Author Info for Fitch, Even, Tabin & Flannery LLP

Caroline Albright

Federal Circuit Will Not Read Safety and Efficacy Limitations into Pharma Method Claims

On July 24, in United Therapeutics Corporation v. Liquidia Technologies, Inc., the Federal Circuit addressed whether safety and efficacy are required for pharmaceutical method claims to be sufficiently enabled and supported by…more

Abbreviated New Drug Application (ANDA), Efficacy Claims, Patent Infringement, Patent Validity, Pharmaceutical Industry

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Michael Anderson

[Webinar] Full Disclosure About Non-Disclosure Agreements - January 31st, 9:00 am - 10:00 am PST

Non-disclosure agreements (NDA) are often perceived as the simplest and easiest of agreements. Many practitioners have their one favorite form and observe a “one size fits all” approach to its use. NDA’s, however, serve to…more

Confidential Information, Confidentiality Agreements, Continuing Legal Education, Contract Drafting, Non-Disclosure Agreement

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Timothy Baumann

IP Alert: FTC Announces Rule Banning Noncompetes

The Federal Trade Commission (FTC) recently issued a final rule that bans noncompete clauses (“noncompetes”) nationwide. The FTC believes the new rule will protect the ability of workers to change jobs, increase innovation, and…more

Corporate Executives, Employment Contract, Federal Bans, Federal Trade Commission (FTC), Final Rules

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Mark Borsos

Reliance on Obvious Clerical Error Does Not Avoid Willfulness

The Federal Circuit’s recent decision in Pavo Solutions LLC v. Kingston Technology Company, Inc. sheds light on situations where it is appropriate for a court to rewrite claim language to preserve the drafter’s intent. The case…more

Clerical Errors, Functional Claim Language, Patent Infringement, Patent Prosecution, Patents

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Kendrew Colton

Calculating Patent Term Extension for FDA Delay: Original Patent or Reissue Patent Issue Date?

The Federal Circuit appeal in Merck Sharp & Dohme B.V., Merck Sharp & Dohme, LLC v. Aurobindo Pharma USA, Inc. et al., concerns whether patent term extension (PTE) for regulatory delay, in particular delay for FDA drug approval,…more

Appeals, FDA Approval, Food and Drug Administration (FDA), Intellectual Property Protection, Patent Litigation

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Alvaro Cure Dominguez

Federal Circuit Warns Against Patent Owner Sandbagging in IPR Claim Construction

On August 7, in Axonics, Inc. v. Medtronic, Inc., the Federal Circuit held that the Patent Trial and Appeal Board (PTAB) was required to consider an inter partes review (IPR) petitioner’s arguments that were raised for the first…more

Appeals, Claim Construction, Evidentiary Standards, Inter Partes Review (IPR) Proceeding, Patent Litigation

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Zachary Van Engen

Federal Circuit Holds Operating Manuals Disclosed with Confidentiality Restrictions to be Prior Art

On February 8, in Weber, Inc. v. Provisur Technologies, Inc., the Federal Circuit reversed the Patent Trial and Appeal Board (PTAB) and held that Weber’s operating manuals are prior art printed publications despite their limited…more

Confidential Information, Corporate Counsel, Inter Partes Review (IPR) Proceeding, Patent Infringement, Patent Litigation

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Mary Fetsco

[Webinar] 180 Days of UPC: How It Started… How It’s Going… - November 29th, 9:00 am - 10:00 am PST

Please join Fitch Even for a free webinar, “180 Days of UPC: How It Started… How It’s Going…,” on Wednesday, November 29, at 9:00 a.m. PST / 10:00 a.m. MST / 11:00 a.m. CST / 12 Noon EST. The Unified Patent Court (UPC) went…more

Continuing Legal Education, Enforcement Actions, EU, European Patent Office, Intellectual Property Litigation

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Karl Fink

Stock Ownership Leads to Vacatur of $2.75B District Court Judgment

On June 23, in Centripetal Networks, Inc. v. Cisco Systems Inc., the Federal Circuit vacated judgment of the district court because stock held by the judge’s wife violated the recusal statute and was not harmless error. The…more

Cisco, Damages, Divestiture, Recusal, Stock Ownership

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Steven Freeland

Federal Circuit Overrules Previous Obviousness Rosen-Durling Test for Design Patents

On May 21, the Federal Circuit, in an en banc decision of LKQ Corp. v. GM Global Tech. Operations LLC, has overruled the Rosen-Durling test applied in evaluating obviousness of design patents. Instead, the CAFC applied the…more

Design Patent, En Banc Review, Graham Factors, Obviousness, Patent Litigation

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Paul Henkelmann

IP Alert: USPTO Proposes New Rules for AIA Trial Practice

On April 18, the USPTO announced a Notice of Proposed Rulemaking (“Notice”), which sets forth proposed rules affecting AIA trial proceedings for public comment. These proposed rules relate primarily to how the Patent Trial and…more

Briefing Schedule, Discretionary Functions, Inter Partes Review (IPR) Proceeding, Joinder, Notice of Proposed Rulemaking (NOPR)

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Brian Herrmann

[Webinar] Discretionary Denial and Beyond: Recent Developments in AIA Trial Practice - July 27th, 9:00 am - 10:00 am PDT

Since the introduction of inter partes review proceedings in 2012, AIA trial practice has been constantly evolving and the USPTO has signaled that big changes may be ahead. Starting with the USPTO director’s 2022 memorandum…more

Advanced Notice of Proposed Rulemaking (ANPRM), America Invents Act, Continuing Legal Education, Inter Partes Review (IPR) Proceeding, Patent Litigation

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David Kogan

Government’s Royalty-Free Licensing Rights Affirmed Over USF Patent

On February 9, in University of South Florida Board of Trustees v. United States, the Federal Circuit upheld royalty-free license rights of the U.S. government over a University of South Florida (USF) patent directed to…more

Alice/Mayo, Appeals, Bayh-Dole Act, Grants, Inventions

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Thomas Lebens

PTAB’s Structure and Funding Pass Due Process Muster

On October 13, in Mobility Workx v. Unified Patents, LLC, the Federal Circuit rejected a series of due process challenges to the structure of the Patent Trial and Appeal Board (PTAB), leaving the PTAB to continue with business…more

Administrative Patent Judges, Administrative Procedure Act, America Invents Act, Appeals, Appointments Clause

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Nikki Little

Federal Circuit Rejects Patentee’s Attempt to Skirt Local Patent Rules in Duplicative Litigation

On September 7, in Arendi S.A.R.L. v. LG Electronics Inc., a Federal Circuit panel affirmed the District of Delaware’s decision dismissing a patent infringement action as duplicative of a co-pending, earlier-filed action. …more

Appeals, Disclosure Requirements, Dismissals, Failure To Disclose, Local Patent Rules

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John Lyhus

Trademark Modernization Act Provides Cancellation of Unused Marks

The Trademark Modernization Act (TMA) came into force December 18, 2021. Key provisions of the TMA enlarge options for cancelling a trademark registration in whole or in part by targeting nonuse of the registered mark for some…more

Ex Partes Reexamination, Expungement, Non-Use of Trademarks, Trademark Cancellation, Trademark Infringement

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Timothy Maloney

[Webinar] Leveraging Separate IPR Counsel to Maximize Litigation Success - November 18th, 9:00 am - 10:00 am PST

Most patents challenged in inter partes review (IPR) proceedings at the Patent Trial and Appeal Board (PTAB) are involved in co-pending litigation. A threshold question is whether litigation counsel will also handle the IPR…more

Continuing Legal Education, Intellectual Property Litigation, Intellectual Property Protection, Inter Partes Review (IPR) Proceeding, Litigation Strategies

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Joseph Marinelli

Importers Entitled to See Confidential Evidence Used Against Them in Antidumping Proceedings

On July 27, in Royal Brush Manufacturing, Inc. v. United States, the Federal Circuit held that importers have a right to see the evidence used against them in antidumping proceedings by the Customs and Border Patrol (CBP),…more

Anti-Dumping Duty, Confidential Information, Country of Origin, Court of International Trade, Customs and Border Protection

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Calista Mitchell

USPTO Issues Guidance on Prophetic Examples

On July 1, the USPTO published a notice in the Federal Register with guidance regarding the proper presentation of prophetic and working examples in a patent application. Prophetic examples (sometimes referred to as “paper…more

Federal Register, Good Faith, New Guidance, Patent Applications, Patents

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Danielle Muñoz

[Webinar] The Latest Changes in Copyrights & Trademarks - November 2nd, 9:00 am - 10:00 am PDT

Please join Fitch Even for a free webinar, “The Latest Changes in Copyrights & Trademarks,” on November 2 at 9:00 a.m. PDT / 10:00 a.m. MDT / 11:00 a.m. CDT / 12 noon EDT. In 2020, legislation was passed that changes the…more

CASE Act, Continuing Legal Education, Copyright, Copyright Infringement, Copyright Litigation

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Amanda Lowerre O'Donnell

EPO Decision G1/19 Addresses Patentability of Computer-Implemented Simulations in Europe

On March 10, in decision G1/19, the European Patent Office (EPO) Enlarged Board of Appeal held that computer-implemented simulations are not per se unpatentable and warrant the same treatment as other computer-implemented…more

Appeals, Computer-Related Inventions, EU, European Patent Office, Patent Applications

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Steven Parmelee

IP Alert: Are Terminal Disclaimers Destined for Termination?

July 17, 2024 Applicant-submitted terminal disclaimers tie similar co-owned patents to a common expiration date and typically serve to ensure that a later-filed continuation application lives no longer than its parent. The USPTO…more

Chevron Deference, Intellectual Property Protection, Loper Bright Enterprises v Raimondo, Patents, SCOTUS

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Joseph Shipley

[Webinar] 180 Days of UPC: How It Started… How It’s Going… - November 29th, 9:00 am - 10:00 am PST

Please join Fitch Even for a free webinar, “180 Days of UPC: How It Started… How It’s Going…,” on Wednesday, November 29, at 9:00 a.m. PST / 10:00 a.m. MST / 11:00 a.m. CST / 12 Noon EST. The Unified Patent Court (UPC) went…more

Continuing Legal Education, Enforcement Actions, EU, European Patent Office, Intellectual Property Litigation

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Brett Smith

Patent Term Adjustment is Not Available for Unsuccessful Appeals

On September 14, in SawStop Holding LLC v. Vidal, the Federal Circuit held that the owner of two patents was not entitled to patent term adjustment (PTA) based on delays associated with appeals of the USPTO’s initial…more

Appeals, Claim Amendments, Double Patent, Patent Litigation, Patent Term Adjustment

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Hyojeong (Sonny) Son

Federal Circuit Addresses Burden of Proof for IPR Estoppel

On April 3, in Ironburg Inventions Ltd. v. Valve Corp., the Federal Circuit articulated a standard for applying inter partes review (IPR) estoppel on grounds a petitioner “reasonably could have raised” under 35 U.S.C. §…more

Burden of Proof, Estoppel, Inter Partes Review (IPR) Proceeding, Patent Invalidity, Patent Litigation

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Kerianne Strachan

Federal Circuit Clarifies Standard for Tacking Doctrine in Trademark Applications

On April 4, in Charles Bertini v. Apple Inc., the Federal Circuit held that a trademark applicant cannot establish priority for every good or service in its application merely because it has priority through tacking in a single…more

Goods or Services, Intellectual Property Protection, Trademark Application, Trademark Ownership, Trademark Registration

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Jacqueline Thompson

Federal Circuit Takes Claim Preclusion by the Horns

On July 5, in Inguran, LLC v. ABS Global, Inc, the Federal Circuit issued an opinion clarifying the preclusive effect of a direct infringement claim on subsequent inducement claims. The court held that an earlier direct…more

Cause of Action Accrual, Claim Preclusion, Direct Infringement, Inducement

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Giles Turner

IP Alert: Federal Circuit Holds Priority Documents Lack Direction to Support Claims

On March 6, in Regents of the University of Minnesota v. Gilead Sciences, Inc., the Federal Circuit affirmed a decision by the Patent Trial and Appeal Board (PTAB) in an inter partes review (IPR) invalidating claims of the…more

Appeals, Corporate Counsel, Gilead Sciences, Inter Partes Review (IPR) Proceeding, Patent Trial and Appeal Board

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Jonathan Urbanek

Rehearing Reverses Earlier Federal Circuit Decision Finding Silence Supported Negative Claim Limitation

On June 21, in Novartis Pharmaceuticals Corporation v. Accord Healthcare, Inc., a reshuffled Federal Circuit panel reversed course on rehearing to find that a negative claim limitation was not supported by silence in the…more

Abbreviated New Drug Application (ANDA), Appeals, Patents, Pharmaceutical Patents, Prior Art

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Karen Wang

Federal Circuit Addresses Burden of Proof for IPR Estoppel

On April 3, in Ironburg Inventions Ltd. v. Valve Corp., the Federal Circuit articulated a standard for applying inter partes review (IPR) estoppel on grounds a petitioner “reasonably could have raised” under 35 U.S.C. §…more

Burden of Proof, Estoppel, Inter Partes Review (IPR) Proceeding, Patent Invalidity, Patent Litigation

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