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Patents Patent Litigation Disclosure

Jones Day

“First Available” Date Alone Is Insufficient Evidence of Disclosure

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The Patent Trial and Appeal Board (“PTAB”) denied institution in an inter partes review (“IPR”), finding that an online store’s assertion regarding when a product was “first available” is by itself insufficient evidence of...more

Axinn, Veltrop & Harkrider LLP

The Sewage of Expert Report Deadlines

Expert report deadlines are a feature of every patent case's scheduling order, but they nevertheless are the constant source of disputes. For example, battles over whether to have two or three or four rounds of expert reports...more

Axinn, Veltrop & Harkrider LLP

When Disclosure Isn't Disclosure

A patent challenger identified a witness as a person with relevant knowledge in Rule 26(a) disclosures and interrogatory responses, and the patentee deposed the witness. Surely the witness can testify at trial, right? The...more

Bradley Arant Boult Cummings LLP

Searching for Claim Support in a Patent Specification? You Better Blaze a Trail

Last month the Federal Circuit affirmed a PTAB inter partes review (IPR) decision finding that the University of Minnesota’s patent claim directed to the anti-cancer drug sofosbuvir was not adequately supported by the written...more

McDermott Will & Emery

Allegations in Complaint Prevail over Statements in Exhibit

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The US Court of Appeals for the Federal Circuit, prioritizing specific allegations in the complaint over disclosures in exhibits to the complaint, reversed and remanded a district court decision dismissing an original...more

McDermott Will & Emery

Litigation Funding Probe Continues to Make Waves

On remand from a decision allowing the US District Court for the District of Delaware to continue its probe into who was funding a patent owner’s infringement litigation, the district court denied the patent owner’s motion to...more

McDermott Will & Emery

Full Speed Ahead: District Court Entitled to Explore Litigation Funding Arrangements

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The US Court of Appeals for the Federal Circuit denied a patent owner’s mandamus petition, clearing the way for a district court to probe who is funding the patent owner’s infringement litigation. In re Nimitz Techs. LLC,...more

Fenwick & West LLP

Federal Circuit Denies Request to Block Disclosure of Litigation Funding Information

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Patent assertion entities make up a significant portion of patent litigation practice today. Many of these entities form just days or weeks before acquiring a patent and filing a complaint. Just as often, these entities’...more

Akin Gump Strauss Hauer & Feld LLP

Federal Circuit Reverses District Court Anticipation Decision Combining Two Prior Art References

The Federal Circuit reversed a decision from the District Court for the District of Delaware invalidating three patents on anticipation grounds, finding the district court improperly relied on disclosures from multiple...more

McDermott Will & Emery

Equivalent Disclosure Used to Satisfy Written Description Requirement

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Invoking a newly minted equivalent disclosure doctrine, a panel of the US Court of Appeals for the Federal Circuit found that the written description requirement of § 112 was satisfied in the interest of arriving at a...more

McDermott Will & Emery

Flow Valve Shut Off from Reissue

The US Court of Appeals for the Federal Circuit invalidated reissue patent claims for impermissible broadening, finding that the newly claimed subject matter did not comply with the requirement of 35 USC § 251(a) that reissue...more

Jones Day

Delay in Identifying Prior Art Prevents Their Addition to Notice of Prior Art

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In a recent order, Administrative Law Judge Shaw denied in part the Respondents’ Motion to Supplement their Notice of Prior Art. In re Certain Strontium-Rubidium Radioisotope Infusion Systems, And Components Thereof Including...more

Goulston & Storrs PC

Massachusetts Federal Court Issues New Rules Governing Patent Litigation

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These new Patent Rules replace the prior version of Local Rule 16.6 and aim to streamline patent cases by providing consistency and expediency. ...more

Schwabe, Williamson & Wyatt PC

Fresh From the Bench: Latest Federal Circuit Court Cases

Texas Advanced Optoelectronic Solutions, Inc. v. Renesas Electronics America, Inc., Appeal Nos. 2016-2121, -2208, -2235 (Fed. Cir. 2018)?- In an appeal from a jury trial, the Federal Circuit addressed numerous issues...more

McDonnell Boehnen Hulbert & Berghoff LLP

A Closer Look at Dynamic Drinkware, LLC v. National Graphics, Inc.

Last week, we analyzed the Federal Circuit's Dynamic Drinkware, LLC v. National Graphics, Inc. case from early September. In that case, the Federal Circuit held that an IPR petitioner did not adequately demonstrate that an...more

McDonnell Boehnen Hulbert & Berghoff LLP

Dynamic Drinkware, LLC v. National Graphics, Inc. (Fed. Cir. 2015)

It is well accepted that in order to establish that a patent is entitled to claim priority to a previously filed provisional application, it must be shown that the claims of the patent have written description support in the...more

McDermott Will & Emery

Statute Permits Domestic Discovery for Foreign Opposition Proceedings - Akebia Therapeutics, Inc. v. FibroGen, Inc.

With ample citation to Supreme Court precedent, the U.S. Court of Appeals for the Ninth Circuit affirmed the use of 28 U.S.C. § 1782 to conduct domestic discovery in aid of foreign opposition proceedings at the European and...more

McDonnell Boehnen Hulbert & Berghoff LLP

Inline Plastics Corp. v. EasyPak, LLC (Fed. Cir. 2015) - Claim Terms Not Limited to Specific Embodiment

In Inline Plastics Corp. v. EasyPak, LLC, the Federal Circuit offered some bits of wisdom for patent application specification drafting, while applying well-known case law to conclude that claims are not limited to a specific...more

McDonnell Boehnen Hulbert & Berghoff LLP

Federal Circuit Interprets Biosimilars Law in Amgen v. Sandoz

In a seriously fractured decision, the Federal Circuit construed the provisions of the Biologics Price Control and Innovation Act (BPCIA or Act) in Amgen Inc. et al. v. Sandoz Inc. In doing so, the court limited the...more

Foley & Lardner LLP

Contract Manufacturing Makes Angiomax Patents Invalid Under On Sale Bar

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In The Medicines Company v. Hospira, Inc., the Federal Circuit held that a transaction with a contract manufacturer gave rise to an on sale bar that invalidated The Medicines Company’s Angiomax® patents. Are the facts of this...more

Buchalter

Subject Matter Conflicts of Interest in Patent Prosecution – Training Your Team

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This article series is focusing on subject matter conflict of interest issues that are a significant concern for attorneys. Patent practitioners have an additional layer of concern with respect to subject matter conflicts of...more

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