Supplemental Examination: A Tool Worth Further Consideration - Patents: Post-Grant Podcast
Six Things You Should Know About Inter Partes Review
JONES DAY TALKS®: PTAB Litigation Blog Reaches 500 Posts ... and the PTAB Reacts to COVID-19
Podcast: IP Life Sciences Landscape: Aiding Orange and Purple Book Patent Owners in Developing PTAB Survival Skills
The hypothetical person with ordinary skill in the art will have a certain amount of requisite experience in the subject matter of the patent at the time of the invention of the patent....more
In Pacific Biosciences of California, Inc. v. Personal Genomics Taiwan, Inc., the Federal Circuit recently affirmed two PTAB decisions in IPRs filed by Pacific Biosciences of California, Inc. (PacBio) that challenged a...more
The US Court of Appeals for the Federal Circuit affirmed the Patent Trial & Appeal Board’s patentability determination, finding that the patent challenger waived an argument it attempted to incorporate by reference to another...more
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...more
On remand from the Supreme Court, the US Court of Appeals for the Federal Circuit reconsidered the boundaries of the doctrine of assignor estoppel. The Federal Circuit found that the patent assignor was estopped from...more
Intel Corp. petitioned for six inter partes reviews (IPRs) challenging the validity of U.S. Patent No. 9,608,675, a patent directed to power management in wireless devices. In each proceeding, Intel and patent-owner Qualcomm...more
[co-author: Jamie Dohopolski] Last year, the continued global COVID-19 pandemic forced American courts to largely continue the procedures set in place in 2020. The U.S. Court of Appeals for the Federal Circuit was no...more
In Kyocera Senco Industrial Tools Inc. v. International Trade Commission, the Federal Circuit held in a precedential opinion that expert witnesses must at least have ordinary skill in the art. Because Kyocera’s expert did not...more
In an appeal, Novartis Pharmaceuticals v. Accord Healthcare, Inc., the issue of whether a patent provides sufficient written description of a negative limitation split the panel at the Federal Circuit. Novartis...more
The PTAB Strategies and Insights newsletter provides timely updates and insights into how best to handle proceedings at the USPTO. It is designed to increase return on investment for all stakeholders looking at the entire...more
Kannuu Pty Ltd. v. Samsung Electronics Co., Appeal No. 2021-1638 (Fed. Cir. Oct. 7, 2021) - In our Case of the Week, the Federal Circuit addressed whether a forum selection clause in an NDA may prohibit a party from...more
[co-author: Jay Bober, Summer Associate] The PTAB Strategies and Insights newsletter provides timely updates and insights into how best to handle proceedings at the USPTO. It is designed to increase return on investment for...more
Don’t Panic - Facing an inter partes review (IPR) challenge is a new experience for many patent owners, even though IPRs have quickly become a preferred avenue for accused infringers and other interested parties to challenge...more
Update: Wyeth’s appeal was discontinued. On April 30, 2021, the Federal Court issued its decision relating to the validity of three patents relating to Pfizer’s PREVNAR 13, a 13-valent pneumococcal polysaccharide protein...more
Claim construction is the heart of validity and infringement for almost every patent proceeding. Yet, at least two recent cert petitions brought from separate cases by Intel and Akeva have argued the Federal Circuit has two...more
[co-author: Yuke Wang, Patent Agent] The PTAB Strategies and Insights newsletter provides timely updates and insights into how best to handle proceedings at the USPTO. It is designed to increase return on investment for all...more
The Supreme Court heard oral argument last week in Minerva Surgical Inc. v. Hologic, Inc. over the issue of assignor estoppel. As a reminder, the case arose in an infringement suit over U.S. Patent Nos. 6,782,183 and...more
Rain Computing, Inc. v. Samsung Electronics America, Inc., Appeal Nos. 2020-1646, -1656 (Fed. Cir. Mar. 2, 2021) - Our Case of the Week focuses on the issue of indefiniteness, and particularly, terms that are construed as...more
Indefiniteness under U.S. patent law is a failure to satisfy the statutory requirements of 35 U.S.C. § 112(b), which reads: "The specification shall conclude with one or more claims particularly pointing out and distinctly...more
The Federal Circuit issued a decision in Baxalta Inc. v. Genentech, Inc., ___ F.3d __, 2020 WL 5048435 (Fed. Cir. Aug. 27, 2020) construing the terms “antibody” and “antibody fragment.” According to the decision: Antibody:...more
On August 3, 2020, in Bio-Rad Labs., Inc. v. 10X Genomics, Inc., the Federal Circuit clarified its decision in TomTom v. Adolph regarding limiting claim preambles, holding that the preamble of the claim at issue could not be...more
The Federal Circuit recently reaffirmed a case where common sense was used to supply a missing element in a § 103 obviousness analysis. On June 26, 2020, the Federal Circuit issued a decision in B/E Aerospace, Inc. v. C&D...more
In Think Prod., Inc. v. ACCO Brands Corp., No. 18-CV-07506, 2019 WL 6609427, at *1 (N.D. Ill. Dec. 5, 2019), the District Court addressed whether the plaintiff patent ower was collaterally estopped from arguing validity in...more
Last week, the Federal Circuit confirmed that Idenix Pharmaceuticals will not be the proud recipient of what was previously regarded as the largest damages award ever recorded in a U.S. patent case. In fact, the majority’s...more
IDENIX PHARMACEUTICALS LLC v. GILEAD SCIENCES INC. Before Prost, Newman, and Wallach. Appeal from the United States District Court for the District of Delaware. Summary: Synthesizing and screening tens of thousands of...more