Archives: Patent

UK High Court Issues Important Ruling on Licensing of Standard Essential Patents

By Suzanne Alton de Eraso on April 19, 2017 Posted in Patent

On April 5, 2017, the High Court of Justice in the UK ruled that if a patent holder claims that a patent is essential under the ETSI IPR Policy, it must license that patent to third parties on fair, reasonable, and non-discriminatory (FRAND) terms, and the licensee must accept the FRAND terms or face the … Continue Reading

SCOTUS Declares That Time Has Expired for Laches Defense in Patent Cases

By Suzanne Alton de Eraso on March 23, 2017 Posted in Patent

On March 21, the Supreme Court of the United States held in Hygiene Products Aktiebolag v. First Quality Baby Products that laches is not a defense to a damages claim when the Patent Act’s six-year statute of limitations has yet to expire. This decision aligns with the Court’s ruling in Petrella v. Metro-Goldwyn-Mayer Inc., 572 … Continue Reading

Availability of Reissue After an Invalidity Determination

By Samuel McMahon on March 14, 2017 Posted in Patent

A recent law review article discusses reissue as a potential cure for patentees who have had their claims invalidated by a court or the Patent Trial and Appeals Board (PTAB).[1] Under 35 U.S.C. § 251, reissue is available when “any patent is, through error, deemed wholly or partly inoperative or invalid, by reason of a defective … Continue Reading

Federal Circuit Appears to Narrow the Exceptions to 35 U.S.C. § 101

By Allen Sokal on March 13, 2017 Posted in Patent

Unquestionably, the narrower a patent’s claims, the more likely they are to pass muster under 35 U.S.C. § 101. But if you have an invention with broad applicability, how broadly can you claim it without running into eligibility problems? The answer, both literally and figuratively: the sky’s the limit. In Thales Visionix Inc. v. United States, … Continue Reading

The Federal Circuit Considers a New Issue on Appeal, Lectures the PTO on its Burden to Establish Obviousness, and Reveals an Internal Split on What to do When the PTO Fails to Carry That Burden

By Allen Sokal on March 2, 2017 Posted in Patent

The Federal Circuit in Icon Health & Fitness, Inc. v. Strava, Inc., Appeal No. 2016-1475 (Feb. 27, 2017), made several interesting points and revealed a disagreement among four of its judges about the proper disposition when the PTO fails to carry its burden in “examination appeals.” More specifically, the court explained when an appellant might … Continue Reading

Requirements of § 121’s Safe Harbor: Ensuring That Divisional Applications Will Be Protected Against OTDP Rejections

By Samuel McMahon on February 28, 2017 Posted in Patent

In a recent decision, the Patent Trial and Appeal Board (PTAB) narrowly construed the so-called safe harbor provision of 35 U.S.C. § 121, affirming the examiner’s rejection of a patent application under the doctrine of “obviousness-type double patenting” (OTDP). Ex parte Sauerberg, Appeal 2015-007064 2017 WL 150016 *1 (PTAB Jan. 10, 2017). The safe harbor protects … Continue Reading

Federal Circuit Expands Personal Jurisdiction in Declaratory Judgment Suits

By Allen Sokal on February 22, 2017 Posted in Patent

In Xilinx Inc. v. Papst Licensing GmbH & Co. KG, Appeal No. 2015-1919 (Fed. Cir. Feb. 15, 2017), the Federal Circuit applied the usual test for in personam jurisdiction, in an apparently new way, to reverse dismissal of a declaratory judgment suit against an alien patent owner seeking to avoid the alleged infringer’s home forum. … Continue Reading

Federal Circuit looks to provisional patent application in determining claim scope

By Erin Caldwell on February 16, 2017 Posted in Patent

Differences between a provisional patent application and a nonprovisional application claiming priority to the provisional application may inform claim construction, following the Federal Circuit’s recent decision in MPHJ Tech v. Ricoh.[1] In MPHJ Tech, the Federal Circuit affirmed an inter partes review decision in which the Patent and Trademark Appeal Board (PTAB) found claims of … Continue Reading

When Obvious Isn’t Obvious: Personal Web Technologies

By Brendan Clark on February 15, 2017 Posted in Patent

On Valentine’s Day 2017, the Court of Appeals for the Federal Circuit vacated the Patent Trial and Appeal Board’s conclusions of obviousness in Personal Web Technologies, LLC due to insufficient analysis in the board’s decision. Judge Taranto, joined by Judge Chen and Judge Stoll, explicitly asserted the court’s role in enforcing the principles of administrative … Continue Reading

Licensees Stymied by Sovereign Immunity Both in Federal Court and at PTAB

By Allen Sokal on February 10, 2017 Posted in Patent

Licensees Covidien LP, Medtronic PLC, and Medtronic, Inc., failed to obtain any relief, at least so far, in federal court or at the Patent Trial and Appeal Board (PTAB) because of parallel holdings that patent owner University of Florida Research Foundation, Inc. (UFRF), is entitled to Eleventh Amendment immunity. University of Florida Research Foundation, … Continue Reading

The Continuing “Evolution” of Alice: a GUI Example

By Samuel McMahon on January 19, 2017 Posted in Patent

On January 18, 2017, the Federal Circuit, in Trading Technologies International, Inc. v. CQG, Inc., No. 2016-1616 (Fed. Cir. Jan. 18, 2017) (NEWMAN, J.), issued a non-precedential decision affirming the district court’s holding that claims directed to “[a] method for displaying market information relating to and facilitating trading of a commodity being traded in an … Continue Reading

Federal Circuit Provides Guidance on Divided Infringement, Inducement of Infringement, and Indefiniteness

By Allen Sokal on January 17, 2017 Posted in Patent

Patent owners will applaud the Federal Circuit’s latest pronouncement on divided infringement, inducement of infringement, and claim definiteness under 35 U.S.C. § 112. Eli Lilly & Co. v. Teva Parenteral Medicines, Inc., Appeal No. 2015-2067 (Fed. Cir. Jan. 12, 2017). On all three issues, the opinion, authored by Chief Judge Prost and joined by Circuit Judges … Continue Reading

Biotech Patent Dispute Between Academics That Is Far From Academic

By Allen Sokal on January 3, 2017 Posted in Patent

On December 6, 2016, the parties to the complex and soon-to-be departed world of patent interferences orally argued their positions on motions in what has been described as the “biotech trial of the century” and as “the biggest biotech patent case in memory.”[1] The parties’ oral arguments mirrored their motions, the most important of which … Continue Reading

Patent Invalidity Offense: When Is District Court Action the Better Option Over IPR, PGR or CBM?

By Shannon McCue on November 28, 2016 Posted in Patent

It’s Monday morning after the Thanksgiving holiday. Easing back into the workweek with the lingering effects of turkey, stuffing and a miraculous Ohio State victory still sapping my brain, I open the court docket report. Ordinarily, there is not much in these reports to catch my eye under these conditions, but today I saw a … Continue Reading

Post Grant Review: § 112 and Eligibility Issues in Chemical and Life Sciences

By Samuel McMahon on November 28, 2016 Posted in Patent

Post Grant Review (PGR) petitions are on the rise, and nearly half of all petitions to date have challenged patents in Biotechnology and Organic Chemistry, or Chemical and Materials Engineering technology centers.[1] We have reviewed PGR petitions filed against patents in these technology categories.[2] One final written decision issued on Nov. 14, 2016,[3] and more … Continue Reading

Amdocs Highlights Panel Dependency of §101 Decisions at Federal Circuit

By Michael Stein on November 2, 2016 Posted in Federal Circuit, Patent

In Amdocs v. Openet Telecom, the Federal Circuit reversed a district court ruling that the claims of several patents were invalid under 35 USC § 101.[1] Judge Plager authored the opinion for the court, and he was joined by Judge Newman. Judge Reyna authored a lengthy dissent objecting to the overall approach taken by the … Continue Reading

Patent Exhaustion Case Could Have Enormous Impact on Multinational Businesses

By Michael Stein on October 18, 2016 Posted in Federal Circuit, Patent

Earlier this year, the Federal Circuit ruled en banc in Lexmark v. Impression,[1] the most significant exhaustion ruling since the Supreme Court’s Quanta decision.[2] In response to Impression’s cert. petition, the Supreme Court called for the views of the Solicitor General. The U.S. has now filed its brief, recommending cert. be granted on both questions. … Continue Reading

Federal Circuit Panel Splits in Important Decision Regarding Its Jurisdiction over Institution of IPRs

By Allen Sokal on October 4, 2016 Posted in Patent

In Husky Injection Molding Systems Ltd. v. Athena Automation Ltd., Appeal Nos. 2015-1726, 1727 (Sept. 23, 2016), the panel majority, consisting of Judges Lourie (the opinion’s author) and Stoll, differed sharply with dissenting Judge Plager over the court’s jurisdiction to review the PTAB’s institution of an inter partes review. This decision could have broad implications. … Continue Reading

A Split Panel of the Federal Circuit Debates the Standards for Definiteness

By Allen Sokal on October 3, 2016 Posted in Federal Circuit, Patent

In Cox Communications, Inc. v. Sprint Communications Co. LP, Appeal No. 2016-1013 (Fed. Cir. Sept. 23, 2016), the panel, consisting of Chief Judge Prost (authoring the opinion) and Judges Newman and Bryson, unanimously reversed the district court’s summary judgment of invalidity for indefiniteness under 35 U.S.C. § 112, para. 2. But Judge Newman vigorously rejected the … Continue Reading

Important Federal Circuit Decision Provides More Clues on Software Eligibility

By Brendan Clark on September 15, 2016 Posted in Patent

On Sept. 13, 2016, the Court of Appeals for the Federal Circuit gave applicants and patentees another tool with which to argue for the patent eligibility of their software innovations, finding that McRO’s lip-synchronizing patents were eligible under 35 U.S.C. § 101. Judge Reyna, joined by Judges Taranto and Stoll, determined that representative claim 1 … Continue Reading

Federal Circuit Provides Guidance on Use of Common Sense in Obviousness Analysis

By Sarah Dukmen on August 15, 2016 Posted in Federal Circuit, Patent

Last week, in Arendi S.A.R.L. v. Apple, the Federal Circuit reversed a Patent Trial and Appeal Board (PTAB) finding of invalidity in an inter partes review that relied on “common sense” to supply a claim limitation that was not disclosed by the prior art. When used to support a finding of obviousness, common sense is … Continue Reading

PTO Provides Additional Guidance on Patent Eligibility of Life-Sciences Method Claims

By Allen Sokal on July 20, 2016 Posted in Patent

On July 14, 2016, the PTO sent a memorandum to the examining corps regarding the recent rulings in Rapid Litigation Management Ltd. v. Cellzdirect, Inc., Appeal No. 2015-1570 (Fed. Cir. July 5, 2016), and Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371 (Fed. Cir. 2015), cert. denied, No. 15-1102, 2016 WL 1117246 (June … Continue Reading

Brexit May Stall Implementation of EU’s New Unitary Patent and Patent Court Systems

By Jacob Huh on July 19, 2016 Posted in Patent

New unified patent grant and patent court systems, which were to have taken effect in early 2017, will likely be stalled because of Britain’s June vote to leave the EU, commentators and member nations fear.… Continue Reading

Federal Circuit Helps Clarify What Constitutes a Commercial Sale under Pfaff

By Herbert Hoffman on July 18, 2016 Posted in Federal Circuit, Patent

In The Medicines Co. v. Hospira Inc., Appeal No. 2014-1469 (Fed. Cir. July 11, 2016), the Federal Circuit issued a unanimous en banc decision ruling that the on-sale bar was not triggered by a supplier’s sale of manufacturing services to an inventor largely because the title to the invention and the right to market the … Continue Reading