Chief Judge Stark granted a defendant’s Rule 12(c) motion for judgment on the pleadings based on non-infringement, holding that plaintiff’s patent term extension (PTE) did not extend to the accused product because the PTE was...more
On January 15, 2020, the United States and China signed a Phase 1 trade agreement (the “Agreement”). The Agreement addresses a broad range of economic issues including intellectual property, agriculture, financial markets,...more
The Federal Circuit rejected a patent owner’s time-bar challenge to an inter partes review (IPR) proceeding, holding that the patent owner failed to provide sufficient details to establish proper service of a complaint for...more
Although a valid license can provide a complete defense to patent infringement, the tangled web created when the defense is predicated on a sublicensee’s rights following bankruptcy of the sublicensor may preclude resolution...more
In Arthrex, Inc. v. Smith & Nephew, Inc., the Federal Circuit held that appointment of Administrative Patent Judges (APJs) by the Secretary of Commerce violates the Appointments Clause of the U.S. Constitution. The court then...more
11/4/2019
/ Administrative Patent Judges ,
Appointments Clause ,
Constitutional Challenges ,
Final Written Decisions ,
Inter Partes Review (IPR) Proceeding ,
Judicial Appointments ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Power of Appointment ,
Remand ,
Removal ,
Secretary of Commerce ,
Vacated
The Federal Circuit vacated a PTAB decision invalidating all challenged claims of U.S. Patent No. 8,908,842 (’842 Patent) and ordered the PTAB to reconsider whether the patent should have been disqualified from covered...more
10/17/2019
/ America Invents Act ,
Claim Construction ,
Claim Limitations ,
Covered Business Method Patents ,
Covered Business Method Proceedings ,
Patent Trial and Appeal Board ,
Patent-Eligible Subject Matter ,
Patents ,
Prior Art ,
Remand ,
Section 101 ,
Section 103 ,
Technology
The Patent Trial and Appeal Board has granted in part a Patent Owner’s motion to strike Petitioner’s Reply for improperly raising new arguments and citing new evidence. The Board, however, declined to throw out the entirety...more
10/14/2019
/ Expert Testimony ,
Inter Partes Review (IPR) Proceeding ,
Motion To Strike ,
Obviousness ,
Patent Litigation ,
Patent Prosecution History ,
Patent Trial and Appeal Board ,
Patents ,
Petitioner Reply Briefs ,
Prior Art ,
SAS Institute Inc. v Iancu ,
State of the Art Defense
The Federal Circuit ruled that statutory disclaimer terminates the case or controversy between the parties in an infringement suit as to those claims, and immediately deprives the district court of the authority to take...more
9/9/2019
/ Appeals ,
Claim Preclusion ,
Disclaimers ,
Judicial Authority ,
Patent Infringement ,
Patent Invalidity ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Pharmaceutical Patents ,
Vacated
The Federal Circuit affirmed a district court decision barring Amgen from asserting an infringement claim under the doctrine of equivalents against Coherus Biosciences because Amgen disclaimed all combinations not identified...more
The Federal Circuit vacated a PTAB decision invalidating claims of U.S. Patent No. 6,212,079 (the “’079 Patent”) on the grounds that the inter partes review (IPR) petition was time-barred as a result of a merger between the...more
The Federal Circuit vacated and remanded a decision by the District Court for the Northern District of California when it failed to consider joining the patent owner before dismissing a case in which the licensee possessed...more
6/25/2019
/ Article III ,
Dismissals ,
Exclusive Licenses ,
FRCP 19 ,
Joinder ,
Patent Infringement ,
Patent Litigation ,
Patent Ownership ,
Patents ,
Precedential Opinion ,
Remand ,
Standing ,
Subject Matter Jurisdiction ,
Transfer of Rights ,
Vacated
The Federal Circuit recently upheld a district court’s decision to tax a patent infringement plaintiff with its opponent’s attorneys’ fees based on an inadequate presuit investigation into infringement, even though the patent...more
In Limestone Memory Systems LLC v. Micron Technology, Inc. et al., the Discovery Master ruled that, under 9th Circuit law, pre-suit, patent analysis documents qualified for immunity from discovery under the work product...more
4/18/2019
/ Acquisitions ,
Attorney-Client Privilege ,
Discovery ,
Discovery Disputes ,
Document Productions ,
Dual Purpose ,
Immunity ,
Intellectual Property Protection ,
Litigation Strategies ,
Patent Litigation ,
Patents ,
Pre-Suit Investigation ,
Supplemental Evidence ,
Work-Product Doctrine
The Federal Circuit reversed an inter partes review (IPR) decision holding that the Patent Trial and Appeal Board (the “Board”) incorrectly applied the standard for an inventor to prove diligence in reducing the invention to...more
In Amerigen Pharmaceuticals Limited v. UCB Pharma GmbH, generic drug manufacturer Amerigen appealed a decision of the Patent Trial & Appeal Board finding UCB’s patent to certain chemical derivatives of diphenylpropylamines...more
1/28/2019
/ Abbreviated New Drug Application (ANDA) ,
Appeals ,
Article III ,
Generic Drugs ,
Intellectual Property Protection ,
Inter Partes Review (IPR) Proceeding ,
Obviousness ,
Patent Infringement ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Pharmaceutical Industry ,
Pharmaceutical Patents ,
Prescription Drugs ,
Standing
A district court in California has granted-in-part a Plaintiff’s motion for summary judgment of no invalidity under 35 U.S.C. § 103 due to inter partes review (IPR) estoppel. During the pendency of the litigation, Defendants...more
1/14/2019
/ Estoppel ,
Final Written Decisions ,
Inter Partes Review (IPR) Proceeding ,
Motion for Summary Judgment ,
Obviousness ,
Patent Invalidity ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patent-Eligible Subject Matter ,
Patents ,
Prior Art
The Federal Circuit has affirmed the final written decisions of a Patent Trial and Appeal Board (the “Board”) panel in six related inter partes review (IPR) proceedings. The Board held in those proceedings that (1) a...more
The Federal Circuit recently affirmed a decision from the District Court for the Northern District of California granting appellee Cepheid’s summary judgment motion against appellant Roche Molecular Systems (“Roche”) and held...more
The Federal Circuit has reversed a decision by the Patent Trial and Appeal Board (PTAB) that certain claims of U.S. Patent No. 8,865,921 (the “’921 Patent”) were not shown to be obvious, finding that the PTAB applied the...more
9/28/2018
/ Article III ,
Burden-Shifting ,
Obviousness ,
Patent Infringement ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Prior Art ,
Rebuttable Presumptions ,
Reversal ,
Standing
On September 10, 2018, the Federal Circuit affirmed a decision by the Patent Trial and Appeal Board (PTAB) determining that there was no interference in fact between the University of California’s (“UC”) U.S. Patent...more
9/24/2018
/ Appeals ,
CRISPR ,
Interference Claims ,
Life Sciences ,
Nonobvious ,
Patent Applications ,
Patent Litigation ,
Patent Ownership ,
Patent Trial and Appeal Board ,
Patents ,
Prior Art ,
Reaffirmation ,
Standard of Review ,
Substantial Evidence Standard ,
University of California
Earlier this month, the Federal Circuit dismissed for lack of standing an appeal filed by an inter partes review (IPR) petitioner of a final written decision issued by the Patent Trial and Appeal Board (PTAB) that held two...more
8/30/2018
/ Appeals ,
Article III ,
Dismissals ,
Final Written Decisions ,
Injury-in-Fact ,
Inter Partes Review (IPR) Proceeding ,
Obviousness ,
Patent Infringement ,
Patent Invalidity ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Petition for Review ,
Prior Art ,
Standing
The Federal Circuit ruled that when a defendant is incorporated in a state that has multiple judicial districts, the defendant will reside in only one of the districts for venue purposes under the patent venue statute, 28...more
The District Court for the Central District of California recently found that plaintiff Akeso Health Sciences, LLC’s 10-year delay in filing its patent infringement claims justified granting defendant Designs for Health,...more
• The Supreme Court in Oil States v. Greene’s Energy ruled 7-2 that cancellation of patent claims in an inter partes review does not violate either Article III or the Seventh Amendment of the Constitution.
• In SAS...more
5/1/2018
/ America Invents Act ,
Article III ,
Constitutional Challenges ,
Inter Partes Review (IPR) Proceeding ,
Oil States Energy Services v Greene's Energy Group ,
Patent Trial and Appeal Board ,
Patents ,
Public Rights Doctrine ,
SAS Institute Inc. v Iancu ,
SCOTUS ,
Seventh Amendment ,
USPTO
On April 28, 2017, the District Court for the District of Delaware denied AVM Technologies’ motion for summary judgment because Intel’s non infringement defense based on the reverse doctrine of equivalents requires the Court...more