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Patents Section 102 Patent Infringement

Venable LLP

Spotlight On: Humira® (adalimumab) / Amjevita™ (adalimumab-atto) / Cyltezo® (adalimumab-adbm) / Hyrimoz™ (adalimumab-adaz) /...

Venable LLP on

Adalimumab Challenged Claim Types in IPR and Litigation: Claims include those challenged in litigations and IPRs. Claims are counted in each litigation and IPR, so claims from the same patent challenged in multiple...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

PTAB Strategies and Insights Newsletter: May 2022: Blending Butane Brings Contract Law to 35 U.S.C. § 102's On-Sale Bar and...

As post grant review allows for on sale bar assertions, and thus experimental use defenses, we wanted to highlight a recent case addressing these issues. Sunoco sued Venture and U.S. Oil Co. for infringement of U.S. Patent...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

PTAB Strategies and Insights Newsletter: May 2022

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

McDermott Will & Emery

Hit the Brakes: Experimental Use, Enhanced Damages Determinations Require Redo

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The US Court of Appeals for the Federal Circuit reversed and remanded a district court decision regarding experimental use under 35 U.S.C. § 102(b) and the application of enhanced damages based on an allegedly flawed...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

2021 Design Patents Year in Review: Analysis and Trends

This year, we will mark the 10-year anniversary of the first jury verdict in the landmark IP litigation between Apple and Samsung, which resulted in the jury awarding more than $1B to Apple. More than $500M of that award was...more

Knobbe Martens

Federal Circuit Review - February 2021

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Evidence Supports Prior Art’s Public Accessibility but Not the Board’s Adoption of an Unpresented Theory of Anticipation - In M & K Holdings, Inc. v. Samsung Electronics Co.,Ltd., Appeal No. 20-1160, the Federal Circuit...more

McDermott Will & Emery

If You Seek or Browse and Can Find, It’s Publicly Available, but Anticipation Isn’t Obvious and Requires Notice

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The US Court of Appeals for the Federal Circuit found that facilitating browsing of documents on a website was sufficient to support public accessibility of prior art references, but that the Patent Trial and Appeal Board...more

McDonnell Boehnen Hulbert & Berghoff LLP

Packet Intelligence LLC v. NetScout Systems, Inc. (Fed. Cir. 2020)

Introduction - Packet Intelligence sued NetScout in the Eastern District of Texas, alleging infringement of U.S. Patent Nos. 6,665,725, 6,839,751, and 6,954,789.  The District Court ruled that all three patents were valid...more

Knobbe Martens

Post-Investigation Invalidity Challenge Is Not a Changed Condition Permitting Rescission of an ITC Exclusion Order

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MAYBORN GROUP, LTD., MAYBORN USA, INC. v. INTERNATIONAL TRADE COMMISISION - Before Lourie, Linn, and Wallach. Appeal from the U.S. International Trade Commission. Summary: An invalidity challenge, raised after the...more

McDermott Will & Emery

Claimed Process Not Anticipated by Third-Party’s Prior Secret Use

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Declining to extend the public-use bar to third-party commercial uses of secret processes, the US Court of Appeals for the Federal Circuit reversed a summary judgment ruling that found a patent invalid under the “known or...more

McDonnell Boehnen Hulbert & Berghoff LLP

BASF Corp. v. SNF Holding Co. (Fed. Cir. 2020)

In what may be simple happenstance, the Federal Circuit issued opinions on the same day reversing a District Court grant of summary judgment in opinions written by Judge Lourie, here in BASF Corp. v. SNF Holding Co....more

Foley & Lardner LLP

How to Overcome the Two Biggest Challenges of Patenting AI Technologies

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Two interwoven challenges come to mind when considering how to successfully patent AI technologies. The first of these challenges is drafting claims whose infringement is detectable despite the black box nature of AI...more

Mintz - Intellectual Property Viewpoints

Effect of A Restriction Requirement on Prosecution History Estoppel

The decision whether to issue a Restriction Requirement during patent prosecution lies with the patent examiner, not the patent applicant. A Restriction Requirement can nevertheless trigger prosecution history estoppel that...more

Jones Day

Confidential FDA Communications as Prior Art in Hatch-Waxman Litigation

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The Situation: In a Hatch-Waxman litigation, the claims recite oxymorphone with less than 0.001% of an impurity called 14-hydroxymorphinone. The prior art includes confidential communications from the FDA to oxymorphone...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

PTAB Strategies and Insights - May 2019: Court's Infringement Indefiniteness Does Not Dictate Validity Indefiniteness at PTAB

In IPR2018-00272, the Board denied a motion to terminate brought by a Patent Owner who argued that a district court’s finding of indefiniteness required termination of the PTAB proceedings for U.S. Patent. 9,393,208....more

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases - April 2019 #4

PATENT CASE OF THE WEEK - Neptune Generics, LLC v. Eli Lilly & Co., Appeal Nos. 2018-1257, et al. (Fed. Cir. Apr. 26, 2019) - The Federal Circuit issued only one precedential patent decision this week. The short,...more

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases - April 2019

Grunenthal GMBH v. Alkem Labs., Ltd., Appeal Nos. 2017-1153, -2048, -2049, -2050 (Fed. Cir. Mar. 28, 2019) - This week the Federal Circuit issued a rare decision concerning the utility doctrine in patent law. In general,...more

Shook, Hardy & Bacon L.L.P.

"Secret Sale" of Drug Counts as Prior Art in Patent Battle

On January 22, 2019, the U.S. Supreme Court affirmed the U.S. Court of Appeals for the Federal Circuit’s decision in Helsinn Healthcare S.A. v. Teva Pharmaceuticals USA, Inc., No. 17-1229 (Jan. 22, 2019)....more

McDermott Will & Emery

Secret Sales Still Qualify as Prior Art Under AIA

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Addressing whether the on-sale bar of America Invents Act (AIA) 35 USC § 102(a)(1) applies to confidential sales where specific details are not made public, the Supreme Court of the United States found that the post-AIA...more

Ward and Smith, P.A.

On-Sale Bar: Less clever way of saying, Happy Hour? Maybe. Important for Patent Protection? Yes.

Ward and Smith, P.A. on

If the term "happy hour" in this article's title caught your attention, you may be disappointed by what comes next. This article is actually about limitations on patent protection, which I would argue is just as...more

Knobbe Martens

Duncan Parking Technologies v. IPS Group, Inc.

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Federal Circuit Summary - Before Lourie, Dyk and Taranto. Consolidated Appeals from the Patent Trial and Appeal Board and the Southern District of California. Summary: A person is a joint inventor of the anticipating...more

McAfee & Taft

Gavel to Gavel: Supreme Court provides clarity

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Originally published in The Journal Record | January 31, 2019. This month, the U.S. Supreme Court issued its opinion in Helsinn Healthcare v. Teva Pharmaceuticals, confirming that private sales of an invention may preclude...more

Polsinelli

Supreme Court Confirms the AIA On-Sale Bar Covers Secret Sales—But Invites Controversy over What Is “Otherwise Available to the...

Polsinelli on

The Supreme Court recently issued its closely-watched decision in Helsinn Healthcare S.A. v. Teva Pharmaceuticals USA, Inc., which has direct implications regarding the scope of § 102 prior art under the America Invents Act...more

Weintraub Tobin

Can Secret Sales Prohibit Patenting Your Invention?

Weintraub Tobin on

Prior to the Leahy-Smith America Invents Act (“AIA”), the patent statute (35 U.S.C. § 102(b)) prohibited patenting an invention that was “on sale in this country, more than one year prior to the date of the application for...more

Fish & Richardson

The “On Sale Bar” Remains a Trap for the Unwary

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Inventors should not delay the filing of their patent applications, and preferably should file within one year of any commercialization of the invention, as confirmed by the Supreme Court on January 22, 2019....more

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