A recent Federal Circuit decision has re-affirmed prior guidance on the pleading requirements for a plaintiff alleging patent infringement. The decision was issued in Bot M8 LLC v. Sony Corp. of Am., Case No. 2020-2218, on July 13, 2021. In short, while a plaintiff need not prove its case at the pleading stage, a plaintiff … Continue Reading
In United States v Arthrex, the Supreme Court held that 35 U.S.C. §6(c), which sets forth the authority of Patent Trial & Appeal Board (“PTAB”) Administrative Patent Judges (“APJs”), is unconstitutional because APJs effectively wield the power of principal officers (who require Senate confirmation) while being appointed as inferior officers (who do not require Senate confirmation) … Continue Reading
Much of the discussion about the Federal Circuit’s precedential opinion in Yu et al. v. Apple, Inc. et al. has focused on the perceived confusion and dysfunction of U.S. patent law that invalidates a claim directed to an “improved digital camera” as a patent-ineligible “abstract idea.” After delving into the underlying record, this author posits … Continue Reading
On June 21, 2021, in United States v. Arthrex, the United States Supreme Court ruled that Patent Trial & Appeal Board (“PTAB”) Administrative Patent Judges (“APJs”) are unconstitutionally appointed because they effectively wield the power of principal officers while being appointed as inferior officers. 594 U.S. ____ (2021).… Continue Reading
The Federal Circuit’s recent opinion in Pacific Biosciences of California, Inc. v Oxford Nanopore Technologies, Inc. et al. reminds us that new trial motions are hard to win, even when the adversary violates a pretrial motion in limine (MIL) order. Rather, the district court judge’s curative instructions and procedures to avoid future violations of a … Continue Reading
With its recent decision in Trimble Inc. v. PerDiemCo LLC, the Federal Circuit has opened the door for declaratory judgment actions a bit wider. The Court reversed the Northern District of California’s dismissal of a patent declaratory relief action based on lack of personal jurisdiction, and limited the scope previously articulated by its 1998 decision … Continue Reading
In patent infringement cases involving consumer electronics and the like, the accused instrumentality oftentimes includes components the accused infringer obtained from third-party suppliers. To prove infringement, the patent owner may need discovery from the third party, such as source code, and that discovery would in turn be relied upon by the patent owner’s testifying expert. … Continue Reading
The Patent Trial and Appeal Board (PTAB) is an administrative law body of the US Patent and Trademark Office (USTPO) that determines disputes over the issuance, reissuance, and cancellation of patent claims. The PTAB has become well known to patent litigants since the implementation in 2012 of new proceedings, including Inter Partes Review (IPR), for … Continue Reading
In 2020, the PTAB increasingly denied otherwise meritorious petitions for review under its discretionary authority, as my partner Steve Auvil and I recently discussed. Many such denials were made in view of co-pending litigation under the so-called Fintiv factors adopted last May. The reaction to the PTAB’s approach was vocal and divided, and the USPTO … Continue Reading
On March 11, 2021, the Federal Circuit issued a precedential decision in In re PTAB of Trustees of the Leland Stanford Junior University affirming a decision by the Patent Trial and Appeal Board (PTAB) to maintain the examiner’s rejection of claims involving analysis of genetic data to determine inheritance. The Federal Circuit found that the … Continue Reading
Back in July and December 2020, we wrote about the seeming rise in allegations of infringement allegations under the doctrine of equivalents (DOE) in life sciences cases. We noted that in those recent cases the Federal Circuit provided in-depth analyses of the application of DOE, prosecution history estoppel, and the various other limits on the … Continue Reading
On December 21, 2020, the US Patent and Trademark Office (Office) published final rules in the Federal Register, implementing the decision in Hunting Titan, Inc. v Dynaenergetics Europe GMBH as follows regarding motions to amend in inter partes review (IPR) and post-grant review (PGR) proceedings: The patent owner bears the burden of persuasion to show, … Continue Reading
On October 13, 2020, the U.S. Supreme Court agreed to take up the question of the constitutionality of the Patent Trial and Appeal Board (PTAB) under the America Invents Act (AIA). The Supreme Court will review the decision of the Court of Appeals for the Federal Circuit in what has become well known as the … Continue Reading
On August 27, 2020, the Federal Circuit issued a decision in Baxalta Inc. v. Genentech, Inc. overturning the District Court’s ruling that Genentech did not infringe the claims of US Patent No. 7,033,590 and remanded for further proceedings. The Federal Circuit’s decision was based on its finding that the District Court’s claim construction was erroneous … Continue Reading
In Godo Kaisha IP Bridge 1 v. TCL Commun. Tech. Holdings Ltd.,[1] the Federal Circuit definitively answered the question: “Who determines the standard-essentiality of the patent claims at issue—the court, as part of claim construction, or the jury, as part of its infringement analysis?” According to this precedential decision authored by Judge Kathleen O’Malley: “Where … Continue Reading
On July 31, 2020, the U.S. Court of Appeals for the Federal Circuit issued a modified and reissued decision[1] (American Axle II) of its earlier October 3, 2019 decision[2] (American Axle I) in response to a combined petition for panel rehearing and hearing en banc concerning patent eligibility under 35 U.S.C. § 101. At issue were … Continue Reading
In the U.S., patent ownership vests with inventors, and each inventor can exploit their rights without accounting to the other. Neglecting to identify the true inventors of a claimed invention, and obtain assignments of their rights, can create chaos. This is what happened in Dana-Farber Cancer Institute, Inc. v. Ono Pharmaceutical (Fed. Circ., 2020), where … Continue Reading
On July 13, 2020, the Patent Trial and Appeal Board (PTAB or Board) designated as informative two opinions applying its now precedential Apple Inc. v. Fintiv, Inc. opinion, which set forth factors governing the exercise of the PTAB’s discretion to deny institution of a post-issuance proceeding. In these two informative opinions, Apple Inc. v. Fintiv, … Continue Reading
Since Egyptian Goddess, Inc. v. Swisa, Inc., the sole test for determining whether a design patent has been infringed is the ordinary observer test. Under this test, “if, in the eye of an ordinary observer, giving such attention as a purchaser usually gives, two designs are substantially the same, if the resemblance is such as … Continue Reading
On June 15, 2020, the Supreme Court denied a petition for certiorari from the Federal Circuit’s 2019 Eli Lilly & Co. v. Hospira, Inc. opinion affirming infringement under the doctrine of equivalents (DOE). In doing so, the Supreme Court put to rest a more than decade-long dispute over attempts to market a generic version of … Continue Reading
On July 6, 2020, in Hunting Titan, Inc. v. Dynaenergetics Europe GMBH, a Precedential Opinion Panel (POP) of the Patent Trial and Appeal Board (PTAB or Board) granted a patent owner’s motion to amend, after the Board denied the motion in an August 2019 Final Written Decision. This was only the fourth such decision since … Continue Reading
Normally, a branded bio/pharm company is pleased to escape an inter partes review (IPR) unscathed. Doubly so when the challenger moves voluntarily to dismiss its appeal. So what happened in Amneal Pharms. LLC v. Almirall, LLC, No. 20-1106, to cause Almirall to insist on receiving its attorney fees for a mere month of work before … Continue Reading
In April 2020, the Supreme Court of the People’s Republic of China published the amended draft Provisions concerning interpretation of certain norms of the patent law and its implementing regulations about the administrative litigation of patent rejections and invalidations.[1] The Provisions offer the Supreme People’s Court the opportunity to address new issues and matters not … Continue Reading
Inventors and lawyers — both in-house and firm counsel — involved in the prosecution of patents have a duty of candor to the US Patent Office, and breaching that duty renders patents unenforceable for inequitable conduct. Once common in litigation, allegations of inequitable conduct faced a more stringent review after the Federal Circuit’s decision in … Continue Reading
