On February 20, 2024, the Supreme Court denied Liquidia Technologies’ petition for a writ of certiorari to review a precedential Federal Circuit decision, United Therapeutics Corp. v. Liquidia Techs., Inc., 74 F.4th 1360...more
On June 2, 2023,the PTAB held the standard enunciated in Astoria Federal Sav. & Loan Ass’n v. Solimino, 501 U.S. 104 (1991) applies to claim preclusion determinations. This was yet another decision in the ongoing battle...more
7/21/2023
/ America Invents Act ,
Appeals ,
Claim Preclusion ,
Final Judgment ,
Intel ,
Intellectual Property Protection ,
Inter Partes Review (IPR) Proceeding ,
Patent Infringement ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents
The Supreme Court unanimously finds that the AIA's "on sale" statutory language did not alter the pre-AIA "on-sale" bar.
On January 22, 2019, the U.S. Supreme Court held that the America Invents Act ("AIA") did not change...more
1/28/2019
/ America Invents Act ,
Appeals ,
Assignment of Inventions ,
Confidentiality Agreements ,
Helsinn Healthcare SA v Teva Pharmaceuticals USA Inc ,
Inventions ,
On-Sale Bar ,
Patent Applications ,
Patent Infringement ,
Patents ,
Pharmaceutical Industry ,
Pharmaceutical Patents ,
Public Use ,
Reaffirmation ,
Reversal ,
SCOTUS ,
Section 102 ,
Third-Party Relationships
When the Supreme Court issued its decision in SAS Institute regarding partial IPR institution, the PTAB estimated that there were several hundred pending IPRs in which the Board had instituted some, but not all, claims and/or...more
In a recent Order, the Commission held that an earlier-entered Consent Order should be vacated in view of a settlement agreement between the parties but that the Commission did not have the authority to vacate a civil penalty...more
In October 2016, we posted about a Federal Circuit decision addressing whether assignor estoppel bars a party from filing an inter partes review petition. In Athena Automation Ltd. v. Husky Injection Molding Systems Ltd., the...more
The ITC has dealt a significant blow to the use of Inter Partes Review as a defense to a Section 337 investigation. In an order issued this week, the Commission denied a request to stay remedial orders that are currently on...more
7/28/2017
/ Appeals ,
Cease and Desist Orders ,
Cisco ,
Exclusion Orders ,
Final Written Decisions ,
Inter Partes Review (IPR) Proceeding ,
International Trade Commission (ITC) ,
Patent Infringement ,
Patent Invalidity ,
Patent Trial and Appeal Board ,
Patent Validity ,
Patents ,
Section 337 ,
USPTO
For more than 60 years, Section 102(b) of the Patent Act precluded patentability when the invention was "in public use or on sale in this country [for] more than one year" before the filing of a patent application. That...more
In re Certain Network Devices, Related Software and Components Thereof (I), Inv. No. 337-TA-944 (ITC Comm’n Apr. 19, 2017), is a surprisingly rare opinion addressing a common issue: When should the ITC redact a portion of an...more
4/28/2017
/ Appeals ,
Burden of Proof ,
Confidential Information ,
Final Written Decisions ,
International Trade Commission (ITC) ,
Patent Infringement ,
Patents ,
Proprietary Information ,
Redaction ,
Remand ,
Section 337 ,
Trade Secrets
In SCA Hygiene Products v. First Quality Baby Products, decided on March 21, 2017, the U.S. Supreme Court significantly reduced the role of the laches defense in patent actions: "Laches cannot be interposed as a defense...more
3/25/2017
/ Appeals ,
Damages ,
Defense Strategies ,
Equitable Estoppel ,
Laches ,
Patent Act ,
Patent Infringement ,
Patents ,
Petrella v. MGM ,
SCA Hygiene Products Aktiebolag v First Quality Baby Products ,
SCOTUS ,
Separation of Powers ,
Statute of Limitations
As reported in our February 1, 2017 post, patent owners have had a difficult time convincing the PTAB that secondary considerations are sufficient to overcome a prima facie case of obviousness. The Crown Packaging decision,...more
Section 271(f)(1) of the Patent Act provides that a party infringes a patent claim when it "supplies or causes to be supplied in or from the United States all or a substantial portion of the components of a patented invention...more
2/27/2017
/ Appeals ,
Component Parts Doctrine ,
Cross-Border Transactions ,
Exports ,
Extraterritoriality Rules ,
Life Technologies Corp v Promega Corp ,
Manufacturer Liability ,
Motion to Set Aside the Verdict ,
Patent Act ,
Patent Infringement ,
Patents ,
Reversal ,
SCOTUS