News & Analysis as of

Post-Approval Quality Control Testing of Pharmaceutical Products: What Constitutes 35 U.S.C. § 271(g) Infringement or Falls Under...

The Federal Circuit recently affirmed that a generic pharmaceutical company’s use of post-approval quality control testing was not “making” under 35 U.S.C. § 271(g). See Momenta Pharmaceuticals, Inc. et al. v. Teva...more

3 Years of Inter Partes Review – By The Numbers

Welcome to Harness Dickey’s Report on Litigation Practice before the United States Patent Office. Created by the America Invents Act, Inter Partes Review proceedings have already changed the face of patent litigation. Lower...more

Obviousness Versus Obviousness-Type Double Patenting

In Prometheus Laboratories, Inc. v. Roxane Laboratories, Inc., the Federal Circuit affirmed the district court’s finding that Prometheus’ claims were invalid as obvious, but in so doing it cited its own precedent regarding...more

Connect the Dots: Petition That Fails to Explain How Prior Art Could Be Combined Can Doom a PTAB Proceeding

While claim charts are often used to compare prior art to challenged patent claims, simply submitting those claim charts as part of a petition to the Patent Trial and Appeal Board (PTAB), without more, could lose your case....more

"Software" Claims Reciting No Structural Components and Having Questionable Novelty Struck Down under 35 U.S.C. § 101

Two recent District Court decisions show examples of "weak" claims, which in the past would likely be found invalid as lacking novelty or being obvious, but today are struck down as being unpatentable under § 101. The cases...more

Location of Accused Activity Informs Post-Approval Enforceability of “Quality-Control” Process Patents

On November 10, 2015, the United States Court of Appeals for the Federal Circuit issued its decision in two companion cases: Momenta Pharms. Inc. v. Teva Pharms. USA Inc. (14-CV-1274, 14-CV-1277) and Momenta Pharms. Inc. v....more

Considerations for Submission of Experimental Evidence to the Patent Trial and Appeal Board

Experimental evidence can be a powerful tool in succeeding in an inter partes review proceeding, particularly in the case where inherent properties of prior art are at issue. As indicated by the requirements of 37 C.F.R. §...more

IP Matters, Fall 2015

Textile Copyright Cases Ripe for ADR - While normally focused on music and media matters, copyright lawyers in California have grown busy with something else: fabrics. Hundreds of textile copyright suits involving fabric...more

ITC Proposed Amendments to Section 337 Rules

As the costs of patent litigation continue to rise, and tribunals work to more efficiently adjudicate disputes, the United States International Trade Commission (“ITC”) appears to be listening to its constituents: on...more

That’s Patentable? The Far-Reaching Definition of an “Invention”

U.S. patent law provides that “Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor,” 35 U.S. Code...more

Global Tax News - November 2015

HANDS OFF DIGITAL CURRENCIES! CANADA’S SENATE CALLS FOR A LIGHT REGULATORY APPROACH Formerly considered a gimmick for geeks and gamers, digital currencies, such as Bitcoin, have grown into a worldwide phenomenon...more

More Than a Pinky Promise: Recent Developments to the Promise Doctrine in Patent Law

Don’t want your patent invalidated? Then you should diligently vet any promissory language in that patent because, as the following cases illustrate, such language raises significant risks of patent invalidation on the basis...more

Contention Discovery Requests in Texas: Punting in the First Quarter Could Lead to Disaster in the Fourth

It happens every day: one litigant serves discovery requests on another, asking the latter to “identify every fact” or “explain every basis” for the party’s legal contentions in a lawsuit. Usually, the response is standard:...more

Federal Circuit Issues Second Reversal in an Inter Partes Review Finding the PTAB’s Obviousness Analysis to Contain “Legal Errors”...

On November 3, 2015, the Federal Circuit issued Belden Inc. v. Berk-Tek LLC1, a rare precedential opinion reversing a determination by the Patent Trial and Appeal Board (PTAB) in an inter partes review proceeding. This is...more

Inphi Corp. v. Netlist, Inc. (Fed. Cir. 2015)

Many patent attorneys have a visceral, disapproving reaction to negative claim limitations -- elements that specify what a claim does not cover. While a line of Federal Circuit cases has established that negative limitations...more

PTAB’s Ambiguous Language Is Basis For Federal Circuit Vacating PTAB’s Opinion

Yesterday, the Federal Circuit remanded a PTAB decision for just the second time. In Ariosa Diagnostics v. Verinata Health, Inc., the Federal Circuit vacated and remanded the Board’s decision upholding the validity of...more

Prometheus v. Roxane – A Glimpse of Christmas Future?

A Fed. Cir. panel of Judges Dyk, Taranto and Hughes affirmed the district court’s invalidation of a Prometheus “add-on” patent (U.S. Pat. No. 6,284,770) to a method to treat a form of irritable bowel syndrome, IBS-D, with...more

News from Abroad: The UPC: to Opt Out or Not to Opt Out, That Is the Question

Did you know that in the Unified Patent Court (UPC) a patentee will be able to get an injunction covering a market much bigger than the entire USA, in a procedure that lasts no longer than a year, at a hearing which lasts a...more

Summary Judgment Decisions Issue In Dispute Involving 10 Patents

Robinson, J. Defendants’ motion for summary judgment of non-infringement of 2 patents is denied and granted in part as to five patents. Defendants’ motion for summary judgment of invalidity of two patents is denied and...more

ITC Has No Jurisdiction to Block Infringing “Electronic Transmissions”

On November 10, a panel of the Federal Circuit reversed a landmark ITC decision blocking the importation of digital information that infringes a patent. This decision has potential ramifications for a wide-range of companies...more

No Need to Accentuate the Positive — Eliminate the Negative

In Inphi Corporation v, Netlist, Inc., [2015-1179] (November 13, 3015), the Federal Circuit affirmed the BPAI decision affirming the examiner’s final decision declining to reject claims amended during inter partes...more

Intellectual Property Update: Distributing patent rights between affiliates: guidelines to support enforcement rights around the...

Picture the scenario – your company creates a new affiliate in Ireland to sell and distribute a product. The parent company holds the legal title to the patents associated with the product. Parent grants the Irish affiliate a...more

Why Business Methods Are Difficult to Patent

Although the general rule (based on 35 USC section 101) is that anything made by humans is patentable, there are exceptions. Laws of nature, physical phenomena, and abstract ideas are not patentable. Inventions that fall in...more

Software Patents: History and Strategies (Pt. I – History)

1952-2010: Software Patents Historically (before Bilski and Alice) - For centuries in United States patent law, the question of patentability of the subject matter of an invention under 35 U.S.C. §101 was fairly...more

Certificate of Correction to Correct Information Not Available When Patent Issued

Cubist Pharmaceuticals, Inc. v. Hospira, [2015-1197, 2015-1204, 2015-1259] (November 12, 2015), the Federal Circuit approved the use of a Certificate of Correction to correct information not available at the time the...more

5,736 Results
View per page
Page: of 230

"My best business intelligence, in one easy email…"

Your first step to building a free, personalized, morning email brief covering pertinent authors and topics on JD Supra:

Sign up to create your digest using LinkedIn*

*By using the service, you signify your acceptance of JD Supra's Privacy Policy.
*With LinkedIn, you don't need to create a separate login to manage your free JD Supra account, and we can make suggestions based on your needs and interests. We will not post anything on LinkedIn in your name. Or, sign up using your email address.