Patents

News & Analysis as of

First Post Grant Review Petition Filed

After nearly a dozen false starts, it appears that the first genuine “Post Grant Review” (PGR) petition may have been filed with the Patent Trial and Appeal Board (PTAB) under the America Invents Act (AIA)....more

Failure to Identify Structure of Means-Plus-Function Limitation Results in Denial of Ground

Parties have tried different strategies in addressing claim construction in inter partes review petitions. Some have relied strictly on a generic “broadest reasonable interpretation” argument; others have followed a more...more

Board Holds Petitioners to Strict Compliance with the Rules

In Metrics, Inc.v. Senju Pharmaceutical Co., Ltd., IPR2013-01041, Paper 8, and IPR2013-01043, Paper 8 (August 15, 2014), at patent owner’s promoting, the Board found fault with the petitioners first amended petition, and...more

Motion Practice In Inter Partes Review

Inter Partes Review (“IPR”) proceedings before the Patent Trial and Appeal Board (“PTAB”) have become a leading forum for patent disputes. IPRs are designed to be a faster and less expensive alternative to district court...more

Apotex Inc. v. UCB, Inc. (Fed. Cir. 2014)

Last week, the Federal Circuit affirmed a finding of inequitable conduct in Apotex v. USB, a relatively rare occurrence in the years after the Federal Circuit's decision in Therasense v. Becton, Dickenson. In the Therasense...more

Effect On Settlement Of Post-Grant Patent Review Proceedings

The recent America Invents Act both modified and created procedures for challenging patents in proceedings before the United States Patent and Trademark Office (PTO) after they have been issued, which are called post grant...more

What Does the Supreme Court Ruling in Alice v. CLS Mean to a Software Entrepreneur? [Video]

The Supreme Court’s ruling against broadly claimed software patents in Alice Corp. v. CLS Bank leaves many questions on patent eligibility unanswered, which means the controversy and confusion over the scope of patent...more

Finding Evidence of Secondary Considerations

In Square, Inc. v. REM Holdings 3, LLC, IRP2014-00312, Paper 20 (Augist 14. 2014) the patent owner was seeking evidence of secondary considerations. The Board denied additional discovery, but found that the patent owner made...more

Meal planning claims bite the dust under the Mayo/Alice framework

Judge Engelmayer found claims of DietGoal’s U.S. Patent No. 6,858,516 (“Method and system for computerized visual behavior analysis, training, and planning”) invalid under § 101, and so he granted Bravo’s motion for summary...more

Beware the Death Squad

On August 14, 2014, Law360 quoted PTAB Chief Judge James Smith commenting that the Board’s reputation as a patent “death squad” – a phrase coined by former Federal Circuit Chief Judge Randall Rader. ...more

A Patent Owner's Preliminary Response Must Rebut Statement Of Material Facts In The Petition

Inter Partes Review (“IPR”) proceedings are proving to be a highly cost efficient means to challenge patent claims as either lacking novelty under 35 U.S.C. § 102 or as being obvious under 35 U.S.C. § 103. However, a...more

Board Defines Role of “Common Sense” in Obviousness Arguments

Despite news reports and blog entries to the contrary, all is not doom and gloom for Patent Owners in inter partes review proceedings. In SDI Technologies, Inc. v. Bose Corporation, IPR2014-00346, the Board denied an...more

Federal Circuit Upholds Inequitable Conduct Defense Against Apotex Patent

In Apotex Inc. v. UCB, Inc., the Federal Circuit upheld the district court’s finding that Apotex’s patent is unenforceable due to inequitable conduct. While affirming on the ground of “but-for materiality,” the Federal...more

In Search of Commercial Success

In Schott Gemtron Corporation v. SSW Holdings Company, Inc., IPR2014-00367, Paper 20 (August 13, 2014), the Board denied patent owner’s motion for additional discovery relating to commercial success. The Board noted the...more

The Inconsistency of Inconsistent Statements

In TD Ameritrade Holding Corp. v. Trading Technologies International, Inc., CBM2014-00131, Paper 11 (August 14, 2014), believing it caught Petitioner in a failure to disclose prior inconsistent statements, the Patent Owner...more

NPEs Continue to Play Large Role in Patent Litigation

The annual patent litigation study recently released by PricewaterhouseCoopers LLP (PwC) sets forth some interesting trends in patent litigation, including that cases involving non-practicing entities (NPEs) continue to...more

I/P Engine, Inc. v. AOL Inc. (Fed. Cir. 2014)

Ever since the 2010 Supreme Court opinion in Bilski v. Kappos was handed down, the debate over the scope of patent-eligibility under 35 U.S.C. § 101 has been at times stimulating, complex, comical, and frustrating. Now it...more

Stem cell patentability: European update following Opinion of Advocate-General in ISCC and the Australian position

The recent Opinion of the Advocate-General suggests that a clarification and moderation of the Court of Justice of the European Union’s (CJEU) approach to the patentability of stem cells may be on the horizon. If followed,...more

Motion to Stay Enforcement of Judgment Denied Where Defendant Was Found to be a Willful Infringer and Offered Inadequate Security

On May 16, 2014, the district court entered Judgment on a jury verdict in favor of Plaintiff Global Traffic Technologies, LLC ("GTT") in the amount of $5,052,118, enhanced damages in the amount of $2,526,059, and prejudgment...more

Board Grants Rare Motion to Submit Supplemental Information

In general, all the evidence a party seeks to rely upon in an inter partes review must be contained in either the Petition (for Petitioner) or Patent Owner Response (for Patent Owner). 37 C.F.R. § 42.123 (b), however, allows...more

Revenue-Driven Licensing Activities Fail to Satisfy Domestic Industry Requirement for ITC Action

The ALJ terminated the ITC investigation upon granting respondent's motion for summary judgment for lack of domestic industry, finding that the complainant's (a licensing entity) patent-related activities were solely...more

District Court Denies Preliminary Injunction Where Plaintiffs Could Not Show Irreparable Harm Because Defendant Is Large and Well...

Plaintiff Hill-Rom Company, Inc. ("Hill-Rom") filed a motion for a preliminary injunction against General Electric Company ("GE"). The district court began its discussion by noting that "[t]he Federal Circuit has said that...more

Amending Dependent Claims — Listing Doesn’t Count Toward Page Limits

In Micro Motion, Inc. v. Invensys System, Inc., IPR2014-00179, Paper 22, IPR2014-00167, Page 24 (August 11, 2014), the Board informed the patent owner that it must address each proposed substitute independent claim in the...more

Motion to Set Aside Default Where Defendant Waited Too Long to Obtain New Counsel

Plaintiff Fleet Engineers, Inc. ("Fleet") develops, manufactures, and sells after-market products for the trucking industry. Defendant Tarun Surti, the president of Mudguard Technologies, LLC ("Mudguard"), owns a mud flap...more

Parties Must Come Clean to Settle a Proceeding

In Groupon Inc. v. Maxim Integrated Products, Inc., CBM2014-00090, Paper 10 (August 12, 2014), the Board reminded the parties that any agreement or understanding between the patent owner and the petitioner, including any...more

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