News & Analysis as of

Patent Ownership

A CRISPR patent pool – one step closer to reality?

by Allen & Overy LLP on

In a press release on 10 July 2017, the Broad Institute announced that is has, with joint patent owners Harvard University, the Massachusetts Institute of Technology and the Rockefeller University, entered discussions about a...more

The STRONGER Patents Act: Swinging the Pendulum in Favor of Patent Owners

by Bass, Berry & Sims PLC on

While the House Judiciary Committee conducts hearings today on "The Impact of Bad Patents on American Businesses," a movement is afoot in the Senate to revitalize the U.S. patent system. On June 21, 2017, a bipartisan group...more

Attempted End Run Around Wisconsin’s Exclusive Remedy of Worker’s Compensation Fails in Asbestos Litigation in the Seventh Circuit

by Ruder Ware on

Wisconsin’s exclusive remedy of worker’s compensation has long been a bulwark against civil suits brought by employees (subject to a few narrow exceptions not applicable here). This bulwark has survived a creative attack in...more

Federal Circuit Review - June 2017

by Knobbe Martens on

Inter Partes Reexamination Estoppel Attaches On Claim-by-Claim Basis for New Requests and Pending Proceedings - In In re Affinity Labs Of Texas, LLC, Appeal Nos. 2016-1092, 2016-1172, the Federal Circuit held that the...more

PTAB Denies Motion to Withdraw as IPR Counsel

by Jones Day on

In an order entered June 30, 2017, the PTAB denied a motion by counsel for patent owner Purple Leaf, LLC (“Counsel”) to withdraw from representation in a trio of IPRs (IPR2016-01720, IPR2016-01721, and IPR2016-01722). Counsel...more

Known Solution to General Problem Provides Sufficient Motivation to Modify Prior Art

by Jones Day on

In a final written decision in Bass, et al., v. Fresenius Kabi USA, LLC (IPR2016-00254), the PTAB found that the challenged claims of Fresenius’s U.S. Patent No. 8,476,010, directed to a sterile pharmaceutical composition of...more

No Post-Grant Review Where Challenged Claims Are Disclaimed

by McDermott Will & Emery on

Addressing whether disclaimer of all challenged claims prior to institution of post-grant review constitutes a request for adverse judgment, the Patent Trial and Appeal Board (PTAB) found that it did not and denied the...more

Reasonable Notice to Patent Owner Is a Must

by McDermott Will & Emery on

The US Court of Appeals for the Federal Circuit remanded a Patent Trial and Appeal Board (PTAB) inter partes review (IPR) decision finding a patent obvious and directed the PTAB to provide sufficient factual support for its...more

Patent Owner Statements in IPR May Result in Prosecution Disclaimer

by McDermott Will & Emery on

Addressing for the first time the issue of whether statements made during America Invents Act post-grant proceedings can trigger a prosecution disclaimer, the US Court of Appeals for the Federal Circuit upheld the district...more

Senate’s STRONGER Patents Act Aims to Address Key PTAB Patent Owner Woes

by Jones Day on

On June 21, Senators Chris Coons (D-Del), Tom Cotton (R-Ark), Dick Durbin (D-Ill), and Mazie Hironoa (D-Hawaii) introduced the “Support Technology & Research for Our Nation’s Growth and Economic Resilience Patents Act of...more

No En Banc Resolution on Whether Patent Right Is Public Right

by McDermott Will & Emery on

In a 10–2 decision that included two concurrences and two dissents, the US Court of Appeals for the Federal Circuit denied a patent owner’s petition to hear part of its appeal en banc in order to resolve whether a patent...more

“Catch-All” Phrases Insufficient To Give Proper Notice of Grounds for Petition

In Emerachem Holdings, LLC v. Volkswagen Group of America, Inc., the Federal Circuit made clear that “catch-all” phrases in a Petition for IPR and/or a Board’s Institution Decision are insufficient to put a patent owner on...more

Patent Owner Extinguishes IPR by Amending Claims

by McDermott Will & Emery on

In a rare case where the Patent Trial and Appeal Board (PTAB) granted a motion to amend the claims in an inter partes review (IPR), the patent owner successfully canceled all claims subject to review by changing the...more

Is Congress Finally Getting Serious About Curtailing Design Patents in the Auto Industry?

by Foley & Lardner LLP on

In recent years, OEMs have been growing their design patent portfolios at a rapid pace. Specifically, OEMs have been securing patent protection on replacement parts, including bumpers, fascias, light fixtures, mirrors, hoods,...more

In Fight Over Recombinant Blood Clotting Factor, PTAB Denies Motion to Submit Supplemental Information

In a case that highlights the importance for petitioners to conduct a thorough prior art search and to anticipate patent owner’s arguments, the PTAB denied a motion to submit supplemental information under 37 C.F.R. §...more

Later Disclaimer Cannot Retroactively Dissolve Marking Requirement

by McDermott Will & Emery on

The US Court of Appeals for the Federal Circuit vacated a district court judgment as it relates to marking, finding that the patent owner cannot use disclaimer to avoid the marking requirement (35 USC § 287) and thereby...more

Issue Five: PTAB Trial Tracker

by Goodwin on

SUPREME COURT WILL REVIEW PTAB PRACTICE OF PARTIAL INSTITUTION - The Supreme Court has granted certiorari in SAS Institute Inc. v. Lee, No. 15-969 (Fed. Cir.), to examine the Board’s practice of instituting IPR on fewer...more

Not Necessarily Unfair to Reply on Patent Owner’s Submissions in Obviousness Finding, but Board Failed to Provide Adequate...

In Rovalma, S.A. v. Bohler-Edelstahl GmbH & Co., KG, [2016-2233] (May 11, 2017), the Federal Circuit vacated the Board’s Final Written Decision in IPR2015-00150, finding the Board did not set forth its reasoning in sufficient...more

What Rights Will I Lose if I Pitch My Invention to Investors Before I File a Patent Application?

by Ward and Smith, P.A. on

Did you know that the individual often credited with popularizing karaoke did not reap the financial rewards of his invention to the extent possible? It's true—Japanese musician Daisuke Inoue invented karaoke in Kobe, Japan...more

USPTO Patent Term Adjustment Error Costs Patent Owners Time And Money

by Foley & Lardner LLP on

The USPTO appears to have dropped its plans to overhaul the Information Disclosure Statement (IDS) process, but that’s no excuse for its failure to process IDSs in accordance with its current rules. Most egregiously, the...more

Secondary Considerations Carry The Day

by Jones Day on

We have previously reported (on February 1, on March 1, and on March 30) how patent owners have seen a mixed bag of results in trying to convince PTAB panels that secondary considerations of non-obviousness were sufficient to...more

Federal Circuit Extends Prosecution Disclaimer to IPR Proceedings

by Morgan Lewis on

The Federal Circuit recently held as a matter of first impression that statements made by a patent owner during an IPR proceeding can be considered for claim construction and relied upon to support a finding of prosecution...more

Provisional Patent Applications Versus Utility Patent Applications

by Snell & Wilmer on

Provisional applications were introduced in the United States in the Inventor’s Protection Act of 1995. The purpose was to facilitate a quick filing, if necessary, to establish a priority filing date and salvage potential...more

Federal Circuit Swats Appeal in View of Patent Owner Failures

In the recent decision in Securus Technologies, Inc. v. Global Tel*Link Corporation, the Court of Appeals for the Federal Circuit (CAFC) addressed a number of issues, a couple of which are worth noting as potential pitfalls...more

2017 PTAB Digest: The Latest Trends and Developments in Post-Grant Proceedings

by Morgan Lewis on

Recent patent reform legislation, rule changes, and court rulings are expected to have a significant impact on the strategies of both patent owners and petitioners. Please see full Digest Report below for more information....more

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