Author Info for Fish & Richardson

John Adkisson

Biosimilars 2018 - A Year in Review

The U.S. biologics and biosimilars markets evolved rapidly in 2018. On January 17, life sciences attorneys John Adkisson, Tasha Francis, and Jenny Shmuel reviewed the U.S. market for biosimilar products and provide insights…more

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Kelly Allenspach Del Dotto

The Final Word on an Alleged Infringer’s Intent in a Hatch-Waxman Safe Harbor Analysis

We have been monitoring the dispute between Edwards Lifesciences Corp. (“Edwards”) and Meril Life Sciences Pvt., Ltd. (“Meril”) before and after the initial Federal Circuit decision. The dispute focused on whether Meril’s…more

FDA Approval, Food and Drug Administration (FDA), Hatch-Waxman, Life Sciences, Medical Devices

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Moritz Ammelburg Ph.D.

EPO Enlarged Board of Appeal Raises Bar for Challenging Priority Claims at the EPO

Challenges to the validity of the “Patent Cooperation Treaty joint applicant” have been a problem for many applicants at the European Patent Office. On October 10, 2023, the EPO’s highest authority, the Enlarged Board of Appeal,…more

EU, European Patent Convention, European Patent Office, Paris Convention, Patent Cooperation Treaty

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Michael Amon

Patent Local Rules: Knowing Them Well Can Make Litigating Your Case Smoother

Federal district courts throughout the country have enacted “patent local rules” that streamline how patent cases are litigated. Here we provide a brief description of what they are, how they are applied, and some reasons why…more

Local Rules, Patent Litigation, Patents

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Gwilym Attwell

Biden Administration Proposes March-In Rights Framework for Pharmaceutical Patents in Effort to Lower Drug Prices

On December 7, the Biden administration announced a proposed framework for determining whether the government may exercise its march-in rights to license pharmaceutical patents to third parties if it determines that the price of…more

Bayh-Dole Act, Biden Administration, Life Sciences, March-in-Rights, Patents

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Michael Autuoro

An Introduction to Patent Due Diligence

A patent due diligence analysis can be an important and cost-effective tool for your company. It helps you determine the value of your own patent portfolio, including whether you can monetize your patents through licensing,…more

Due Diligence, Patent Portfolios, Patents

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Keith Barritt

Want to Fully Protect Your Brand? Don’t Forget the Coffee Mugs!

Trademark owners often receive advice from counsel about registering their marks for core goods and services. And many times, that is all that budgets initially allow for…more

Advertising, Intellectual Property Protection, Marketing, Promotional Items, Trademark Registration

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Caleb Bates Ph.D.

Preparing Your Company for Hatch-Waxman

The Hatch-Waxman Act regulates the relationship between branded and generic drugmakers and attempts to strike a balance between two competing policy interests — encouraging pioneering drug development and facilitating market…more

Best Practices, Food and Drug Administration (FDA), Generic Drugs, Hatch-Waxman, Intellectual Property Protection

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Kiersten Batzli Ph.D.

USPTO Issues Proposed Rules on Discretionary Denial in PTAB Proceedings

One year ago, the United States Patent and Trademark Office (USPTO) issued an Advance Notice of Proposed Rulemaking (ANPRM) that set forth several ideas related to America Invents Act (AIA) proceedings before the Patent Trial…more

Administrative Procedure, Advanced Notice of Proposed Rulemaking (ANPRM), America Invents Act, Inter Partes Review (IPR) Proceeding, NPRM

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Jon Bell

District of Delaware Finds Non-Orange Book-Listed Patents Subject to the Same Pleading Standard as Listed Patents in ANDA Infringement Suit

As part of the Hatch-Waxman Act, given the lack of information on the allegedly infringing product, courts have found that patentees can satisfy the pleading requirements of Twombly/Iqbal without having access to the accused…more

Abbreviated New Drug Application (ANDA), Federal Rules of Civil Procedure, Hatch-Waxman, Novartis, Orange Book

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Rick Bisenius

What’s New in Director Review?

In July, the United States Patent and Trademark Office announced several changes to the interim process for Director review of Patent Trial and Appeal Board decisions. Originally established shortly after the Supreme Court’s…more

Administrative Appeals, Administrative Review, Directors, Patent Trial and Appeal Board, PTAB Precedential Opinion Panel (POP)

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Ricardo Bonilla

Texas Patent Litigation Monthly Wrap-Up: June 2024

Universal Connectivity Tech. Inc. v. Dell Tech. Inc., 1-23-cv-01506 (W.D. Tex.), Dkt. No. 34, Report and Recommendation of Magistrate Judge Susan Hightower to Judge Pitman - A magistrate judge recommended denying defendant…more

Dell, Indirect Infringement, Motion to Dismiss, Patent Infringement, Patent Litigation

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Jonathan Bright

The Basics of Trade Secrets

Major League Baseball (MLB) pitchers do not use brand new baseballs. They need a solid grip to prevent wild pitches, and out-of-the-box baseballs are too slick. So to prepare a baseball for game use, an equipment manager rubs it…more

Confidential Information, Intellectual Property Protection, Trade Secrets

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Philip Brown

Texas Patent Litigation Monthly Wrap-Up: December 2022

The update for December 2022 summarizes three patent decisions that issued from the Western District of Texas. These three decisions all evaluated challenges to venue in patent suits. In the end, the court transferred two of the…more

Apple, Motion to Transfer, Patent Infringement, Patent Litigation, Patents

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Christina Brown-Marshall Ph.D.

Hatch-Waxman 101

Pharmaceutical patents have proven to be a highly effective incentive for groundbreaking innovation. However, corresponding drug prices have long been an animating issue in American law and policy…more

Abbreviated New Drug Application (ANDA), Food and Drug Administration (FDA), Hatch-Waxman, Life Sciences, Patents

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Taylor Burgener

ITC Monthly Wrap-Up: November 2021

November brought another busy month for the ITC. Final Determinations were issued by the Commission in two Section 337 Investigations: Certain Electronic Devices, Including Streaming Players, Televisions, Set Top Boxes, Remote…more

Administrative Law Judge (ALJ), Electronic Devices, International Trade Commission (ITC), IP Litigation, Roku

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Chet Campbell

Massachusetts Patent Litigation Wrap Up – April 2020

This post is a part of a monthly series summarizing notable activity in patent litigation in the District of Massachusetts, including short summaries of substantive orders. As a general matter, the public emergency arising out…more

Patent Litigation, Patents

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Megan Chacon

The Federal Circuit Weighs in On Hatch-Waxman “Skinny” Label Infringement Dispute

The Hatch-Waxman Act allows a generic drugmaker to rely on a branded drugmaker’s Food and Drug Administration-approved New Drug Application if the generic drugmaker can show that the generic drug has the same active ingredient…more

Contributory Infringement, Hatch-Waxman, Life Sciences, Patent Infringement, Patent Litigation

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Noel Chakkalakal

Texas Patent Litigation Monthly Wrap-Up: March 2023

March's Texas Patent Litigation Monthly Wrap-Up covers decisions addressing post-verdict JMOL, the point at which cases become exceptional, and the standard for amending invalidity contentions, among other issues…more

Damages, Exceptional Case, JMOL, Motion for JMOL, Patent Infringement

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Philip Chen

Biologics and Biosimilars Landscape: IP, Policy, and Market Developments

In this review, we discuss the most important recent developments in the biosimilars space, including new biosimilar approvals and launches, litigation under the Biologics Price Competition and Innovation Act (BPCIA), post-grant…more

Biologics, Biosimilars, BPCIA, Drug Approvals, FDA Approval

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Vivian Cheng

U.S. Copyright Office Cancels Registration for AI-Generated Art, Issues AI-Related Registration Guidance

The United States Copyright Office, like other government agencies and private-sector entities, is reckoning with the implications of artificial intelligence. In February, the Office canceled an artist’s copyright registration…more

Artificial Intelligence, Authorship, Copyright, Copyright Applications, Copyright Office

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Ryan Chowdhury

What’s New in Director Review? Lessons From the Delegated Rehearing Panel’s First Decisions

The Director of the United States Patent and Trademark Office (USPTO) established the interim process for Director Review of Patent Trial and Appeal Board (PTAB) decisions in the wake of the Supreme Court’s 2021 decision in…more

America Invents Act, Claim Construction, Patent Prosecution History, Patent Trial and Appeal Board, Patents

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Benjamin Christoff

ITC Monthly Wrap-Up: August 2023

In August 2023, one complainant filed a new complaint for a violation of Section 337 in the International Trade Commission. Specifically, on August 22, NJOY, LLC, filed a complaint against JUUL Labs, Inc., in Vaporizer Devices,…more

Claim Construction, Imports, International Trade, International Trade Commission (ITC), Investigations

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Christian Chu

Antitrust Issues with "No-Poaching" Agreements

A client is negotiating a software license agreement to license in some information technology (IT) services from a service provider. The IT services were going to be a quantum improvement for our client, and they were investing…more

Corporate Counsel, Department of Justice (DOJ), Employee Retention, Employees, Federal Trade Commission (FTC)

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Brian Coggio

Should the Experimental Use Exception Be Broadened?

On June 28, 2024, the United States Patent and Trademark Office (“USPTO”) requested the public’s views on the current state of the common law experimental use exception to patent infringement and whether legislative action…more

Experimental Use Exception, Germany, Hungary, Italy, Netherlands

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Matthew Colvin

EDTX Monthly Wrap-Up – May 2020

In EDTX, a Good IPR Filed Early Is Better than a Great IPR Filed Late A recent precedential designation by the United States Patent and Trademark Office’s Patent Trial and Appeal Board (“PTAB” or “Board”) could have a…more

Inter Partes Review (IPR) Proceeding, Patent Litigation, Patent Trial and Appeal Board, Patents

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David Conrad

Judge Connolly’s New Standing Order Requiring Disclosure Behind Patent Assertion Entities Is Showing It Has Teeth

On August 17, 2022, Chief Judge Colm F. Connolly of the District of Delaware issued an order in which he questioned the sufficiency of the plaintiff’s disclosure of financially interested parties in Longbeam Technologies LLC. v…more

Disclosure Requirements, Federal Rules of Civil Procedure, Federal Trade Commission (FTC), Fee-Shifting, IP License

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John Conroy Ph.D.

Unified Patent Court and Unitary Patent Moving Ahead in Europe

Final preparations by sixteen EU member states for their Unified Patent Court (UPC) and Unitary Patent (UP) began on 19 January 2022, following Austria’s deposit on the previous day of its ratification of the Protocol on…more

Advisory Committee, EU, Intellectual Property Protection, Member State, Patents

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Rob Courtney

Supreme Court Rules § 315(b) Time Bar Decisions Are Not Appealable in Thryv v. Click-to-Call

The Supreme Court ruled today in Thryv, Inc. v. Click-to-Call Technologies, LP that decisions that an inter partes review petition was timely filed cannot be appealed. In a 7-2 decision penned by Justice Ginsburg, the Court held…more

§ 314(d), § 315(b), §314(a), §314(b), America Invents Act

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James Cowan

ITC Monthly Wrap-Up: December 2023

This month’s ITC Wrap-Up reviews a recent investigation exploring exemptions to the Commission’s remedial orders. Certain Wet Dry Surface Cleaning Devices, Inv. No. 337-TA-1304, Final Determination (Dec. 18, 2023)…more

Administrative Law Judge (ALJ), Ericsson, International Trade Commission (ITC), Investigations, Motorola

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Andria Rae Crisler

Biologics and Biosimilars Landscape: IP, Policy, and Market Developments

In this review, we discuss the most important recent developments in the biosimilars space, including new biosimilar approvals and launches, litigation under the Biologics Price Competition and Innovation Act (BPCIA), post-grant…more

Biologics, Biosimilars, BPCIA, Drug Approvals, FDA Approval

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Sean Daley Ph.D.

Everything You Need to Know About Patent Maintenance Fees

What are patent maintenance fees? Patent maintenance fees are mandatory fees that must be paid to the United States Patent and Trademark Office (“USPTO”) at certain time points after a patent issues in order to keep a utility…more

Maintenance Fees, Patents, USPTO

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Kenneth Darby

2022 Post-Grant Annual Report

2022 was a milestone year for the Patent Trial and Appeal Board. In April, Kathi Vidal began her tenure as Director of the United States Patent and Trademark Office with an early focus on promoting increased efficiency at the…more

America Invents Act, Final Written Decisions, Inter Partes Review (IPR) Proceeding, Obviousness, Patent Litigation

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Ahmed Davis

Fish Obtains First PGR Reversal at Federal Circuit in Altaire Pharmaceuticals, Inc. v. Paragon Bioteck, Inc.

Fish and Richardson has obtained the first appellate reversal of a Post-Grant Review (PGR) proceeding at the United States Court of Appeals for the Federal Circuit since the proceedings were first implemented in 2012. Fish’s…more

Patent Litigation, Patent Trial and Appeal Board, Patents, Pharmaceutical Patents, Post-Grant Review

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Jasmine De Cock Ph.D.

EPO Enlarged Board of Appeal Raises Bar for Challenging Priority Claims at the EPO

Challenges to the validity of the “Patent Cooperation Treaty joint applicant” have been a problem for many applicants at the European Patent Office. On October 10, 2023, the EPO’s highest authority, the Enlarged Board of Appeal,…more

EU, European Patent Convention, European Patent Office, Paris Convention, Patent Cooperation Treaty

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Lauren Degnan

How the Timing of Director Review May Affect Co-Pending Litigation

Director Review at the Patent Trial and Appeal Board (PTAB) remains a hot topic in patent law. The Director first established an interim process for Director Review in the wake of the Supreme Court’s 2021 decision in United…more

Administrative Procedure, Advisory Committee, Inter Partes Review (IPR) Proceeding, NPRM, Patent Infringement

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Andrew Dommer

USPTO Proposes New Amendment Procedure for America Invents Act

Director Iancu proposed a new amendment procedure on Thursday, October 25. The Director indicates that his proposed changes to the existing amendment practice were intended to avail patent owners of a more viable option for…more

America Invents Act, Comment Period, Patents, Proposed Amendments, USPTO

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Yun Dong

Middle District of North Carolina Finds Public Interest Favors Granting Preliminary Injunction

On December 27, 2023, Chief Judge Catherine Eagles of the U.S. District Court for the Middle District of North Carolina granted a motion for preliminary injunction by Natera Inc. enjoining NeoGenomics Laboratories Inc. from…more

Abbreviated New Drug Application (ANDA), Genetic Materials, Genetic Testing, Hatch-Waxman, Irreparable Harm

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John Dragseth

2022 Post-Grant Annual Report

2022 was a milestone year for the Patent Trial and Appeal Board. In April, Kathi Vidal began her tenure as Director of the United States Patent and Trademark Office with an early focus on promoting increased efficiency at the…more

America Invents Act, Final Written Decisions, Inter Partes Review (IPR) Proceeding, Obviousness, Patent Litigation

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Chris Dryer

What’s New in Director Review?

In July, the United States Patent and Trademark Office announced several changes to the interim process for Director review of Patent Trial and Appeal Board decisions. Originally established shortly after the Supreme Court’s…more

Administrative Appeals, Administrative Review, Directors, Patent Trial and Appeal Board, PTAB Precedential Opinion Panel (POP)

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Benjamin Elacqua

What You Need to Know About Motion Practice You Probably Learned in Kindergarten

We’ve all heard of the poem: “All I Really Need to Know I Learned in Kindergarten.” Well the same Kindergarten lessons should apply to how to navigate your litigation through motion practice—a fundamental tool of litigation…more

Litigation Strategies, Pre-Trial Motions, Trial Preparation

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Michael Ellis

Texas Patent Litigation Monthly Wrap-Up: October 2023

The Texas Patent Litigation Monthly Wrap-Up for October 2023 covers three decisions addressing the scope of the work-product and attorney-client privileges, limits on the use of a defendant’s use of its own patents during trial,…more

Claim Construction, Discovery Disputes, Document Productions, Jury Instructions, Jury Trial

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J. Peter Fasse

[Webinar] Coordinating Patent Prosecution in the U.S. and Europe - March 10th, 1:30 pm - 2:30 pm ET

In today's connected global economy, obtaining patent protection in multiple jurisdictions is the best way for companies to protect their IP on a global scale. But every jurisdiction has different patentability requirements and…more

Best Practices, Continuing Legal Education, Enablement Inquiries, Foreign Patent Applications, Intellectual Property Protection

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J. Patrick Finn III Ph.D.

Germany Ratifies UPC Agreement; UP & UPC to Begin 1 June

On February 17, Germany ratified the UPC Agreement, launching the countdown to the beginning of the Unitary Patent and Unified Patent Court. Germany’s ratification means that the Agreement will enter into force on 1 June 2023…more

EU, Germany, Patents, Unified Patent Court, Unitary Patent

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Scott Flanz

How To Present a Persuasive Opening Statement in a Patent Jury Trial

Introduction - Litigators have long understood that jurors’ opinions at the end of opening statements color, and correlate strongly with, how they interpret the evidence at trial. A 1940s study that assessed mock jurors at…more

Juror, Jury Trial, Opening Statements, Patent Litigation, Patents

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Louis Fogel Ph.D.

Preparing Your Company for Hatch-Waxman

The Hatch-Waxman Act regulates the relationship between branded and generic drugmakers and attempts to strike a balance between two competing policy interests — encouraging pioneering drug development and facilitating market…more

Best Practices, Food and Drug Administration (FDA), Generic Drugs, Hatch-Waxman, Intellectual Property Protection

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Will Freeman

Legal Alert: New Local Patent Rule in District of Massachusetts

Effective June 1, 2018, the District of Massachusetts has adopted a new Local Patent Rule 16.6. The new rule is the result of a multi-year process and is a comprehensive revision of the rule. It will apply to all patent cases in…more

Claim Construction, Local Patent Rules, Patent Infringement, Patent Litigation, Patents

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Thomas Fusco

ITC Litigation: Introduction to Trade Secret Protection at the ITC

We have covered several introductory topics about 337 Investigations at the International Trade Commission (ITC) through the lens of its most common context—as another forum for patent litigation…more

International Trade Commission (ITC), Investigations, Patent Infringement, Patents, Trade Secrets

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Todd Garcia Ph.D.

Biden Administration Proposes March-In Rights Framework for Pharmaceutical Patents in Effort to Lower Drug Prices

On December 7, the Biden administration announced a proposed framework for determining whether the government may exercise its march-in rights to license pharmaceutical patents to third parties if it determines that the price of…more

Bayh-Dole Act, Biden Administration, Life Sciences, March-in-Rights, Patents

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Alex Gelberg

Navigating SuperGuide at the PTAB

Over the past 20 years, the Federal Circuit’s opinion in SuperGuide Corp. v. DirectTV Enters., Inc., 358 F.3d 870 (Fed. Cir. 2004), which defined the plain and ordinary meaning of the phrase “at least one of” followed by a…more

Claim Construction, Patent Litigation, Patent Trial and Appeal Board, Patents

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John Goetz

USPTO Says AI-Assisted Inventions Not Categorically Unpatentable in New Guidance

Is an invention developed with the assistance of artificial intelligence (AI) patentable? On February 13, the United States Patent and Trademark Office (USPTO) issued guidance that helps to answer this question while also…more

Artificial Intelligence, Computer-Related Inventions, Innovative Technology, Intellectual Property Protection, Inventions

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Daniel Gopenko

ITC Monthly Wrap-Up: December 2021

Unlocking A Public Interest Exemption Based On A Questionnaire - Synopsis: Upon consideration of the public interest factors, the Commission recently allowed the use of a questionnaire to demonstrate a “documented need” for…more

Administrative Law Judge (ALJ), Imports, International Trade Commission (ITC), Patent Infringement, Patents

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Noah Graubart

Federal Circuit Finds Digital Camera an Abstract Idea

The Federal Circuit’s recent precedential decision in Yu v. Apple reflects an important data point in the Court’s § 101 jurisprudence as it applies to patents claiming computer-implemented inventions. ___ F.3d ___, 2021 WL…more

Abstract Ideas, Patent Infringement, Patent Litigation, Patents

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J. Kevin Gray

Antitrust Issues with "No-Poaching" Agreements

A client is negotiating a software license agreement to license in some information technology (IT) services from a service provider. The IT services were going to be a quantum improvement for our client, and they were investing…more

Corporate Counsel, Department of Justice (DOJ), Employee Retention, Employees, Federal Trade Commission (FTC)

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Christopher Green

Watch Where You Launch: Existing Space Laws Complicate Earthly IP Rights

Crew Dragon, a NASA commissioned, SpaceX designed capsule, successfully completed the first water landing since 1975 on August 2, 2020. “Thanks for flying SpaceX,” one SpaceX engineer commented following the two-month-long trip…more

International Treaties, NASA, Outer Space, SpaceX

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Lisa Greenwald-Swire

TTAB Rules Consumer Perception Remains the Critical Inquiry for Generic.gTLD Marks

In June 2020, the U.S. Supreme Court rejected a rule that the combination of a generic term and a generic top-level domain (“gTLD”) is per se generic. See USPTO v. Booking.com B.V., 140 S. Ct. 2298 (2020) (“Booking.com”). In so…more

Examination Procedures, Generic Marks, gTLD, Trademark Litigation, Trademark Registration

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Joshua Griswold

How the Timing of Director Review May Affect Co-Pending Litigation

Director Review at the Patent Trial and Appeal Board (PTAB) remains a hot topic in patent law. The Director first established an interim process for Director Review in the wake of the Supreme Court’s 2021 decision in United…more

Administrative Procedure, Advisory Committee, Inter Partes Review (IPR) Proceeding, NPRM, Patent Infringement

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Nitika Gupta Fiorella

2023 Post-Grant Annual Report

2023 was a busy year at the Patent Trial and Appeal Board, as post-grant practice continued to evolve at a rapid pace. At the United States Patent and Trademark Office, there were big developments in Director Review and proposed…more

Administrative Procedure Act, Advanced Notice of Proposed Rulemaking (ANPRM), Estoppel, Inter Partes Review (IPR) Proceeding, Obviousness

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Michael Hawkins

The Top Three Things Foreign Companies Should Keep in Mind When Considering IPR

Being sued for patent infringement in the U.S. can be confusing, especially for foreign companies with limited litigation experience. Even more confusing are the multiple options and venues available for responding to patent…more

Administrative Law Judge (ALJ), Burden of Proof, Foreign Entities, Inter Partes Review (IPR) Proceeding, Litigation Strategies

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John Hayden

USPTO Says AI-Assisted Inventions Not Categorically Unpatentable in New Guidance

Is an invention developed with the assistance of artificial intelligence (AI) patentable? On February 13, the United States Patent and Trademark Office (USPTO) issued guidance that helps to answer this question while also…more

Artificial Intelligence, Computer-Related Inventions, Innovative Technology, Intellectual Property Protection, Inventions

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Joseph Herriges

Minnesota Patent Litigation Wrap-Up: Q3 2023

This post continues our summary of substantive orders in patent litigation in the District of Minnesota. This summary includes a motion to compel production of chemical intermediates from an overseas manufacturer in…more

Bristol-Myers Squibb, Foreign Corporations, Motion to Compel, Patent Infringement, Patent Litigation

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David Holt

USPTO Issues Proposed Rules on Discretionary Denial in PTAB Proceedings

One year ago, the United States Patent and Trademark Office (USPTO) issued an Advance Notice of Proposed Rulemaking (ANPRM) that set forth several ideas related to America Invents Act (AIA) proceedings before the Patent Trial…more

Administrative Procedure, Advanced Notice of Proposed Rulemaking (ANPRM), America Invents Act, Inter Partes Review (IPR) Proceeding, NPRM

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Kenneth Hoover

Blockchain and Cryptocurrency: What is Blockchain Technology?

Blockchain and cryptocurrency technologies are rapidly expanding throughout the world – and with that rapid expansion has come a growing interest in IP protection for blockchain and cryptocurrency inventions. USPTO statistics…more

Bitcoin, Blockchain, Cryptocurrency, Patents, USPTO

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Jennifer Huang

Survey Shows Trends in PTAB’s Willingness to Institute Multiple Petitions

The Consolidated Trial Practice Guide states that, “[t]o date, a substantial majority of patents have been challenged with a single petition.” Consolidated Trial Practice Guide (November 2019) at 59. However, “the Board…more

Corporate Counsel, Inter Partes Review (IPR) Proceeding, Patent Litigation, Patent Trial and Appeal Board, Patents

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Martina Tyreus Hufnal

FTC Challenges More Than 100 Patents as Improperly Listed in Orange Book

On November 7, the Federal Trade Commission announced that it is challenging more than 100 patents held by 10 branded drug companies as improperly or inaccurately listed in the Food and Drug Administration’s Orange Book. The…more

Competition, Enforcement Actions, FDA Approval, Federal Trade Commission (FTC), Food and Drug Administration (FDA)

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James Huguenin-Love Ph.D.

Potential Ways for Avoiding the Presumption of Prosecution History Estoppel of an Allowable Dependent Claim Depending from a Rejected Independent Claim

I. Introduction - The presumption of prosecution history estoppel is difficult to overcome. This presumption typically arises when a claim is rejected over the prior art and is then amended (limited) to overcome the rejection…more

Prosecution History Estoppel

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Hyun Jin In Ph.D.

2023 Post-Grant Annual Report

2023 was a busy year at the Patent Trial and Appeal Board, as post-grant practice continued to evolve at a rapid pace. At the United States Patent and Trademark Office, there were big developments in Director Review and proposed…more

Administrative Procedure Act, Advanced Notice of Proposed Rulemaking (ANPRM), Estoppel, Inter Partes Review (IPR) Proceeding, Obviousness

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Sushil Iyer Ph.D.

Antitrust Issues with "No-Poaching" Agreements

A client is negotiating a software license agreement to license in some information technology (IT) services from a service provider. The IT services were going to be a quantum improvement for our client, and they were investing…more

Corporate Counsel, Department of Justice (DOJ), Employee Retention, Employees, Federal Trade Commission (FTC)

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Tommy Jacks

Criminal Theft of Trade Secrets

Trade secrets are one of the four major types of intellectual property and have many unique features, a number of which we have covered in other blogs. Unlike patents, which can only be enforced by private parties in civil…more

Criminal Liability, Theft, Trade Secrets, Unauthorized Access, Wire Fraud

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Lawrence Jarvis

Everything You Need to Know About Patent Maintenance Fees

What are patent maintenance fees? Patent maintenance fees are mandatory fees that must be paid to the United States Patent and Trademark Office (“USPTO”) at certain time points after a patent issues in order to keep a utility…more

Maintenance Fees, Patents, USPTO

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Karan Jhurani

2022 Post-Grant Annual Report

2022 was a milestone year for the Patent Trial and Appeal Board. In April, Kathi Vidal began her tenure as Director of the United States Patent and Trademark Office with an early focus on promoting increased efficiency at the…more

America Invents Act, Final Written Decisions, Inter Partes Review (IPR) Proceeding, Obviousness, Patent Litigation

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Kerrijane John

Supreme Court to Resolve Copyright Registration Circuit Split

On June 28, the Supreme Court announced that it will address the long-standing circuit split regarding the Copyright Act’s prerequisite for copyright infringement suits. Although a copyright registration is not required for…more

Copyright, Copyright Infringement, Copyright Litigation, Copyright Registration, Corporate Counsel

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Leeron Kalay

What the FTC’s Ban on Noncompete Agreements Means for Trade Secrets

On April 23, the Federal Trade Commission (FTC) issued a final rule that would ban the use of noncompete agreements in most employment contracts nationwide. Hailed by the Commission as a measure to promote competition, protect…more

Confidential Information, Employment Contract, Federal Trade Commission (FTC), Final Rules, Former Employee

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Steven Katz

IP and Cannabis: The Current Landscape

Cannabis is a rapidly growing industry; in 2019, overall sales of cannabis products legal under state law were estimated to be worth $13.6 billion, with an expected increase to $29.7 billion by 2025. While marijuana remains a…more

Cannabidiol (CBD) oil, Cannabis Products, Controlled Substances, Cosmetics, Dietary Supplements

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Sarah Kelleher

Supreme Court Finds BOOKING.COM Protectable; Rejects “Sweeping Rule” Denying Protection to “generic.com” Marks

The Supreme Court held last week that BOOKING.COM—when used in connection with hotel reservation services—is not generic, rejecting the USPTO’s “sweeping rule” that a combination of a generic word and “.com” is generic. The…more

Acquired Distinctiveness, Appeals, Booking.com, Domain Name Registration, Domain Names

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Adam Kessel

Legal Alert: New Local Patent Rule in District of Massachusetts

Effective June 1, 2018, the District of Massachusetts has adopted a new Local Patent Rule 16.6. The new rule is the result of a multi-year process and is a comprehensive revision of the rule. It will apply to all patent cases in…more

Claim Construction, Local Patent Rules, Patent Infringement, Patent Litigation, Patents

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Usman Khan Ph.D.

Navigating SuperGuide at the PTAB

Over the past 20 years, the Federal Circuit’s opinion in SuperGuide Corp. v. DirectTV Enters., Inc., 358 F.3d 870 (Fed. Cir. 2004), which defined the plain and ordinary meaning of the phrase “at least one of” followed by a…more

Claim Construction, Patent Litigation, Patent Trial and Appeal Board, Patents

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Grace Kim

2019 Post-Grant Report

The Patent Trial and Appeal Board (PTAB) remains the forum of choice for challenging the validity of patent claims. However, it is notable that a comparison of 2019 and 2018 statistics reveals about a 30 percent decline in…more

America Invents Act, Patent Trial and Appeal Board, Patents, Post-Grant Review, Trial Practice Guidance

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Patrick King

Navigating SuperGuide at the PTAB

Over the past 20 years, the Federal Circuit’s opinion in SuperGuide Corp. v. DirectTV Enters., Inc., 358 F.3d 870 (Fed. Cir. 2004), which defined the plain and ordinary meaning of the phrase “at least one of” followed by a…more

Claim Construction, Patent Litigation, Patent Trial and Appeal Board, Patents

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Lawrence Kolodney

The Return of Opinions of Counsel in Patent Cases: How Recent Judicial Decisions Have Made Them Relevant Once More

What should a prudent corporate executive do when he or she becomes aware that the corporation’s activities might be alleged to be infringing a United States patent? Some recent Supreme Court decisions have led to a revival of…more

Halo v Pulse, Patent Infringement, Patent Litigation, Patents, Willful Infringement

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Jakub Kopczak

Germany Ratifies UPC Agreement; UP & UPC to Begin 1 June

On February 17, Germany ratified the UPC Agreement, launching the countdown to the beginning of the Unitary Patent and Unified Patent Court. Germany’s ratification means that the Agreement will enter into force on 1 June 2023…more

EU, Germany, Patents, Unified Patent Court, Unitary Patent

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Casey Kraning Ph.D.

Biologics and Biosimilars Landscape: IP, Policy, and Market Developments

In this review, we discuss the most important recent developments in the biosimilars space, including new biosimilar approvals and launches, litigation under the Biologics Price Competition and Innovation Act (BPCIA), post-grant…more

Biologics, Biosimilars, BPCIA, Drug Approvals, FDA Approval

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Jay Kugler DeYoung

Biden Administration Proposes March-In Rights Framework for Pharmaceutical Patents in Effort to Lower Drug Prices

On December 7, the Biden administration announced a proposed framework for determining whether the government may exercise its march-in rights to license pharmaceutical patents to third parties if it determines that the price of…more

Bayh-Dole Act, Biden Administration, Life Sciences, March-in-Rights, Patents

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Steffen Lake

IP and Cannabis: The Current Landscape

Cannabis is a rapidly growing industry; in 2019, overall sales of cannabis products legal under state law were estimated to be worth $13.6 billion, with an expected increase to $29.7 billion by 2025. While marijuana remains a…more

Cannabidiol (CBD) oil, Cannabis Products, Controlled Substances, Cosmetics, Dietary Supplements

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Nan Lan

Texas Patent Litigation Monthly Wrap-Up: January 2023

The Texas patent litigation monthly update for January 2023 summarizes one patent decision that issued from the Western District of Texas. This decision is one of the first Rule 12(b)(6) motions to dismiss granted in a patent…more

Federal Rule 12(b)(6), Patent Infringement, Patent Litigation, Patents, Willful Infringement

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John Lane

New Admission Criteria to Practice Before USPTO Designed to Foster Diversity and Promote Innovation

On May 16, 2023, the United States Patent and Trademark Office published a Federal Register Notice outlining its newly expanded admission criteria for registration to practice before the office. These changes followed an October…more

Admissions, Bar Admission, Comment Period, Request for Admissions, USPTO

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Kim Leung

The Importance of Candor in PTAB Practice

On November 6, 2019, Fish & Richardson Principal Stuart Nelson and Associate Kim Leung hosted the Post-Grant for Practitioners webinar “USPTO Ethics Rules at the PTAB.” The webinar highlighted some of the major ethics rules at…more

Claim Construction, Inter Partes Review (IPR) Proceeding, Patent Trial and Appeal Board, Patents, Real Party in Interest

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Bernhard Lorenz Ph.D.

EPO Enlarged Board of Appeal Raises Bar for Challenging Priority Claims at the EPO

Challenges to the validity of the “Patent Cooperation Treaty joint applicant” have been a problem for many applicants at the European Patent Office. On October 10, 2023, the EPO’s highest authority, the Enlarged Board of Appeal,…more

EU, European Patent Convention, European Patent Office, Paris Convention, Patent Cooperation Treaty

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Terry Mahn

FTC Challenges More Than 100 Patents as Improperly Listed in Orange Book

On November 7, the Federal Trade Commission announced that it is challenging more than 100 patents held by 10 branded drug companies as improperly or inaccurately listed in the Food and Drug Administration’s Orange Book. The…more

Competition, Enforcement Actions, FDA Approval, Federal Trade Commission (FTC), Food and Drug Administration (FDA)

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Chris Marchese

Marking and Pre-Suit Damages: What Happens when a Failure to Mark Is Followed by a Period of Compliance with the Marking Statute?

A question that arises with some frequency in modern patent infringement cases is: Can pre-suit damages be recovered for a time period when the patentee (and any licensee) was in compliance with the marking statute when there…more

Damages, IP License, Non-Practicing Entities, Patent Infringement, Patent Litigation

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Alexander Martin

Texas Patent Litigation Monthly Wrap-Up: May 2024

The Texas Patent Litigation Monthly Wrap-Up for May 2024 covers three decisions addressing amendments to infringement contentions, stays while similar actions proceed, and personal jurisdiction over holding companies…more

Due Process, Federal Rules of Civil Procedure, Fourteenth Amendment, Patent Infringement, Patent Litigation

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Kristen McCallion

U.S. Copyright Office Cancels Registration for AI-Generated Art, Issues AI-Related Registration Guidance

The United States Copyright Office, like other government agencies and private-sector entities, is reckoning with the implications of artificial intelligence. In February, the Office canceled an artist’s copyright registration…more

Artificial Intelligence, Authorship, Copyright, Copyright Applications, Copyright Office

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Douglas McCann

Biden Administration Proposes March-In Rights Framework for Pharmaceutical Patents in Effort to Lower Drug Prices

On December 7, the Biden administration announced a proposed framework for determining whether the government may exercise its march-in rights to license pharmaceutical patents to third parties if it determines that the price of…more

Bayh-Dole Act, Biden Administration, Life Sciences, March-in-Rights, Patents

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Ryan McCarthy

USPTO Updates Eligibility Guidance on AI Inventions

On July 17, the USPTO published an update to the patent eligibility guidance and added three new examples to aid practitioners and examiners in determining whether a claimed invention is eligible subject matter under Section…more

Artificial Intelligence, Black Box, Guidance Update, Inventors, Patent-Eligible Subject Matter

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John McCormick

Chief Wahoo: A Look Back in History

February 14 marks an unofficial end to winter because, as baseball fans know, this is the day when pitchers and catchers report for spring training. In honor of this happy occasion, and being both baseball fans and trademark…more

Logos, MLB, Sports, Trademarks, USPTO

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Madelyn McCormick

The Federal Circuit Weighs in On Hatch-Waxman “Skinny” Label Infringement Dispute

The Hatch-Waxman Act allows a generic drugmaker to rely on a branded drugmaker’s Food and Drug Administration-approved New Drug Application if the generic drugmaker can show that the generic drug has the same active ingredient…more

Contributory Infringement, Hatch-Waxman, Life Sciences, Patent Infringement, Patent Litigation

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Kayleigh McGlynn

Biologics and Biosimilars Landscape: IP, Policy, and Market Developments

In this review, we discuss the most important recent developments in the biosimilars space, including new biosimilar approvals and launches, litigation under the Biologics Price Competition and Innovation Act (BPCIA), post-grant…more

Biologics, Biosimilars, BPCIA, Drug Approvals, FDA Approval

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Anita Meiklejohn Ph.D.

FTC Challenges More Than 100 Patents as Improperly Listed in Orange Book

On November 7, the Federal Trade Commission announced that it is challenging more than 100 patents held by 10 branded drug companies as improperly or inaccurately listed in the Food and Drug Administration’s Orange Book. The…more

Competition, Enforcement Actions, FDA Approval, Federal Trade Commission (FTC), Food and Drug Administration (FDA)

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Cameron Miller

District of Delaware Finds Allergan Patents Invalid for Lack of Written Description and Obviousness-Type Double Patenting in Allergan v. MSN Labs

On September 27, 2023, Judge Richard Andrews, following a three-day bench trial, determined that several patents asserted by Allergan against Sun Pharmaceuticals and MSN Laboratories were invalid for lack of written description…more

Allergan Inc, Obviousness, Obviousness-Type Double Patenting (ODP), Patent Invalidity, Patent Litigation

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Jeremy Monaldo

USPTO Proposes Rules Updating Motion to Amend Practice Before the PTAB

The United States Patent and Trademark Office (USPTO) published a Notice of Proposed Rulemaking (NPRM) today proposing to update its rules governing motions to amend before the Patent Trial and Appeal Board (PTAB)…more

America Invents Act, Comment Period, Inter Partes Review (IPR) Proceeding, Motion to Amend, NPRM

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Susan Morrison

I’m Ready to Sue for Patent Infringement—But First, Do I Have the Right Plaintiffs?

You think you are ready to assert your patent rights. You have done your due diligence, carefully selected the proper defendants, and have selected the proper venue for your case. Now what? What patent plaintiffs often overlook…more

Patent Infringement, Patent Litigation

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Matthew Mosteller

ITC Monthly Wrap-Up: September 2023

This month’s ITC Wrap-Up reviews recent developments in the Commission’s scope of authority to review (1) infringement by “alternative” products and (2) infringement of claims other than those a product was accused of…more

Infringement, International Trade, International Trade Commission (ITC), Investigations, Patent Infringement

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Tina Murphy

Introduction to Patent Term Extensions (PTE)

Patent holders have the right to exclude others from making, using, selling, or offering to sell an invention—but only during the time a patent is in force…more

Food and Drug Administration (FDA), Patent Ownership, Patent Term Extensions, Patents, Pharmaceutical Patents

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Stuart Nelson

Fish Post-Grant Radio: Episode #13: Rick Bisenius

This episode of Fish Post-Grant Radio features Fish attorneys Stuart Nelson – in his final episode as host – and Rick Bisenius, who will take over from Stuart going forward. In it, they discuss major precedential PTAB decisions,…more

America Invents Act, Inter Partes Review (IPR) Proceeding, Motion to Amend, Patent Infringement, Patent Litigation

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Ryan Patrick O'Connor

How the Timing of Director Review May Affect Co-Pending Litigation

Director Review at the Patent Trial and Appeal Board (PTAB) remains a hot topic in patent law. The Director first established an interim process for Director Review in the wake of the Supreme Court’s 2021 decision in United…more

Administrative Procedure, Advisory Committee, Inter Partes Review (IPR) Proceeding, NPRM, Patent Infringement

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Jenifer deWolf Paine

Legal Alert: New York Passes Post-Mortem Right of Publicity Law

The “right of publicity” generally prohibits the commercial use of someone’s name or likeness. There is no federal right of publicity; rather, the right is governed by state law. There is a patchwork of state laws that govern…more

Advertising, Celebrities, Commercial Use, Deceased, Deep Fake

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April Sunyoung Park

ITC Monthly Wrap-Up: April 2023

This month, there were four new complaints filed at the U.S. International Trade Commission…more

Administrative Law Judge (ALJ), International Trade Commission (ITC), Investigations, Multi-Factor Test, Patent Infringement

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Sangki Park

The Top Three Things Foreign Companies Should Keep in Mind When Considering IPR

Being sued for patent infringement in the U.S. can be confusing, especially for foreign companies with limited litigation experience. Even more confusing are the multiple options and venues available for responding to patent…more

Administrative Law Judge (ALJ), Burden of Proof, Foreign Entities, Inter Partes Review (IPR) Proceeding, Litigation Strategies

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M. Angela Parsons Ph.D.

IP and Cannabis: The Current Landscape

Cannabis is a rapidly growing industry; in 2019, overall sales of cannabis products legal under state law were estimated to be worth $13.6 billion, with an expected increase to $29.7 billion by 2025. While marijuana remains a…more

Cannabidiol (CBD) oil, Cannabis Products, Controlled Substances, Cosmetics, Dietary Supplements

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Sarika Patel

Texas Patent Litigation Monthly Wrap-Up: June 2023

Apax Beam Technologies LLC v. ZTE Corporation, No. 2:22-CV-000310JRG-RSP (E.D. Tex. Jun. 14, 2023) Defendants’ Motion to Stay Pending Inter Partes Review - Defendants Samsung Electronics Co, Ltd. and Samsung Electronics…more

FRAND, Inter Partes Review (IPR) Proceeding, Patent Litigation, Patent Trial and Appeal Board, Patents

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Andrew Patrick

USPTO Issues Proposed Rules on Director Review

On April 16, the United States Patent and Trademark Office (USPTO) published a Notice of Proposed Rulemaking (NPRM) regarding Director Review of Patent Trial and Appeal Board (PTAB) decisions…more

Administrative Review, NPRM, Patent Trial and Appeal Board, Patents, Proposed Rules

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Alexander Pechette

What is Patentable Subject Matter?

Patent eligibility is the first of three hurdles to be cleared in obtaining a patent (the other two are novelty and non-obviousness). This post is the first of a series that provides a digest of the law of…more

Patent Act, Patent-Eligible Subject Matter, Patents

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John Pegram

EPO Enlarged Board of Appeal Raises Bar for Challenging Priority Claims at the EPO

Challenges to the validity of the “Patent Cooperation Treaty joint applicant” have been a problem for many applicants at the European Patent Office. On October 10, 2023, the EPO’s highest authority, the Enlarged Board of Appeal,…more

EU, European Patent Convention, European Patent Office, Paris Convention, Patent Cooperation Treaty

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Ralph Phillips

Strategic IP Considerations of Batteries and Energy Storage Solutions

The lithium-ion battery, introduced commercially in 1991, revolutionized the consumer electronics industry. Compared with older battery technologies, the lithium-ion battery was lightweight and compact, had high energy density,…more

Batteries, Biden Administration, Charging Stations, Defend Trade Secrets Act (DTSA), Electric Vehicles

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Aaron Pirouznia

Texas Patent Litigation Monthly Round-Up - March 2022

This post summarizes two recent Eastern District of Texas opinions regarding the award of attorneys’ fees under 35 U.S.C. § 285. Traxcell Technologies, LLC v. AT&T, Inc. et al, 2-17-cv-00718 (EDTX Mar. 29, 2022) (Roy S…more

35 U.S.C. § 285, Attorney's Fees, Damages, Exceptional Case, Patent Infringement

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Michael Portnov

USPTO Says AI-Assisted Inventions Not Categorically Unpatentable in New Guidance

Is an invention developed with the assistance of artificial intelligence (AI) patentable? On February 13, the United States Patent and Trademark Office (USPTO) issued guidance that helps to answer this question while also…more

Artificial Intelligence, Computer-Related Inventions, Innovative Technology, Intellectual Property Protection, Inventions

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Katherine Prescott

What the FTC’s Ban on Noncompete Agreements Means for Trade Secrets

On April 23, the Federal Trade Commission (FTC) issued a final rule that would ban the use of noncompete agreements in most employment contracts nationwide. Hailed by the Commission as a measure to promote competition, protect…more

Confidential Information, Employment Contract, Federal Trade Commission (FTC), Final Rules, Former Employee

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Elizabeth Ranks

Massachusetts Patent Litigation Wrap Up – December 2017

This post is part of a monthly series summarizing notable activity in patent litigation in the District of Massachusetts, including short summaries of substantive orders. StrikeForce Techs., Inc. v. Vasco Data Security, Inc.,…more

Motion to Dismiss, Motion To Stay, Patent Infringement, Patent Invalidity, Patent Litigation

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Tim Rawson

Texas Patent Litigation Monthly Wrap-Up: July 2024

Our Texas Patent Litigation Monthly Wrap-Up for July 2024 covers three decisions of interest from the Eastern District of Texas granting motions related to subject matter eligibility, stays pending inter partes review (IPR), and…more

Alice/Mayo, Claim Construction, Ex Partes Reexamination, Inter Partes Review (IPR) Proceeding, Patent Infringement

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Katherine Reardon

Where Juries Come From

It’s the first day of trial and your team is ready to go. Typically, 48 citizens stream into the courtroom. A small subset of those people will determine your fate—and whether your business unit will be satisfied with two years…more

Juror, Jury Trial, Trial Practice Guidance, Trial Preparation

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Deanna Reichel

Section 101: Cert. Denied … Now What?

Since the Supreme Court’s decisions in Mayo Collaborative Services, LLC v. Prometheus Laboratories, Inc., 566 U.S. 66 (2012) and Alice Corp. v. CLS Bank, 573 U.S. 208 (2014), lower courts and the United States Patent and…more

Denial of Certiorari, Diagnostic Method, Patent Litigation, Patent-Eligible Subject Matter, Patents

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W. Karl Renner

USPTO Issues Proposed Rules on Discretionary Denial in PTAB Proceedings

One year ago, the United States Patent and Trademark Office (USPTO) issued an Advance Notice of Proposed Rulemaking (ANPRM) that set forth several ideas related to America Invents Act (AIA) proceedings before the Patent Trial…more

Administrative Procedure, Advanced Notice of Proposed Rulemaking (ANPRM), America Invents Act, Inter Partes Review (IPR) Proceeding, NPRM

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Grant Rice, Ph.D.

How Biosimilars Are Approved and Litigated: Patent Dance Timeline

A biosimilar is a biological product that is highly similar to and has no clinically meaningful differences from an FDA-approved reference biological product. Biosimilar applicants have a number of choices to make on the path to…more

Biologics, Biosimilars, BPCIA, Commercial Marketing, Food and Drug Administration (FDA)

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Oliver Richards

Fish Obtains First PGR Reversal at Federal Circuit in Altaire Pharmaceuticals, Inc. v. Paragon Bioteck, Inc.

Fish and Richardson has obtained the first appellate reversal of a Post-Grant Review (PGR) proceeding at the United States Court of Appeals for the Federal Circuit since the proceedings were first implemented in 2012. Fish’s…more

Patent Litigation, Patent Trial and Appeal Board, Patents, Pharmaceutical Patents, Post-Grant Review

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Timothy Riffe

PTAB Designates Previous Board Decision in Westlake Services v. Credit Acceptance as Precedential

On January 12, 2016, the Patent Trial and Appeal Board (PTAB) designated as precedential a previous Board decision in Westlake Services, LLC v. Credit Acceptance Corp., CBM2014-00176, Paper 28 (PTAB May 14, 2015), clarifying the…more

Covered Business Method Patents, Estoppel, Patent Trial and Appeal Board, Patents

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Thomas Rozylowicz

2023 Post-Grant Annual Report

2023 was a busy year at the Patent Trial and Appeal Board, as post-grant practice continued to evolve at a rapid pace. At the United States Patent and Trademark Office, there were big developments in Director Review and proposed…more

Administrative Procedure Act, Advanced Notice of Proposed Rulemaking (ANPRM), Estoppel, Inter Partes Review (IPR) Proceeding, Obviousness

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Ethan Rubin

Ex Parte Seizures Under the DTSA: A Drastic Trade Secret Remedy

Here, we look at the Defend Trade Secrets Act (DTSA)’s provision of injunctive relief. Specifically, the DTSA allows trade secret plaintiffs to request a unique remedy — an ex parte seizure of the defendant’s property…more

Asset Seizure, Defend Trade Secrets Act (DTSA), Ex Parte, Intellectual Property Protection, Misappropriation

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Jeremy Saks

I’m Ready to Sue for Patent Infringement—But First, Do I Have the Right Plaintiffs?

You think you are ready to assert your patent rights. You have done your due diligence, carefully selected the proper defendants, and have selected the proper venue for your case. Now what? What patent plaintiffs often overlook…more

Patent Infringement, Patent Litigation

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Kristi Sawert, Ph.D.

How the Timing of Director Review May Affect Co-Pending Litigation

Director Review at the Patent Trial and Appeal Board (PTAB) remains a hot topic in patent law. The Director first established an interim process for Director Review in the wake of the Supreme Court’s 2021 decision in United…more

Administrative Procedure, Advisory Committee, Inter Partes Review (IPR) Proceeding, NPRM, Patent Infringement

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Justin Sears Ph.D.

Preparing Your Company for Hatch-Waxman

The Hatch-Waxman Act regulates the relationship between branded and generic drugmakers and attempts to strike a balance between two competing policy interests — encouraging pioneering drug development and facilitating market…more

Best Practices, Food and Drug Administration (FDA), Generic Drugs, Hatch-Waxman, Intellectual Property Protection

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Adil Shaikh

Texas Patent Litigation Monthly Wrap-Up: February 2023

This post summarizes some of the significant developments in the Western District of Texas and the Eastern District of Texas for the month of February 2023…more

Apple, Patent Litigation, Patents, Samsung, Toyota

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Melissa Shannon

Need-to-Knows of the New Copyright Claims Board for Small-Value Copyright Claims

The Copyright Claims Board is a new forum for copyright holders to pursue straightforward, low-economic-value claims related to copyright infringement. The CCB may be an attractive option for copyright owners who are priced out…more

Administrative Review Board, Copyright, Copyright Infringement, Copyright Office, Dispute Resolution

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Jillian Shapiro Ph.D.

Biden Administration Proposes March-In Rights Framework for Pharmaceutical Patents in Effort to Lower Drug Prices

On December 7, the Biden administration announced a proposed framework for determining whether the government may exercise its march-in rights to license pharmaceutical patents to third parties if it determines that the price of…more

Bayh-Dole Act, Biden Administration, Life Sciences, March-in-Rights, Patents

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Michael Shepherd

Federal Circuit Finds Conventional Components Can Provide a Technological Advantage at Alice Step 1

On September 9, the Federal Circuit reversed a Northern District of California decision that invalidated two video camera patents as being directed to patent-ineligible abstract ideas under 35 U.S.C. § 101. Contour IP Holding,…more

Abstract Ideas, Cameras, CLS Bank v Alice Corp, Patent Litigation, Patent-Eligible Subject Matter

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Jeffrey Shneidman Ph.D.

The Defend Trade Secrets Act: The Year in Numbers

On May 11, 2016, President Barack Obama signed into law the Defend Trade Secrets Act (DTSA). Before the passage of the DTSA, each state had its own trade secret regime, whether through some variation of the Uniform Trade…more

Corporate Counsel, Defend Trade Secrets Act (DTSA), Misappropriation, Trade Secrets, Uniform Trade Secrets Acts

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Jonathan Singer

Section 101: Cert. Denied … Now What?

Since the Supreme Court’s decisions in Mayo Collaborative Services, LLC v. Prometheus Laboratories, Inc., 566 U.S. 66 (2012) and Alice Corp. v. CLS Bank, 573 U.S. 208 (2014), lower courts and the United States Patent and…more

Denial of Certiorari, Diagnostic Method, Patent Litigation, Patent-Eligible Subject Matter, Patents

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Jared Smith

Five Tactics for Cybersecurity Companies to Defeat Patent Infringement Claims

Navigating patent infringement claims requires a deep understanding of both the legal landscape and the specifics of the technology at stake, especially in the fast-evolving cybersecurity sector. Creative litigation strategies…more

Administrative Law Judge (ALJ), Cybersecurity, Defense Strategies, Discovery, Federal Rules of Civil Procedure

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Seth Sproul

Unlocking California’s Trade Secret Identification Requirement Under California Code of Civil Procedure Sec. 2019.210 – Part 2

California trade secret law presents a unique statutory framework among state and federal trade secret laws that requires plaintiffs to identify the misappropriated trade secrets before discovery commences. A previous post…more

Breach of Contract, California, Confidential Information, Discovery, Misappropriation

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Ryan Steinman

A Lucky Day for Lucky Brand: U.S. Supreme Court Rejects Second Circuit's Defense Preclusion Test - The Court rules in favor of Lucky Brand Dungarees, Inc. in a decades-long trademark dispute with Marcel Fashions Group, Inc.

On May 14, 2020, the U.S. Supreme Court ruled in Lucky Brand Dungarees Inc., et al. v. Marcel Fashions Group, Inc. that Lucky Brand was not precluded from raising a defense that it could have raised in a previous trademark…more

Claim Preclusion, Collateral Estoppel, Counterclaims, Defense Preclusion, Fashion Branding

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Nicholas Stephens

USPTO Issues Proposed Rules on Discretionary Denial in PTAB Proceedings

One year ago, the United States Patent and Trademark Office (USPTO) issued an Advance Notice of Proposed Rulemaking (ANPRM) that set forth several ideas related to America Invents Act (AIA) proceedings before the Patent Trial…more

Administrative Procedure, Advanced Notice of Proposed Rulemaking (ANPRM), America Invents Act, Inter Partes Review (IPR) Proceeding, NPRM

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Menglin Sun

ITC Monthly Wrap-Up: January 2024

This month’s ITC wrap-up focuses on an initial determination in an investigation regarding constitutional standing, which is a requirement at the Commission as in federal court…more

Administrative Law Judge (ALJ), International Trade Commission (ITC), Investigations, IP License, Patent Infringement

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Rodeen Talebi

Texas Patent Litigation Monthly Wrap-Up: April 2023

Four subjects stood out in patent litigation in Texas in April 2023: (1) applicability of the customer-suit exception to the first-to-file rule; (2) the level of ties a reasonable royalty methodology must have to the facts of…more

Estoppel, First-to-File, Inter Partes Reexamination, Inter Partes Review (IPR) Proceeding, Patent Infringement

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John Thornburgh

Post-Trial Motions: No Rest for the Post-Trial Attorney

A party’s case-in-chief is closed or a verdict has just been delivered, and now it’s time for a variety of critically important post-trial motions to preserve a victory or overturn a defeat, or at least to preserve the right to…more

JMOL, Post Trial Motions

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John Thuermer

ITC Monthly Wrap-Up: June 2023

In June, complainants filed four complainants with the Commission—Certain Portable Battery Jump Starters and Components Thereof (II), Inv. No. 337-TA-1359; Certain Semiconductor Devices and Products Containing the Same, Inv. No…more

International Trade Commission (ITC), Misappropriation, Patent Litigation, Patents, Pharmaceutical Industry

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Jacqueline Tio

ITC Litigation: How Discovery in the ITC is Different from Federal Court

As we previously discussed in our post outlining the timeline of a typical Section 337 investigation, discovery proceeds very quickly. It commences the day after the Notice of Investigation is published in the Federal Register…more

Discovery, International Trade Commission (ITC), Investigations, Section 337, Young Lawyers

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Daniel Tishman

ITC Monthly Wrap-Up: August 2022

In August, four complainants filed five new complaints with the Commission: ..Purple Innovation, LLC, sued numerous respondents in Certain Pillows and Seat Cushions, Components Thereof, and Packaging Thereof, Inv. No…more

Canon, Google, International Trade Commission (ITC), Patent Infringement, Patent Litigation

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Joseph Valentino Ph.D.

USPTO Launches Semiconductor Technology Pilot Program

On December 1, the United States Patent and Trademark Office launched the Semiconductor Technology Pilot Program. As part of the Office’s efforts to support the Creating Helpful Incentives to Produce Semiconductors (CHIPS) Act…more

Good Faith, Inventions, Inventors, Patent Applications, Patents

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Michael Vincent

EDTX & NDTX Monthly Wrap-Up – February 2021

This month, the Eastern District of Texas issued four opinions across two cases that considered motions to strike portions of expert reports that were based on allegedly untimely disclosures…more

Discovery, Mobile Apps, Patent Infringement, Patent Litigation, Patents

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Christopher von Gunten

Survey Shows Trends in PTAB’s Willingness to Institute Multiple Petitions

The Consolidated Trial Practice Guide states that, “[t]o date, a substantial majority of patents have been challenged with a single petition.” Consolidated Trial Practice Guide (November 2019) at 59. However, “the Board…more

Corporate Counsel, Inter Partes Review (IPR) Proceeding, Patent Litigation, Patent Trial and Appeal Board, Patents

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Cynthia Johnson Walden

USPTO Warns Trademark Applicants to Beware of Spoofed Calls

The United States Patent and Trademark Office is reminding trademark applicants to beware of “spoofed” calls that impersonate the Office. Spoofing occurs when phone scammers attempt to fool recipients into providing personal…more

Risk Alert, Scams, Spoofing, USPTO

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Cheryl Wang

How Biosimilars Are Approved and Litigated: Patent Dance Timeline

A biosimilar is a biological product that is highly similar to and has no clinically meaningful differences from an FDA-approved reference biological product. Biosimilar applicants have a number of choices to make on the path to…more

Biologics, Biosimilars, BPCIA, Commercial Marketing, Food and Drug Administration (FDA)

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Yao Wang Ph.D.

2019 Post-Grant Report

The Patent Trial and Appeal Board (PTAB) remains the forum of choice for challenging the validity of patent claims. However, it is notable that a comparison of 2019 and 2018 statistics reveals about a 30 percent decline in…more

America Invents Act, Patent Trial and Appeal Board, Patents, Post-Grant Review, Trial Practice Guidance

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Karrie Wheatley Ph.D.

Generic Drug Labeling and Induced Patent Infringement

For every new drug application, the Hatch-Waxman Act requires pharmaceutical companies to identify each patent that claims the drug, its formulation, or a method of using it…more

Labeling, Patent Infringement, Pharmaceutical Industry

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Dexter Whitley Ph.D.

Preparing Your Company for Hatch-Waxman

The Hatch-Waxman Act regulates the relationship between branded and generic drugmakers and attempts to strike a balance between two competing policy interests — encouraging pioneering drug development and facilitating market…more

Best Practices, Food and Drug Administration (FDA), Generic Drugs, Hatch-Waxman, Intellectual Property Protection

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Laura Whitworth

ITC Monthly Wrap-Up: February 2024

In February, the International Trade Commission (ITC) instituted three new Section 337 investigations: Certain Oil Vaporizing Devices, Components Thereof, and Products Containing the Same, 337-TA-1392; Certain Network Equipment…more

Indefiniteness, International Trade Commission (ITC), Markman Hearing, Patent Invalidity, Patents

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Jack Wilson IV

ITC Monthly Wrap-Up: November 2023

This month’s International Trade Commission wrap-up focuses on the circumstances in which a complainant can amend its complaint. In particular, on November 2, 2023, Administrative Law Judge Moore denied a complainant’s motion…more

Administrative Law Judge (ALJ), False Advertising, Intellectual Property Protection, International Trade Commission (ITC), Lanham Act

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Jason Wolff

Patent Local Rules: Knowing Them Well Can Make Litigating Your Case Smoother

Federal district courts throughout the country have enacted “patent local rules” that streamline how patent cases are litigated. Here we provide a brief description of what they are, how they are applied, and some reasons why…more

Local Rules, Patent Litigation, Patents

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Qiuyi (Autumn) Wu

Extraterritorial Application of the Defend Trade Secrets Act

Can you be sued for misappropriation of trade secrets in the U.S. based on foreign activities? U.S. courts are taking an increasingly broad view of the scope of U.S. trade secret law, and have allowed trade secret cases to…more

Defend Trade Secrets Act (DTSA), Extraterritoriality Rules, Misappropriation, Trade Secrets

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Lance Wyatt

Judge Connolly’s New Standing Order Requiring Disclosure Behind Patent Assertion Entities Is Showing It Has Teeth

On August 17, 2022, Chief Judge Colm F. Connolly of the District of Delaware issued an order in which he questioned the sufficiency of the plaintiff’s disclosure of financially interested parties in Longbeam Technologies LLC. v…more

Disclosure Requirements, Federal Rules of Civil Procedure, Federal Trade Commission (FTC), Fee-Shifting, IP License

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James Yang

Federal Circuit Panel Holds Hatch-Waxman Venue Under the Second Prong of § 1400(b) is Based on Actions Related to ANDA Submission

Valeant Pharmaceuticals North America LLC v. Mylan Pharmaceuticals Inc. Last Thursday, a Federal Circuit panel issued a decision applying a narrow reading of the patent venue statute, 28 U.S.C. § 1400(b), in a Hatch-Waxman case…more

Abbreviated New Drug Application (ANDA), Generic Drugs, Hatch-Waxman, Mylan Pharmaceuticals, Patent Infringement

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Won Yoon

Navigating SuperGuide at the PTAB

Over the past 20 years, the Federal Circuit’s opinion in SuperGuide Corp. v. DirectTV Enters., Inc., 358 F.3d 870 (Fed. Cir. 2004), which defined the plain and ordinary meaning of the phrase “at least one of” followed by a…more

Claim Construction, Patent Litigation, Patent Trial and Appeal Board, Patents

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Jan Zecher Ph.D.

Minimizing Patent TRO and PI Risk in Europe

Do you fear the possibility of a temporary restraining order or a preliminary injunction involving patent infringement allegations in Europe? Those provisional measures are more common in Europe than in the United States…more

EU, Jurisdiction, Patent Infringement, Patent Litigation, Patents

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Michael Zoppo

The Patent Litigation Process: The Complaint

Like all litigation, patent litigation begins when a plaintiff files a complaint against a defendant. Typically, a patentee or a licensee files a complaint for patent infringement. When drafting a complaint, the plaintiff must…more

Litigation Strategies, Patent Infringement, Patent Litigation, Patents, Subject Matter Jurisdiction

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