Tag Archives: patent

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

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

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

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

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

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

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

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?

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

“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

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

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

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

  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

The Federal Circuit Reverses a Hindsight Reconstruction of An Important Pharmaceutical Invention

In Millennium Pharmaceuticals v. Sandoz,[1] the Federal Circuit reversed the district court’s holding of obviousness of certain claims of Millennium-owned U.S. Patent No. 6,713,446 (the ‘446 patent), finding that the district court improperly applied the lead compound analysis and the inherency doctrine and clearly erred by rejecting objective indicia of non-obviousness. The disputed claims of … Continue Reading

“All Expenses Paid” Is No Trip to the E.D. Va. for Patent and Trademark Applicants

Authored by: Kristie Butler, Summer Associate On June 23, 2017, the Federal Circuit confirmed in Nantkwest, Inc. v. Matal (No. 2016-1794) that patent applicants facing rejection from the Patent Trial and Appeal Board (PTAB) may seek relief in the Eastern District of Virginia under 35 U.S.C. §145, but ruled that these litigants must pay the … Continue Reading

PTAB Grants Discovery to Underlying Test Data

Discovery in inter partes review (IPR) proceedings at the Patent Trial and Appeal Board (PTAB) is typically quite limited, and the PTAB normally is reluctant to grant motions for additional discovery. It is instructive, therefore, when the PTAB does so. In a recent order in Mylan Pharmaceuticals Inc. v. Allegan, Inc., IPR2016-01127, Paper 28 (PTAB … Continue Reading

Equivalence in Chemical Cases

In Mylan Institutional LLC et al. v. Aurobindo Pharma Ltd. et al., 2017-1645 (May 19, 2017), the Federal Circuit attempted to clarify the application of the doctrine of equivalents in chemical cases. Although affirming a district court grant of a preliminary injunction on a patent directed to isosulfan blue (ISB), a dye used for lymph … Continue Reading

Impression Products, Inc. v. Lexmark International, Inc. – Setting the Common Law’s Limits on the Rights of Patent and Copyright Owners

  Last week, in Impression Products, Inc. v. Lexmark International, Inc., Case No. 15-1189 (May 30, 2017), the Supreme Court ruled that under the “exhaustion doctrine,” patent owners cannot use patent law to impose restrictions on the downstream sales or transfers of lawfully purchased patented goods. The decision took many patent practitioners by surprise. Not … Continue Reading

Supreme Court Announces ‘Uniform and Automatic’ Rule for Patent Exhaustion

The Supreme Court on Tuesday, May 30, issued an opinion in Impression Prods., Inc. v. Lexmark Int’l, Inc., No. 15–1189 (S. Ct. May 30, 2017), [hereafter “Lexmark”], reversing the Federal Circuit on two aspects of the patent exhaustion doctrine and redefining the boundaries of the rights afforded a patentee under the Patent Act. Chief Justice … Continue Reading

The Federal Circuit Invalidates a Patent for Failure to Describe the Accused Product

In Rivera v. International Trade Commission, Appeal No. 2016-1841 (Fed. Cir. May 23, 2017), the Federal Circuit affirmed the ITC’s decision invalidating Rivera’s patent under the written description requirement of 35 U.S.C. § 112. The opinion provides important lessons for those who draft and prosecute patent applications and also those who attempt to enforce them. Indeed, … Continue Reading

The Supreme Court, Reversing the Federal Circuit, Holds that “Residence” in the Patent Venue Statute Refers to Only a Domestic Corporation’s State of Incorporation

In a brief, well-reasoned opinion, a unanimous eight-member Supreme Court held that 28 U.S.C. § 1400(b) is a stand-alone provision governing venue in patent infringement suits, unaffected by the broad definition of “residence” in the general venue statute, 28 U.S.C. § 1391.Rather, a domestic corporation “resides” in only its state of incorporation. TC Heartland LLC v. Kraft … Continue Reading

In Case of First Impression, Federal Circuit Rules that a Patent Owner’s Statements in an IPR Proceeding Can Create Prosecution Disclaimer

  In Aylus Networks, Inc. v. Apple Inc., Appeal No. 2016-1599 (Fed. Cir. May 11, 2017), the Federal Circuit ruled that a patent owner’s statements during an inter partes review (IPR), even if before an institution decision, can create prosecution disclaimer. After the patent owner filed suit, the defendant filed two petitions for IPR. In … Continue Reading

Federal Circuit Remands Novel Issue on Patent Marking Requirement

On April 17, 2017, the United States Court of Appeals for the Federal Circuit vacated an award of more than $15 million in damages because a plaintiff’s licensee failed to mark patented articles. Rembrandt Wireless Technologies, LP v. Samsung Electronics Co., No. 2016-1729 (Fed. Cir. Apr. 17, 2017). The decision underscores the importance of not … Continue Reading
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