It is well-established that a counterclaim for invalidity in a district court litigation does not trigger the 35 U.S.C. § 315(a) bar. See 35 U.S.C. § 315(a)(3). See also our previous posts discussing strategies for...more
Due to the relatively low number of post-grant reviews (“PGR”) filed to date, not many district courts have spoken on the scope of PGR estoppel. In GREE, Inc. v. Supercell Oy, No. 2:19-cv-00071 (E.D. Texas), Magistrate Judge...more
9/4/2020
/ Estoppel ,
Motion To Strike ,
Parallel Proceedings ,
Partial Summary Judgments ,
Patent Infringement ,
Patent Invalidity ,
Patent Litigation ,
Patent-Eligible Subject Matter ,
Patents ,
Post-Grant Review ,
Prior Art ,
Section 101
On March 23, 2020, the Federal Circuit denied rehearing and rehearing en banc in Arthrex. Arthrex, Inc. v. Smith & Nephew, Inc., No. 18-2140, Order Denying Rehearing and Rehearing En Banc, Dkt. 115. The court held in Arthrex...more
On Monday, March 23, 2020, the Federal Circuit denied rehearing and rehearing en banc in the Arthrex appeal that found PTAB ALJs to be unconstitutional appointments. Arthrex, Inc. v. Smith & Nephew, Inc., No. 18-2140, Order...more
On March 16, 2019, the ITC implemented a temporary change to filing procedures in light of the global COVID-19 pandemic. The accompanying notice stated that the ITC will temporarily waive and amend its rules that require the...more
On September 12, 2018, the PTAB in NHK Spring Co. v. Intri-Plex Techs., Inc. exercised its discretion under 35 U.S.C. § 314(a) to deny institution of an IPR, despite the petition’s timely filing, due to a parallel district...more
In a recent summary determination order, ALJ Bullock found that complainants cannot always rely on circumstantial evidence to satisfy the Section 337 importation requirement. Certain Height-Adjustable Desk Platforms and...more
In Apple v. Uniloc 2017 LLC, the patent owner moved to amend the claims contingent on an unpatentability finding by the Board. The contingent amendment cancelled the original claims and replaced them with a new claim set. The...more
In a recent decision, ALJ Cheney determined that severance of an investigation was necessary for efficient adjudication of the issues raised in the Complaint. Certain Light-Emitting Diode Products, Systems, and Components...more
To institute an inter partes review (IPR), the petition requesting the proceeding must be filed within one year of the petitioner or real party in interest (RPI) receiving a complaint alleging patent infringement. 35 U.S.C. §...more
In a recent Enforcement Initial Determination, ALJ Shaw held that Sony had violated previously issued cease and desist orders (“CDOs”) and determined that the appropriate penalty was a fine of $210,134 – Sony’s net profit...more
10/18/2019
/ Administrative Law Judge (ALJ) ,
Cease and Desist Orders ,
Exclusion Orders ,
Initial Determination (ID) ,
International Trade Commission (ITC) ,
Patent Infringement ,
Patents ,
Presidential Review ,
Section 337 ,
Sony ,
Supply Chain
Despite the prohibition on patenting “abstract ideas” and the tendency of computer software claims to fall into that category, claims directed at improving faulty software systems may still be patentable if they encompass an...more
9/4/2019
/ Abstract Ideas ,
CLS Bank v Alice Corp ,
Computer-Related Inventions ,
Inter Partes Review (IPR) Proceeding ,
Motion for Summary Judgment ,
Patent Infringement ,
Patent Trial and Appeal Board ,
Patent-Eligible Subject Matter ,
Patent-in-Suit ,
Patents ,
Section 101 ,
Software Patents
In another example of why defaulting at the ITC can be a dangerous strategy, the ITC recently found all eight named respondents in default and concluded a general exclusion order (GEO) was the appropriate remedy. Since the...more
Shortly before the evidentiary hearing, ALJ Lord granted Complainant’s motion in limine and excluded certain testimony in the witness statement of Respondents’ expert as precluded by her ground rules governing expert...more
6/24/2019
/ Administrative Law Judge (ALJ) ,
Computer-Related Inventions ,
Discovery ,
Evidentiary Hearings ,
Expert Testimony ,
Expert Witness ,
International Trade Commission (ITC) ,
Patents ,
Prior Art ,
Section 337 ,
Testimony ,
Written Descriptions
The Situation: In a Hatch-Waxman litigation, the claims recite oxymorphone with less than 0.001% of an impurity called 14-hydroxymorphinone. The prior art includes confidential communications from the FDA to oxymorphone...more
5/31/2019
/ America Invents Act ,
Confidential Communications ,
Derivation Proceeding ,
Food and Drug Administration (FDA) ,
Hatch-Waxman ,
Obviousness ,
Patent Infringement ,
Patents ,
Pharmaceutical Patents ,
Prior Art ,
Section 102
On April 2, 2019, the Commission issued an order denying Respondents’ requests to use the Early Disposition Program. Certain Data Transmission Devices, Components Thereof, Associated Software, and Products Containing the...more
On Thursday, the Federal Circuit issued a precedential decision in Trading Technologies International, Inc. v. IBG Interactive Brokers, LLC, No. 17-2257 (Fed. Cir. Apr. 18, 2019), that provides another data point on how CBM...more
4/23/2019
/ America Invents Act ,
Covered Business Method Patents ,
Covered Business Method Proceedings ,
Inventions ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patent-Eligible Subject Matter ,
Patents ,
Precedential Opinion ,
Section 101 ,
Technology
On April 5, 2019, the PTAB designated as informative two decisions relating to 35 U.S.C. § 314(a):
- Chevron Oronite Co. LLC v. Infineum USA L.P., Case IPR2018-00923, Paper 9 (Nov. 7, 2018) (designated: Apr. 5, 2019) [AIA...more
On February 14, 2019, the U.S. International Trade Commission (“ITC”) issued an Initial Determination (“ID”) in the matter of Certain Road Construction Machines and Components Thereof, Inv. 337-TA-1088. In the ID, ALJ Lord...more
In SAS Institute v. Iancu, the Supreme Court held that when the PTAB institutes inter partes review under 35 U.S.C. § 314, it must decide the patentability of all claims the petitioner has challenged. SAS Institute left open...more
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
A recent initial determination (“ID”) from the ITC resulted in a general exclusion order for products infringing several patents belonging to Complainant National Products Inc. (“NPI”). Certain Mounting Apparatuses For...more
Under 37 C.F.R. § 42.5(d), communications with a Board member regarding a specific proceeding are not permitted “unless both parties have an opportunity to be involved in the communication.” This prohibition, however, does...more
We previously noted that the Commission does not believe it is required to vacate a civil penalty order just because the litigants settle a case. The Federal Circuit’s decision in DBN Holdings, Inc. v. ITC, No. 17-2128 (Fed....more
Under 35 U.S.C. § 325(d), the PTAB has discretion regarding whether to institute a covered business method review if the arguments presented in the petition are the same, or substantially the same, as those previously...more