Patents

News & Analysis as of

Inter Partes Review Initial Filings of Paramount Importance: What Is Clear After Two Years of Inter Partes Review Under the AIA

September 16, 2014, marked the two year anniversary since certain provisions of the Leahy-Smith America Invents Act went into effect, including post-grant Inter Partes Review (IPR) proceedings before the Patent Trial and...more

Federal Circuit Judges Disagree on Use of Post Filing Date Evidence of Nonobviousness

On October 20, 2014, the Federal Circuit issued an order denying the petition for rehearing or rehearing en banc filed in Bristol-Meyers Squibb Co. v. Teva Pharmaceuticals, USA, Inc. While the order itself may not be...more

AntiCancer, Inc. v. Pfizer, Inc. (Fed. Cir. 2014)

Anyone that has been monitoring the outcome of district court cases recently will be aware of the perils of not including sufficient information, or not timely supplementing, preliminary infringement or invalidity contentions...more

PTAB Denies Motion to Amend a Motion to Amend; Reason: Delay

Tandus Flooring, Inc. v. Interface, Inc. - In response to patent owner’s request to file a motion to amend a motion to amend made approximately one month before oral hearing, the U.S. Patent and Trademark Office’s...more

Patent Box or Mystery Box?

The Italian Government recently approved the “patent box”, a tax relief system for the incomes deriving from the exploitation of industrial property. This could be a good news. Around 6 months ago we campaigned for...more

Who Is Alice and Why Is She Invalidating Patents?

On June 19, 2014, the Supreme Court issued its decision in Alice Corporation Pty. Ltd. v. CLS Bank International, clarifying what it means to be patentable subject matter. With one stroke of the pen, the Supreme Court...more

Fujitsu v. Tellabs: Fujitsu Appeal's Decision on Motion to Compel and, After It Loses on Appeal, District Court Orders a Civil...

In this patent infringement action, the district court granted a motion to compel filed by Tellabs against Fujitsu. Fujitsu then filed a petition for a writ of mandamus with the Federal Circuit to overturn the decision of the...more

Patent Rights in Government Contracts

Patents are often a company’s most important asset. Thus, when a company is contracting with the federal government, that company needs to proceed with caution to avoid loss of patent rights. Government contracts can cover...more

IP|Trend: Inter Partes Review: Is it Litigation or Something Else? [Video]

For two years we’ve seen the inter partes review process play out. What are the procedures like? Does it look like litigation or more like a foreign planet that IP litigators would not recognize? Attorneys Cyrus Morton and...more

PTAB Shows a Willingness to Intervene in Deposition Disputes

Experienced district court litigators are reluctant to “call the judge” when a dispute arises during a deposition. Judges do not want to take the time to deal with mundane discovery disputes and parties do not want to get on...more

Additional Discovery Relating to Real Party in Interest

In VMware, Inc. v. Good Technology Software, Inc., IPR2014-01324, Paper 11 (October 20, 2014), the Board allowed the patent owner to move for additional discovery regarding the real party in interest, one of the few topics...more

United Therapeutics Corp. v. Sandoz, Inc.

Nature of the Case and Issue(s) Presented: UTC claimed that Sandoz induced infringement of the ’007 patent by instructing physicians to dilute its product for use intravenously. The asserted claim required a particular...more

Do-Gooders Need Not Apply

According to its mission statement, Consumer Watchdog is a non-profit entity “dedicated to providing an effective voice for taxpayers and consumers in an era when special interests dominate public discourse, government and...more

Movants Face a High Bar to Succeed on Motions to Amend

Intelligent Bio-Systems, Inc. v. Illumina Cambridge Ltd. - In response to a patent owner’s motion to amend its claims in an inter partes review (IPR) petition, the U.S. Patent and Trademark Office’s (USPTO) Patent...more

The Indefiniteness of What is "Routine, Well-understood and Conventional" in Assessing Patent Eligibility of Diagnostic Method...

Castigating the Supreme Court, at least in patent circles, has become as prevalent as the Court's forays into patent law have been to overrule the Federal Circuit. While even those who give the Court the benefit of the doubt...more

Supreme Court Hears Arguments on Appellate Standard of Review Over Patent Claim Construction

The United States Supreme Court heard oral argument October 15, 2014, in Teva Pharm. USA, Inc. v. Sandoz, Inc., No. 13-854. (The transcript and audio recording are available here.) The question before the Court in this case...more

We double checked, and we were right!

Several of the Board’s decisions in inter partes reviews are now on appeal. The statute specifically allows the Patent Office to intervene, which is bit like allowing a district court judge to intervene in the appeal of a DJ...more

Petitioner Can’t Stop Patent Owner from Getting More Patents

In A.C. Dispensing Equipment Inc. v. Prince Castle LLC, IPR2014-00511, Paper 18, (October 17, 2014), the Board denied petitioner authorization to file a motion to stay prosecution of Patent Owner’s continuation patent...more

Later Priority Date for IPR-Challenged Patent Where No Written Description in Parent

The Board denied an interesting attack from Patent Owner who suggested that Petitioner’s argument, that the patent-at-issue was not entitled to the priority date of its parent, was barred in inter partes review proceedings...more

PTAB Disqualifies Art as Being Non-Analogous to Claimed Invention

A limited number of cases, to date, have dealt with the issue of analogous prior art in an obviousness analysis. In Schott Gemtron Corp. v. SSW Holding Co., IPR2014-00358, the Board addressed this type of issue, finding in...more

Post-Grant Insights: The Preparation and Pace of the PTAB [Video]

The motions that are filed at the U.S. Patent Trial and Appeal Board all need to be authorized in advance. In other words, attorneys and their clients have to request a phone conference and there's a very active practice of...more

Novartis Pharms. Corp. v. Par Pharm., Inc.

Nature of the Case and Issue(s) Presented: The one asserted claim in the ’031 patent, claim 7, depends from non-asserted independent claim 1. Claim 7 narrows claim 1 by limiting it to a specific delivery method and requires...more

Patent Filings for October 20, 2014

New Filings - Nestle Healthcare Nutrition, Inc., filed IPR2014-00094 challenging claims 1, 2, 16-18, 26, and 27 of U.S. Patent No. 6,209,591 owned by Stork Food & Dairy Systems B.V....more

PTAB Designates Two Recent Decisions as Informative

Garmin Int’l, Inc., et al. v. Cuozzo Speed Technologies LLC; Idle Free Systems, Inc. v. Bergstrom, Inc. - The Patent Trial and Appeal Board (Board) recently designated as “informative” two decisions earlier released...more

Spread Out! Double Space Everything

In Microsoft Corporation v. Cellular Communications Equipment LLC, IPR2015-00011, Paper 3, (October 17, 2014), the Board gave Microsoft’s petition a filing date but required Microsoft to re-file the Petition because it...more

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