading

The Alice Test for Patent Ineligibility in Practice, Part Two: The Federal Circuit Affirms a Dismissal

In a recent post, I discussed a September Federal Circuit decision (Cooperative Entertainment v. Kollective Technology) that reversed a lower court dismissal of a patent infringement case on Section 101 eligibility grounds under the Supreme Court’s 2014 Alice Corp. v. CLS Bank test. Just weeks after that ruling, the Federal Circuit in IBM v. Zillow … Continue Reading

The Alice Test for Patent Ineligibility in Practice: The Federal Circuit Reverses District Court’s Dismissal of an Infringement Case

One of the threshold requirements for obtaining a patent under U.S. law is that the invention is a “new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof…” In other words, the subject matter of the invention must be eligible for patenting. Many courts have used this requirement … Continue Reading

Through the Fire? Not Anymore – European Court of Justice strengthens Rights of Patent Owners in Germany

For many years, German courts would, in principle, only grant a preliminary injunction in a patent case, if the patent in suit had “gone through the fire” in the sense of having survived an adversarial opposition or nullity proceeding at first instance. This case law was based on the consideration that it can be extremely … Continue Reading

Hefty Civil Penalties: Another Reason Patent Owners Should Consider Patent Litigation at the ITC

Powerful remedies, particularly General Exclusion Orders, are often cited as a reason why patent owners should consider asserting their patents at the U.S. International Trade Commission (ITC) under Section 337 of the Tariff Act of 1930 instead of, or in addition to, in U.S. District Court. A recent Federal Circuit decision reaffirms another advantage of … Continue Reading

Yes, You Can Bargain Away Your Right to File IPR Petitions

For the second time in four months, the U.S. Court of Appeals for the Federal Circuit has issued a precedential opinion about forum selection clauses (FSC) in confidentiality agreements. On October 7, 2021, the Federal Circuit issued a precedential opinion in Kannuu Pty Ltd. v. Samsung Electronics Ltd. et al., holding that, in a non-disclosure … Continue Reading

Judge Leonard P. Stark Will Bring a Wealth of Patent Experience to the Federal Circuit

On Wednesday, November 3, 2021, the White House announced President Biden’s nomination of Judge Leonard P. Stark (U.S. District Court for the District of Delaware) to the U.S. Court of Appeals for the Federal Circuit. If approved, Judge Stark will succeed Judge Kathleen M. O’Malley, who recently announced that she will retire in March 2022.… Continue Reading

Federal Circuit Allows Service by Alternative Means Under Rule 4(f)(3) in Patent Cases

Serving a district court complaint for patent infringement on a foreign defendant usually requires compliance with the Hague Convention on Service. A recent Federal Circuit decision, however, endorses alternative options under Federal Rule 4(f)(3) that could significantly simplify the process for plaintiffs and make it more difficult for foreign defendants to avoid service and delay … Continue Reading

Plaintiffs Beware – Disclose all Evidence of Lost Profits Damages During Discovery

In a patent infringement lawsuit, a plaintiff often seeks to recover lost profits damages—the profits that the patent owner would have made but for the competitor’s alleged infringement—instead of a lower reasonable royalty. A plaintiff is not automatically entitled to such damages, though, even upon a finding of infringement. Rather, the patent owner must prove … Continue Reading

Timing is Essential for Filing Interlocutory Appeals — Do Not Wait for All Issues to be Resolved

The Federal Circuit recently dismissed an interlocutory appeal filed by LG Electronics as untimely because LG filed its notice of appeal more than seven months after the district court’s order disposing of all LG post-trial motions except for its post-trial motion on damages. The opinion stands as a lesson to all parties contemplating an appeal … Continue Reading
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