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Something on Which Even Patent Litigators Can Agree: McRO v. Bandai, Inc. Clarifies the Framework for Enablement Challenges and for Enablement Defenses

Aaron RabinowitzBy Aaron Rabinowitz on Posted in Patent
In McRO, Inc. v. Bandai Namco, Inc. et al., No. 2019-1557, __ F.3d __ (Fed. Cir. May 20, 2020), the Federal Circuit reversed a judgment of invalidity and in doing so provided needed clarity concerning the application of the enablement requirement. This guidance is useful to patent owners and patent challengers, as the decision explains … Continue Reading

Are Federal Reserve Banks People Too? Federal Circuit Clarifies ‘Persons’ Capable of Petitioning for Post-Grant Patent Review Under the America Invents Act

Jason OliverBy Jason Oliver on Posted in Patent
The Federal Reserve has been at the forefront of daily news in connection with its efforts to revive the national economy in the wake of the COVID-19 pandemic. At the same time, the U.S. Court of Appeals for the Federal Circuit in Bozeman Financial LLC v. Federal Reserve Bank of Atlanta et al. recently ruled … Continue Reading

Federal Circuit’s COVID-19 Response Brings Public Telephonic Oral Arguments and Patent Cases Decided on the Briefs

John MurphyBy John Murphy on Posted in Patent
The Federal Circuit’s April court week, held amid the COVID-19 pandemic, was like no other in the court’s history. Instead of hearing 12 oral arguments per day in its three courtrooms, the Circuit held a handful of telephonic oral arguments and decided the great majority of this month’s cases on the briefs. As a side … Continue Reading

Invoking Equity in the Time of COVID-19

Christina MoserBy Christina Moser on Posted in Patent
Talk about bad timing. On Friday, March 6, 2020, non-practicing patent holding company Labrador Diagnostics formed in Delaware and obtained a patent portfolio directed to testing patients for the presences of coronavirus—when the United States had 282 cases. Three days later, Labrador Diagnostics decided to file a lawsuit seeking damages and injunctive relief against a … Continue Reading

Be Sure to Ask Your Scientists the Right Questions or Risk Losing Patent Protection

Fabian KoenigbauerStephanie LodiseBy Fabian Koenigbauer and Stephanie Lodise on Posted in Patent
Welcome to the IP Intelligence Blog. We have merged the Copyright, Content, and Platforms blog into the IP Intelligence Blog to provide a single source for IP updates. We hope you enjoy our thought provoking posts on Intellectual Property related topics. Under the first-to-file patent system in place in the U.S. and globally, a publication … Continue Reading

POP Addresses IPR Printed Publication Standard

Timothy DoyleBy Timothy Doyle on Posted in Patent
The Precedential Opinion Panel (POP) of the Patent Trials and Appeals Board (PTAB) recently answered the question, “What is required for a petitioner to establish that an asserted reference qualifies as a ‘printed publication’ at the institution stage?” According to the POP, “[f]or institution of an inter partes review, a petitioner must establish a reasonable … Continue Reading

Settlement Offers Can Be Used Against You (in a Patent Case)

Jason HoffmanBy Jason Hoffman on Posted in Patent
Rule 408 of the Federal Rules of Evidence protects settlement communications.  The language of the rule is clear.  Such communications are “not admissible . . . to prove or disprove the validity . . . of a disputed claim.”  However, there are exceptions to this rule.  And in a recent patent infringement case, the Federal Circuit … Continue Reading

Hussein Akhavannik, Fabian Koenigbauer Article Examines Lessons to Learned from “Pharma Tech” Decision

Hussein AkhavannikFabian KoenigbauerBy Hussein Akhavannik and Fabian Koenigbauer on Posted in Patent
Partner Hussein Akhavannik and Counsel Fabian Koenigbauer authored an article published Dec. 19, 2019, by IAM.com. The article, “Federal Circuit Ruling Marks Out Dangers of Doctrine of Equivalents Estoppel,” discusses how the Federal Circuit’s ruling in Pharma Tech Solutions Inc. v. Lifescan Inc. underscores the importance of carefully crafting claim amendments and arguments during prosecution … Continue Reading

Can the USPTO Recover the Salaries of its Legal Personnel in Challenges to Adverse Decisions?

John HiltenBy John Hilten on Posted in Patent
Can the U.S. Patent and Trademark Office (USPTO) recover the salaries of its legal personnel in challenges to adverse decisions? Not surprisingly, the answer was a quick and unanimous no. More specifically, on Wednesday, Dec. 11, the U.S. Supreme Court concluded that the USPTO cannot recover the pro rata salaries of its legal personnel. The … Continue Reading

IPO’s “Gender Diversity in Innovation Toolkit” Aims to Address Disparities in Inventorship

Lesley GrossbergBy Lesley Grossberg on Posted in Patent
While women are awarded 53% of PhDs, they accounted for only 12% of named inventors on U.S. patents granted in 2016. Fewer than 30% of Patent Cooperation Treaty applications name a woman inventor. After the U.S. Patent and Trademark Office issued a report, “Progress and Potential: A Profile of Women Inventors on U.S. Patents” in … Continue Reading

Are Questions of Novelty and Nonobviousness Relevant to the Test for Whether a Patent Qualifies as a Covered Business Method Patent Under the AIA?

Michael GannonBy Michael Gannon on Posted in Patent
A covered business method (CBM) patent “does not include patents for technological inventions.” AIA § 18(d)(1). The United States Patent and Trademark Office (USPTO) promulgated a regulation that defines “a technological invention” as one in which (1) “the claimed subject matter as a whole recites a technological feature that is novel and unobvious over the prior … Continue Reading

Standing Necessary To Appeal an Inter Partes Review Decision

Kevin FlynnBy Kevin Flynn on Posted in Patent
Article III of the Constitution grants the federal judiciary the power to decide “cases and controversies.”[1] “Standing,” the legal concept ensuring that federal courts review only cases and controversies, focuses on the party bringing suit to analyze the appropriateness and constitutionality of judicial review. The court-limiting effects of standing help ensure that the separation of … Continue Reading

Federal Circuit Holds Lack of Efficacy Data Defeats ‘Substantial Evidence’ Showing of a Reasonable Expectation of Success Needed To Support PTAB’S Finding of Obviousness

Scott FeldmannBy Scott Feldmann on Posted in Patent
In a precedential opinion, the Federal Circuit reversed a Patent Trial and Appeal Board (PTAB) finding of obviousness invalidating a patent’s method claims for administering a drug for treating non-small cell lung (NSCLC) cancer.[1] The PTAB found that it would have been obvious to combine pharmaceutical references. The Federal Circuit, however, noted that the “asserted … Continue Reading

Proving That a Negative Claim Limitation Is Disclosed by the Prior Art: Takeaways From Two Recent Federal Circuit Opinions

Mark EinsiedelBy Mark Einsiedel on Posted in Patent
Occasionally, a patentee will seek to define its invention with claims that recite a negative claim limitation – a specialized category of claim element that recites an element that is expressly and deliberately excluded.[1] By way of example, a claim directed to a stool with the limitation that the stool is “devoid of a backrest … Continue Reading

Director of PTO Requests Chevron Deference for Precedential Opinion Panel

Bill DeVinneyBy Bill DeVinney on Posted in Patent
The Federal Circuit recently asked the government to submit an amicus brief to address “what, if any, deference should be afforded to decisions of a Patent Trial and Appeal Board Precedential Opinion Panel (‘POP’), and specifically to the POP opinion in Proppant Express Investments, LLC v. Oren Technologies, LLC, No. IPR2018-00914, Paper 38 (P.T.A.B. Mar. … Continue Reading

Federal Circuit Confirms the Value of Design Patents Covering Replacement Parts

Lisa N. CollinsErin CaldwellBy Lisa N. Collins and Erin Caldwell on Posted in Patent
On July 23, 2019, the Federal Circuit departed from its utility patent-focused docket to deliver a precedential opinion relating to design patents in Auto. Body Parts Ass’n v. Ford Global Techns., LLC. At issue were the validity and enforceability of design patents on automotive repair and replacement parts. The case arose from a filing by … Continue Reading

To Cajole to Threaten: How Best to Curb Online Counterfeiting

Robb BeckerleggeBy Robb Beckerlegge on Posted in Patent
I. Introduction The Trump administration, addressing efforts to curb online counterfeiting, has called for heightened collaboration, at times suggesting providing private parties with technological resources to help combat online counterfeiting. At the same time, the administration has bemoaned the lack of accountability among online third-party intermediaries and called for “clean[ing] up this Wild West of … Continue Reading

“Original Patent” vs. Written Description — A New Reissue Gauntlet?

By Barry Bretschneider on Posted in Patent
In two opinions issued in the past few weeks, the Federal Circuit has shaken up two requirements of the reissue statute that most practitioners don’t think about much. 35 USC 251(a) authorizes reissue of a patent “for the invention disclosed in the original patent.” 35 USC 251(c) provides that “[t]he provisions of this title relating … Continue Reading

Exmark’s the Spot for Royalty Rate Apportionment

Jared BrandyberryBy Jared Brandyberry on Posted in Patent
The language of the patent damages statute, 35 U.S.C. § 284, appears straightforward – “[u]pon finding for the claimant the court shall award the claimant damages adequate to compensate for the infringement, but in no event less than a reasonable royalty for the use made of the invention by the infringer” (emphasis added). The common … Continue Reading

CAFC: Patents Enjoy a Presumption of Subject Matter Eligibility

By Michael Stein on Posted in Patent
Co-authored by: Phillip Wolfe In Cellspin Soft, Inc. v. Fitbit, Inc.,[1] the Court of Appeals for the Federal Circuit (CAFC) rendered an important decision declaring that the presumption of validity under § 282 includes the presumption that claims are patent eligible under § 101. Claimed Invention and Procedural Posture Cellspin sued several companies for infringing … Continue Reading

Return Mail May Make COFC More Attractive To Patent Holders

BakerHostetlerBy BakerHostetler on Posted in Patent
This article was first published by Law360 on June 19, 2019. Authored by: William Bergmann and Michael Anderson In 2011 the Leahy-Smith America Invents Act created three new types of post-issuance proceedings to challenge patent validity: inter partes review,[1] post-grant review[2] and covered-business-method review.[3] These proceedings have proven to be popular avenues to challenge patent … Continue Reading

The Federal Circuit Deals Another Blow to Diagnostic Method Patents

Laura GordonBy Laura Gordon on Posted in Patent
In another setback for diagnostic method patents, the Federal Circuit rejected efforts by patent owner/appellant Cleveland Clinic[1] to avoid 35 U.S.C. § 101 by restyling diagnostic method claims as “techniques” for detecting a correlation between protein levels and a disease state. Cleveland Clinic Found. v. True Health Diagnostics LLC, No. 2018-1218, 2019 WL 1452697, at … Continue Reading
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