Andrew Williams

Andrew Williams

McDonnell Boehnen Hulbert & Berghoff LLP

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Cutsforth Inc. v. MotivePower, Inc.

Back in January 2002, when this author was near the beginning of his patent law career, the Federal Circuit handed down the In re Sang-Su Lee case. Among other things, this case provided patent practitioners with support for...more

2/1/2016 - Examiners Inter Partes Review Proceedings Obviousness Patent Litigation Patent Trial and Appeal Board Prior Art Remand Vacated

Redline Detection, LLC v. Star Envirotech, Inc. (Fed. Cir. 2015)

The PTAB at the Federal Circuit -- Supplemental Evidence Edition - On New Year's Eve, the Federal Circuit affirmed the PTAB's denial of a motion to submit supplemental evidence pursuant to 37 C.F.R. § 42.123(a),...more

1/21/2016 - Appeals Patent Trial and Appeal Board Patent-Eligible Subject Matter Patents Supplemental Evidence

No Per Se Ethical Violation for "Subject Matter Conflicts"

Maling v. Finnegan, Henderson, Farabow, Garrett & Dunner, LLP - In a case that was watched by the entire patent law community with some fascination, the Supreme Judicial Court of Massachusetts concluded on December 23,...more

1/13/2016 - Conflicts of Interest Dismissals Ethics Patent Prosecution Rules of Professional Conduct

PTAB Update -- PTAB Claim Amendment Practice at the Federal Circuit

In another unsurprising turn, the Federal Circuit affirmed the motion-to-amend practice adopted by the PTAB in IPR proceedings. The majority opinion in Prolitec Inc. v. Scentair Technologies, Inc., authored by Chief Judge...more

12/9/2015 - Anticipation Broadest Reasonable Interpretation Standard Burden of Proof Inter Partes Review Proceedings Motion to Amend Patent Trial and Appeal Board

PTAB Update -- The Constitutionality Edition - MCM Portfolio LLC v. Hewlett-Packard Co. (Fed. Cir. 2015)

In a decision that likely came as no surprise to anyone, the Federal Circuit upheld the constitutionality of IPR proceedings as provided for by the America Invents Act. With an analysis of two pre-1900 Supreme Court cases...more

12/4/2015 - Article III Due Process Ex Partes Reexamination Inter Partes Review Proceedings Patent Infringement Patent Trial and Appeal Board Patents Right to a Jury Seventh Amendment Standing

Rehearing En Banc Granted in The Medicines Company v. Hospira, Inc.

Will The "No Supplier Exception" to the On-Sale Bar Fall? On November 13, 2015, the Federal Circuit granted a petition for rehearing en banc filed in The Medicines Company v. Hospira, Inc. As we previously reported, the...more

11/20/2015 - America Invents Act En Banc Review Hospira On-Sale Bar Pharmaceutical Patents Suppliers

Belden Inc. v. Berk-Tek LLC (Fed. Cir. 2015)

Do you want the good news or the bad news first? Well, the good news is that the Federal Circuit has begun reversing PTAB decisions on the merits for IPR proceedings. To be fair, in the Microsoft case, the Federal Circuit...more

11/19/2015 - Expert Testimony Inter Partes Review Proceedings Motion to Exclude Obviousness Patent Litigation Patent Trial and Appeal Board Reversal

A Closer Look at Dynamic Drinkware, LLC v. National Graphics, Inc.

Last week, we analyzed the Federal Circuit's Dynamic Drinkware, LLC v. National Graphics, Inc. case from early September. In that case, the Federal Circuit held that an IPR petitioner did not adequately demonstrate that an...more

11/5/2015 - Disclosure Effective Filing Date Inter Partes Review Proceedings Patent Infringement Patent Litigation Patents Prior Art Provisional Applications

Dynamic Drinkware, LLC v. National Graphics, Inc. (Fed. Cir. 2015)

It is well accepted that in order to establish that a patent is entitled to claim priority to a previously filed provisional application, it must be shown that the claims of the patent have written description support in the...more

10/28/2015 - Disclosure Inter Partes Review Proceedings Patent Applications Patent Infringement Patent Invalidity Patent Litigation Patent Trial and Appeal Board Patents Prior Art Priority Disputes Provisional Applications Written Descriptions

The Supreme Court to Review Enhanced Damages -- Octane Revisited, or Something Entirely Different?

On October 19, 2015, the Supreme Court granted certiorari in two related cases: Halo Electronics, Inc. v. Pulse Electronics, Inc. (Supreme Court docket number 14-1513) and Stryker Corp. v. Zimmer, Inc. (Supreme Court docket...more

10/20/2015 - Abuse of Process Attorney's Fees Bad Faith Certiorari Corporate Counsel Enhanced Penalties Intellectual Property Protection Non-Practicing Entities Octane Fitness v. ICON Patent Infringement Patent Litigation Patent Trolls Patents SCOTUS Willful Infringement

Achates Reference Publishing, Inc. v. Apple Inc. (Fed. Cir. 2015)

Earlier this week, in the Achates Reference Publishing, Inc. v. Apple Inc. case, the Federal Circuit reaffirmed the holding in In re Cuozzo Speed Techs., LLC that it could not review any decision by the Patent Trial and...more

10/2/2015 - America Invents Act Apple Covered Business Method Proceedings Cuozzo Speed Technologies Inter Partes Review Proceedings Patent Infringement Patent Litigation Patent Trial and Appeal Board Patents Real Party in Interest Versata

Amgen v. Sandoz – Did the Federal Circuit Just Doom the New Biosimilar Approval Pathway?

Congress passed the Biologics Price Competition and Innovation Act (“BPCIA”) in 2009 in an effort to bring biosimilar drug products to market. The goal was for the BPCIA to mimic for biologic drugs the Hatch-Waxman statute...more

9/14/2015 - aBLA Biologics Biosimilars BPCIA Disclosure Requirements FDA Approval Injunctive Relief Notice Requirements Patent Dance Patent Infringement Patent Litigation Patents Pharmaceutical Patents Sandoz v Amgen

Amgen v. Sandoz Update -- En Banc Rehearing Petitions Filed

On July 21, 2015, the Federal Circuit decided the Amgen v. Sandoz appeal in a case of first impression regarding the interpretation of the disclosure and notice provisions of the Biologics Price Competition and Innovation Act...more

9/11/2015 - Amgen Amicus Briefs Biosimilars BPCIA Disclosure Requirements En Banc Review FDA Approval First Impression Notice Requirements Patent Dance Patent Infringement Patent Litigation Patents Petition For Rehearing Pharmaceutical Patents Sandoz Sandoz v Amgen

Single-APJ Institution Pilot Program -- USPTO Requests Written Comments for IPR Proceedings

On August 25, 2015, the United States Patent and Trademark Office published a "Request for Comments on a Proposed Pilot Program Exploring an Alternative Approach to Institution Decisions in Post Grant Administrative Reviews"...more

8/28/2015 - Comment Period Ex Partes Reexamination Federal Pilot Programs Inter Partes Review Proceedings Patent Infringement Patent Litigation Patent Trial and Appeal Board Patents USPTO

PTAB Finally Proposes Rule Amendments: The More Things Change . . .

More than a year ago, then-Deputy Director Michelle K. Lee posted on the Director's Forum Blog that the USPTO was seeking feedback on PTAB trial proceedings established by the Leahy-Smith America Invents Act ("AIA"). The...more

8/20/2015 - America Invents Act Broadest Reasonable Interpretation Standard Claim Construction Duty of Candor Inter Partes Review Proceedings Ministerial Function Patent Owner Preliminary Response Patent Trial and Appeal Board Patents Pleadings Policies and Procedures USPTO

Microsoft Corporation v. Proxyconn, Inc. (Fed. Cir. 2015)

Earlier this week, we noted that parties wishing to challenge IPR Final Written Decisions from the PTAB on appeal to the Federal Circuit would face an uphill challenge. However, even if that challenge is extremely difficult,...more

8/6/2015 - Broadest Reasonable Interpretation Standard Claim Construction Inter Partes Review Proceedings Microsoft Motion to Amend Patent Infringement Patent Invalidity Patent Litigation Patent Trial and Appeal Board Patent-Eligible Subject Matter Patents Petition For Rehearing Prior Art

Trustees of Columbia University v. Illumina, Inc. (Fed Cir. 2015)

One of the first IPR petitions ever filed, IPR2012-0006, was related to biotechnology -- specifically DNA sequencing. Illumina, Inc. filed that petition, and two others, IPR2012-00007 and IPR2013-00011, against patents owned...more

8/4/2015 - DNA Inter Partes Review Proceedings Obviousness Patent Infringement Patent Litigation Patent Trial and Appeal Board Patents Prior Art

"Don't Stop the Dance"[*] -- The Dissents-in-Part from Amgen v. Sandoz

As we have been reporting this week, the Federal Circuit handed down its decision in Amgen Inc. v. Sandoz Inc. -- a case of first impression relating to the Biologics Price Competition and Innovation Act ("BPCIA") for...more

7/24/2015 - aBLA Amgen Biosimilars BPCIA FDA FDA Approval Notice Requirements Patent Applications Patent Infringement Patent Litigation Patents Pharmaceutical Industry Pharmaceutical Patents Preliminary Injunctions Prescription Drugs Sandoz Sandoz v Amgen

Should the Federal Circuit Be Reviewing Any Part of the Decision to Institute? -- The Versata Dissent-in-part

As we reported earlier, the Federal Circuit recently affirmed the PTAB's Final Written Decision in the Versata Development Group v. SAP America, Inc. case -- the first appeal under the covered business method ("CBM") patent...more

7/17/2015 - America Invents Act Appeals Covered Business Method Patents Covered Business Method Proceedings Cuozzo Speed Technologies Patent Infringement Patent Invalidity Patent Litigation Patent Trial and Appeal Board Patents Post-Grant Review

Federal Circuit Tackles Claim Construction Review under New Standard

The More Things Change (Lighting Ballast Control LLC v. Philips Electronics North America), the More They Stay the Same (Teva Pharmaceuticals USA, Inc. v. Sandoz Inc.) - On June 18, 2015, the Federal Circuit handed down...more

6/26/2015 - Claim Construction Nautilus Inc. v. Biosig Instruments Patent Litigation Patents Pharmaceutical Industry Pharmaceutical Patents Prescription Drugs Sandoz SCOTUS Teva Pharmaceuticals Teva v Sandoz

Amgen v. Sandoz -- Federal Circuit Oral Argument

The Federal Circuit heard oral arguments in the Amgen v. Sandoz case on Wednesday, June 3, 2015. The three judges on the panel were Judge Newman, Judge Lourie, and Judge Chen. This case is on appeal from the U.S. District...more

6/8/2015 - Amgen Biologics Biologics Price Competition and Innovation Act of 2009 Biosimilars Patents Pharmaceutical Industry Pharmaceutical Patents Sandoz Sandoz v Amgen

BIO International Convention 2015 Preview - BIO and Biosimilars

The 2015 BIO International Convention begins in two weeks in Philadelphia. For the past few years, we have provided a series of previews with the goal of making the large amount of information and opportunities available at...more

6/3/2015 - Amgen Biologics Biologics Price Competition and Innovation Act of 2009 Biosimilars Biotechnology Patents Pharmaceutical Industry Pharmaceutical Patents Sandoz Sandoz v Amgen

Koepsell and Noonan on Gene Patenting

In 2009, the first edition of Dr. David Koepsell's book "Who Owns You: The Corporate Gold Rush to Patent Your Genes" was published. With the second edition of his text about to be published, Dr. Koepsell allowed Patent Docs...more

5/29/2015 - BRCA DNA Gene Patenting Myriad Myriad-Mayo Patent-Eligible Subject Matter Patents

Final "Ministerial" Rule Amendments for Practice Before the PTAB

On May 19, 2015, the U.S. Patent and Trademark Office published its first "Final Rules" package of amendments to the Rule of Practice before the Patent Trial and Appeal Board ("PTAB"). Keeping with Director Lee's...more

5/21/2015 - America Invents Act Patent Applications Patent Trial and Appeal Board Patents USPTO

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