Patents

News & Analysis as of

IPR Spotlight Series: Strategically Using Requests for Joinder in IPR

Inter partes review (IPR) before the Patent Trial and Appeal Board (PTAB) became available on September 16, 2012 as a post-grant review procedure to challenge the patentability of issued claims based on prior art patents and...more

Reaching a Milestone: Filing of the First Ever Petition for a Post-Grant Review

On August 5, 2014, a milestone was reached for AIA trials. For the first time, a petition for a Post Grant Review (PGR) was filed. As was the case with the first covered business method review, the first PGR will likely be...more

131 Declaration That Was Successful in Prosecution Deemed Insufficient in Inter Partes Review

The Board proved willing to overturn a previous patent examiner’s judgment in another type of issue in Iron Dome LLC v. E-Watch, Inc., IPR2014-00439, where, in instituting an inter partes review trial, the Board found that...more

Examination of Myriad-Mayo Guidance Comments -- AUTM, COGR, AAU, and APLU

On March 4, the U.S. Patent and Trademark Office issued a guidance memorandum, entitled "Guidance For Determining Subject Matter Eligibility Of Claims Reciting Or Involving Laws of Nature, Natural Phenomena, & Natural...more

Judge Crotty denies attorney and expert fees

In a matter related to Case no. 1:13–cv-01358–PAC, Abbvie requested attorney and expert fees following the court’s determination that U.S. Patent No. 7,846,442 (“Methods of treating rheumatoid arthritis with an anti-TNF-alpha...more

Lessons Learned From the First Successful Motion to Amend in an Inter Partes Review

While the Leahy-Smith America Invents Act (AIA) provides a mechanism that allows amendments to patents challenged in an inter partes review, until recently, all motions to amend have failed. The final decision in...more

Personal Audio No Longer Trolling Adam Carolla

Adam Carolla has reportedly settled the lawsuit that was filed against him by Personal Audio LLC. The Agreed Motion to Dismiss Claims is available for review, but the specific terms of the settlement have not been...more

The Analysis for Design Patent Infringement Post-Egyptian Goddess

In the seminal decision of Egyptian Goddess, Inc. v. Swisa, Inc., the Federal Circuit struck down one of the two tests commonly used for determining design patent infringement, the “point of novelty” test. Despite rejecting...more

Consider this Potential Downside of Inter Partes Review: Denial of the Petition May Be Used Against You in a Concurrent District...

In many instances, it may be advantageous to challenge patent validity via an AIA trial in front of the Patent Trial and Appeal Board (PTAB). Despite all of the advantages to an AIA trial, a potential AIA trial petitioner...more

Yamanaka iPSC Patent Challenged

Dr. Shinya Yamanaka of Kyoto University shared the 2012 Nobel Prize in Physiology or Medicine with Dr. John B. Gurdon for their respective discoveries that mature, specialized cells can be reprogrammed to become immature...more

A second patent in a chain falls to obviousness-type double patenting challenge

The court had previously determined that The Kennedy Trust’s U.S. Patent No. 7,846,442 (the “parent patent”) was invalid for obviousness-type double patenting (“ODP”) to U.S. Patent No. 6,270,766 (“the grandparent“). At issue...more

Prior claiming in Australia…has news of its demise been greatly exaggerated? Is prior claiming still applicable to the remaining...

Prior claiming was a ground of invalidity under the Patents Act 1952 (1952 Act). It prevented grant of a patent claiming subject matter already claimed by another patent. Prior claiming was superseded by the broader concept...more

Lean Six Sigma - It’s not just for manufacturing

Motorola developed Six Sigma in 1986 to provide techniques and tools for process improvement. It subsequently used Six Sigma in all of its manufacturing operations. The name comes from the world of statistical modeling, where...more

Gone but not forgotten…is the archaic ground of prior claiming relevant to “whole of contents” novelty?

This is one of two related articles on aspects of prior claiming. Prior claiming was a ground of invalidity under the Patents Act 1952 (1952 Act). It prevented grant of a patent claiming subject matter already claimed by...more

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

2,912 Results
|
View per page
Page: of 117