The USPTO Director denied a patent owner’s request for discretionary denial of two inter partes review (IPR) petitions, citing the petitioner’s “well-settled expectation” that it would not be accused of infringing the two...more
The Southern District of Florida recently dismissed a complaint without prejudice because the allegations used a form of “shotgun pleading.” The court explained that a shotgun pleading includes those where every count...more
In an ANDA litigation, the District of Delaware recently denied the defendants’ motion to compel the production of correspondence between the plaintiffs’ testifying expert and a third-party analyst who had performed...more
In an ANDA litigation, the District of Delaware recently denied the plaintiffs’ motion to strike portions of the defendants’ expert reports and related deposition testimony. Although the defendants’ invalidity contentions did...more
A Northern District of Florida court denied a motion to disqualify plaintiffs’ outside counsel based on an alleged violation of a prosecution bar because, although the issue was “not free of doubt,” the court did not find a...more
The Federal Circuit recently vacated a summary judgment ruling of invalidity, holding that the district court erred in applying preclusive effect to the Patent Trial and Appeal Board’s unpatentability findings regarding other...more
The Federal Circuit reversed a district court’s denial of judgment as a matter of law on non-infringement, thereby setting aside a $106 million jury verdict, after holding that prosecution history estoppel barred the patentee...more
In considering a motion to dismiss infringement claims for two related patents, the District of Massachusetts recently held that pre-suit knowledge of a “parent” patent, without more, is insufficient to establish pre-suit...more
A Northern District of California judge recently granted a motion to reconsider his summary judgment ruling that defendant was barred from raising certain “device art” due to IPR estoppel under 35 U.S.C. § 315(e)(2). In the...more
The Federal Circuit recently reversed a PTAB determination on remand that a patent was obvious over applicant admitted prior art (“AAPA”) in combination with prior art patents, holding that expressly designating AAPA as a...more
The Federal Circuit affirmed a District of Delaware finding of non-infringement in an ANDA litigation due to the patentee’s clear and unmistakable disavowal of claim scope during prosecution. Specifically, the court held that...more
The Patent Trial and Appeal Board has denied institution of an inter partes review for a design patent in part because the petitioner failed to show that three asserted references qualified as prior art. Specifically, the...more
The Federal Circuit recently vacated a PTAB decision that claims of an “e-cigarette” patent were unpatentable for lack of written description under 35 U.S.C. § 112. The question on appeal was whether a claimed range was...more
The Patent Trial and Appeal Board recently instituted an inter partes review where the patent owner argued that the petitioner failed to establish its expert as a person of skill in the art, which would have rendered the...more
In Victaulic Company v. ASC Engineered Sols., LLC, the District of Delaware ruled on summary judgment that ASC is estopped from asserting two obviousness grounds against a patent claim because it raised the same grounds...more
In two related inter partes review proceedings, the Patent Trial and Appeal Board granted a petitioner’s motion to exclude the declaration of an inventor because the patent owner failed to make him available for...more
The District Court for the Northern District of Ohio dismissed Cybergenetics Corp.’s infringement suit after determining that the asserted claims—which recite mathematical algorithms for analyzing data taken from a DNA...more
In an August 18 memorandum, the U.S. Patent and Trademark Office (USPTO) issued binding agency guidance on the proper role of “applicant admitted prior art” (AAPA) in inter partes review (IPR) proceedings. The memorandum...more
Optis Wireless Technology, LLC filed a declaratory judgment action in the Eastern District of Texas seeking judgment that it complied with its fair, reasonable and non-discriminatory (FRAND) obligations when it offered a...more
The Federal Circuit vacated a PTAB decision invalidating all challenged claims of U.S. Patent No. 8,908,842 (’842 Patent) and ordered the PTAB to reconsider whether the patent should have been disqualified from covered...more
10/17/2019
/ America Invents Act ,
Claim Construction ,
Claim Limitations ,
Covered Business Method Patents ,
Covered Business Method Proceedings ,
Patent Trial and Appeal Board ,
Patent-Eligible Subject Matter ,
Patents ,
Prior Art ,
Remand ,
Section 101 ,
Section 103 ,
Technology
In an ongoing inter partes review (IPR) proceeding, the Patent Trial and Appeal Board (the “Board”) denied Petitioner Nestlé Healthcare Nutrition, Inc.’s request to cross examine two expert witnesses after Patent Owner...more
11/19/2018
/ Cross Examination ,
Declaration ,
Discovery ,
Evidence ,
Expert Testimony ,
Expert Witness ,
Inter Partes Review (IPR) Proceeding ,
Motion to Exclude ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Prior Art
On August 1, 2016, Canfield Scientific, Inc. filed a civil action in the District of New Jersey against Melanoscan, LLC, seeking a declaratory judgment of non-infringement of U.S. Patent No. 7,359,748 (“the ’748 Patent”). In...more
On October 23, 2017, a Patent Trial and Appeal Board (PTAB) panel granted Petitioner’s Motion to Submit Supplemental Information (“the Motion”) on the publication date of an asserted reference. At the time the Petition was...more
On March 20, 2017, a Patent Trial and Appeal Board (PTAB) panel declined to institute an inter partes review (IPR) of patent claims that were also the subject of a previously filed IPR by the same petitioner (IBM). IBM...more
The Supreme Court held that laches is no longer a defense against patent infringement. The Patent Act’s six-year statute of limitations already limits the window for damages for infringement, which precludes any further...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