Tag Archives: patent

Circuit Courts Continue To Limit Preclusive Effect of TTAB Decisions

On Sept. 17, 2021, the Third Circuit Court of Appeals became the latest Circuit Court to limit the preclusive effect of Trademark Trial & Appeal Board (“TTAB”) decisions. In 2015, the Supreme Court, in B&B Hardware,[1] decided in a 7-2 vote that issues decided in TTAB proceedings may have preclusive effect if the elements of … Continue Reading

No Wrong Notes: Federal Circuit’s Piano Factory Decision Holds TTAB in Tune with Arthrex

By Scott Skiles on September 21, 2021 Posted in Federal Circuit, Patents, Trademark, USPTO

This blog previously reported[1] that on June 21, 2021, the Supreme Court issued its landmark decision in United States v. Arthrex, Inc., holding – in Chief Justice Roberts’ 5-4 opinion – that “the unreviewable authority wielded by [administrative patent judges, or APJs] during inter partes review [IPR] is incompatible with their appointment by the Secretary … Continue Reading

Federal Circuit Takes Judicial Notice of Wayback Machine Evidence of Prior Art

By Andrew Samuels on August 31, 2021 Posted in Patents

In its Aug. 17 decision in Valve Corporation v. Ironburg Inventions Ltd., the Federal Circuit appears to have cleared the way for district courts to take judicial notice of Wayback Machine captures as evidence of prior-art printed publications. As many readers of this blog will know, the Wayback Machine is an online digital archive of … Continue Reading

Appellate Hot Potato: Which Circuit Court Will Hear a ‘Walker Process’ Appeal?

By Jeffrey Lyons on July 13, 2021 Posted in Patent

In the latest round of appellate hot potato, the U.S. Court of Appeals for the Federal Circuit transferred to the U.S. Court of Appeals for the Fifth Circuit an appeal from a decision by the U.S. District Court for the Northern District of Texas regarding antitrust claims associated with enforcement of a patent found unenforceable … Continue Reading

A Brief Overview of the USPTO’s Interim Procedures Implementing Arthrex

By Fabian Koenigbauer on June 29, 2021 Posted in USPTO

On June 21, 2021, the Supreme Court issued its long-awaited decision in United States v. Arthrex, 19-1434, 19-1452, 19-1458. The issue in Arthrex was “whether the authority of Administrative Patent Judges (APJs) to issue decisions on behalf of the Executive Branch is consistent with the Appointments Clause of the Constitution.” The Supreme Court held that … Continue Reading

Can a Plaintiff in the United States Recover Foreign Patent Damages?

By Michael Gannon on April 5, 2021 Posted in Patent

In 2018, the U.S. Supreme Court held that a plaintiff was entitled to lost foreign profits under 35 U.S.C. § 284 based on direct acts of infringement in the United States under 35 U.S.C. § 271(f)(2). WesternGeco LLC v. ION Geophysical Corp., 138 S.Ct. 2129 (2018) (WesternGeco). The question is: Did WesternGeco effectively overrule the Federal Circuit’s … Continue Reading

2020 Patent Litigation: Year in Review

By Derek Freitas on March 24, 2021 Posted in Patent

2020 was a year of turmoil and unexpected events. While many businesses struggled throughout the year, patent litigation experienced an uptick across the board. According to Docket Navigator, 2020 was the first year to see an increase in the total annual number of patent cases since 2015.[1] Compared to 2018 and 2019, this past year … Continue Reading

Baked-In Apportionment

By Jared Brandyberry on February 9, 2021 Posted in Patent

In Vectura, the Federal Circuit recently reiterated that the entire market value of an accused multicomponent product may serve as the royalty base if the patent damages analysis is built on sufficiently comparable licenses. Vectura Limited v. Glaxosmithkline LLC, 981 F.3d 1030, 1040-1042 (Fed. Cir. 2020). Pursuit of the entire market value of a multicomponent … Continue Reading

Election Ballot Verification – A Patent Subject Matter Eligibility Analysis

By Gabriel Applegate on January 12, 2021 Posted in Patent

In light of recent events, technologies directed toward verifying voter ballots may sound like attractive investment opportunities. However, potential investors often seek to ensure a technology is protected by one or more valid patents before opening their checkbooks. Interestingly, a Federal Circuit case from 2018, Voter Verified, Inc. v. Election Systems & Software, invalidated issued … Continue Reading

The Sun Has Set on CBM Review

By Jennifer M. Kurcz and Alaina J. Lakawicz on September 23, 2020 Posted in Patent

Earlier this month, on September 16, 2020, the Transitional Program for Covered Business Method (CBM) Review expired.[1] Enacted as part of the AIA and spanning eight years, CBM Review was promoted within Congress as a vehicle to challenge weak patents, i.e., patents that should not have been issued in view of the Supreme Court’s Bilski … Continue Reading

Booking.com Remand on USPTO Attorney Fee Issue Portends Closure on Circuit Split

By Lesley Grossberg on July 16, 2020 Posted in Patent

As followers of this blog may recall, in December 2019, the Supreme Court resolved a circuit split as to whether the United States Patent and Trademark Office (USPTO) may recover its “attorneys’ fees” (effectively, the pro rata salaries of its legal personnel) in appeals from the Patent Trial and Appeal Board (PTAB) and Trademark Trial … Continue Reading

Patent-demic: How COVID-19 Has Affected Patent Litigation

By Harrison Rose on June 18, 2020 Posted in Patent

As it has almost every industry and business around the world, the COVID-19 pandemic has altered the practice of law. While these unprecedented times present myriad problems, patent attorneys are among the best equipped to adapt and embrace the changes. Because of the global nature of patent law, which often necessitates regular travel to appear … Continue Reading

The Potential Patent Risks Associated with COVID-19 Collaborations

By Fabian Koenigbauer on June 15, 2020 Posted in Patent

As researchers at universities and pharmaceutical companies rush to find treatments for COVID-19, new potential patent risks arise. While owners of existing patents that may be useful for COVID-19 treatments may have agreed to free up access to their patent rights through licensing or initiatives like Open COVID Pledge (U.S.) or the Open COVID-19 Declaration, … Continue Reading

Key UPSTO Initiatives to Ease Burden On Patent Owners and Patent Applicants During the COVID-19 Outbreak

By Fabian Koenigbauer on May 13, 2020 Posted in USPTO

Since the COVID-19 outbreak, the United States Patent and Trademark Office (USPTO) has tried to ease the burden on patent owners and applicants. The key USPTO initiatives are summarized below. I. Waiver of paper filing requirements for plant patent applications and related correspondence Normally, the USPTO does not allow the electronic filing of plant patent … Continue Reading

Invoking Equity in the Time of COVID-19

By Christina Moser on March 31, 2020 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

Patent Portfolio Considerations During Times of Financial Uncertainty

By Erin Caldwell on March 27, 2020 Posted in Patent

In response to the economic effects of the COVID-19 pandemic, many companies are reevaluating their expenditures. Some may look to their intellectual property portfolios as a place to cut costs. But any decisions to scale back on investments in patents should be driven by business considerations and not by panic. In order for a well-informed … Continue Reading

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

By Fabian Koenigbauer and Stephanie Lodise on January 27, 2020 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

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

By Hussein Akhavannik and Fabian Koenigbauer on December 20, 2019 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

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

By Barry Bretschneider on August 5, 2019 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

The Federal Circuit Opens the Door Wider for the Subject Matter Eligibility of Methods of Treatment, Compositions and Methods of Manufacturing

By Ron Kern on March 18, 2019 Posted in Patent

“We live in a natural world, and all inventions are constrained by the laws of nature . . . we must be careful not to overly abstract claims when performing the Alice analysis.”[1] These are the promising words from the Federal Circuit in its recent decision in Natural Alternatives v. Creative Compounds, in which the … Continue Reading

The ‘Integrated Into a Practical Application’ Test of the 2019 Revised Patent Subject Matter Eligibility Guidance

By Michael Stein on January 7, 2019 Posted in USPTO

On Jan. 4, 2019, the USPTO announced revised guidance relevant to Section 101 rejections (“2019 Revised Patent Subject Matter Eligibility Guidance”). The 2019 Revised Patent Subject Matter Eligibility Guidance explains that a claim that recites a judicial exception is not “directed to” the judicial exception if the judicial exception is “integrated into a practical application” … Continue Reading

Core Wireless: Moving Beyond Eligibility as the Exception to the Exception?

By Brendan Clark on February 8, 2018 Posted in Federal Circuit, Patent

January was an exciting month for patent professionals still attempting to make sense of the fallout from the Supreme Court’s 2014 Alice Corp. v. CLS Bank International decision. Hot on the heels of its Jan. 10 decision in Finjan, Inc. v. Blue Coat Systems, Inc., the Court of Appeals for the Federal Circuit decided Core … Continue Reading

Regeneron Pharmaceuticals, Inc. v. Merus N.V.: The Federal Circuit Revisits the Defense of Inequitable Conduct

By Samuel McMahon on August 4, 2017 Posted in Uncategorized

In Regeneron Pharmaceuticals, Inc. v. Merus N.V., No. 2016-1346, slip op. (Fed. Cir. July 27, 2017) (hereafter, “Slip Op.”), the Federal Circuit seems to have loosened the standards for finding a patentee culpable of inequitable conduct during patent prosecution. By affirming the district court’s finding of inequitable conduct, the court in Regeneron condones the use … Continue Reading

USPTO Report on Patent Eligible Subject Matter

By Michael Stein on July 26, 2017 Posted in Patent

On July 25, the USPTO published a new report titled “Patent Eligible Subject Matter: Report on Views and Recommendations From the Public.” The report attempts to synthesize public comments on the appropriate boundaries of patent eligible subject matter. The report includes a section reviewing the historical development of patent subject matter eligibility in the … Continue Reading