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IP Law Alert

Practical Perspectives on Intellectual Property Legal Developments

Category Archives: Patent

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USPTO Proposes a Pilot Program to Allow a Single APJ to Institute an Inter Partes Review

Posted in Patent, USPTO
The United States Patent and Trademark Office (“USPTO”) has published a request for comments in the Federal Register for a proposed pilot program which would allow for a single Administrative Patent Judge (APJ) to determine whether to institute an inter partes review (IPR), with two additional APJs being assigned to the IPR if a trial were instituted.… Continue Reading

Federal Circuit Expands Liability for Direct Infringement Under § 271(a)

Posted in Patent
Last week, en banc, the United States Court of Appeals for the Federal Circuit in Akamai Technologies Inc. v. Limelight Networks, Inc. “unanimously set forth the law of divided infringement under 35 U.S.C. § 271(a),” and expanded direct infringement liability to include instances where, “an alleged infringer conditions participation in an activity or receipt of a benefit upon performance of a step or steps of a patented method and establishes the manner or timing of that performance.”… Continue Reading

Federal Circuit Directs Magistrate Judge to Decide Motion to Transfer After Long Delay and Substantive Rulings While Motion Was Pending

Posted in Patent
The Court of Appeals for the Federal Circuit recently granted yet another writ of mandamus, this time directing a magistrate judge in the Eastern District of Texas to stay proceedings and decide a motion to transfer that had been pending for over nine months. In re: Google, Inc., 2015-138 (Fed. Cir. July 16, 2015). This decision is a part of a continuing trend, since 2008, of the Federal Circuit taking issue with rulings from the Eastern District of Texas denying transfer motions in patent infringement actions or denying the stay of proceedings in favor of an action pending in another jurisdiction.… Continue Reading

CRISPR Technology: A First-To-Invent Dispute in a Now First Inventor to File Patent Regime

Posted in Patent
On March 16, 2013, with the enactment of certain provisions of the America Invents Act (AIA), the United States’ patent system moved from being a first to invent patent system (first-to-invent) to a first inventor to file patent system (first-to-file) and retired the use of interference proceedings to determine priority of invention. Prior to and after the initiation of first-to-file system, there has been much debate as to the virtues of both systems. One aspect of this debate was that inventors with less resources and universities benefited more from the first-to-invent patent system rather than the first-to-file where resources can impact the ability to file quickly. It was in this atmosphere and as forecasted, that there was a surge in pre-March 16 application by inventors who sought to have their application reviewed under the first-to-invent system.… Continue Reading

Federal Circuit Affirms PTAB in First-Instituted Covered Business Method Review (CBM) Proceeding

Posted in E-Commerce, Patent
On July 9, 2015, the Federal Circuit affirmed a final written decision made by the U.S. Patent & Trademark Office Patent Trial and Appeal Board (“PTAB”) in SAP America, Inc. v. Versata Development Group, Inc. (CBM2012-00001), the PTAB’s first instituted Covered Business Method Review (“CBM”) Proceeding under § 18 of the Leahy-Smith America Invents Act (“AIA”). As a basis for the affirmance, the court established several important guidelines concerning Federal Circuit review of CBM proceedings which are highlighted below.… Continue Reading

USPTO Introduces an Expedited Patent Appeal Pilot

Posted in Patent, USPTO
On June 15, 2015, the Patent Trial and Appeal Board (“PTAB”) of the United States Patent and Trademark Office (“USPTO”) introduced a new pilot program, beginning on June 19, 2015, that will allow appellants with multiple ex parte appeals pending before the PTAB to obtain an expedited review of one appeal in return for withdrawing another appeal. The stated goals of this program are to allow appellants with multiple ex parte appeals pending to have greater control over the priority with which their appeals are decided and reduce the backlog of appeals before the PTAB.… Continue Reading

Supreme Court’s Adoption of Proposed Amendments to the Federal Rules of Civil Procedures Will Require Heightened Pleading Standards in Patent Infringement Actions

Posted in Patent
Recently, the Supreme Court adopted proposed amendments to the Federal Rules of Civil Procedure, that barring any modification by congressional action, may eliminate the difference in pleading standards between patent infringement actions and all other federal actions. However, such standardization of pleading requirements may be short lived in view of the reintroduction of the Innovation Act, H.R. 9, in the House of Representatives, which proposes heightened pleading standard for patent infringement actions.… Continue Reading

101 Gaining Importance in Local Patent Rule Submissions After Alice

Posted in Patent
A recent district court decision has held that patent eligibility arguments not raised in invalidity contentions served pursuant to local patent rules are waived. In Good Technology Corporation v. MobileIron, Inc., No. 5:12-cv-5826, the United States District Court for the Northern District of California denied Defendant MobileIron, Inc.’s motion for judgment on the pleadings based on patent eligibility arguments that were not disclosed in either original or amended invalidity contentions.… Continue Reading

White House Backs Recently Introduced Patent Reform Bill Known as PATENT Act

Posted in Patent, USPTO
On April 29, 2015, Senators Grassley, Leahy, Corny, Schumer, Lee, Hatch, and Klobuchar introduced another patent reform bill known as the Protecting Talent and Entrepreneurship Act of 2015 (“PATENT Act”). This bill includes many provisions similar to the previously introduced Innovation Act of 2015, but takes a slightly different approach on some key issues.… Continue Reading

Another Patent Reform Bill Targets Frivolous Demand Letters

Posted in Patent, USPTO
Last week, the House Energy and Commerce Committee approved yet another patent reform bill to curtail misleading and frivolous demand letters sent by patent assertion entities (also known as “patent trolls”). The legislation, approved by a vote of 30 to 20, is known as the Targeting Rogue and Opaque Letters Act, or TROL Act (H.R. 2045). This bill aims to protect businesses from frivolous demands while preserving the ability of patent holders to legitimately protect their intellectual property. The overall goal is to curtail “certain bad faith communications in connection with the assertion of a United States patent [that] are unfair or deceptive acts or practices, and for other purposes.”… Continue Reading

Case Update: CryoLife Appeals Preliminary Injunction to Declaratory Judgment Defendant in Patent Case

Posted in Patent
CryoLife, Inc. has appealed the preliminary injunction recently issued against it in the United States District Court for the District of Delaware barring sales of its PerClot Topical blood-clotting powder product. CryoLife Inc. v. C.R. Bard Inc. et al., Dkt. Entry No. 121, Notice of Appeal. CryoLife has asked United States Court of Appeals for the Federal Circuit to review the district court’s grant of a preliminary injunction based on CryoLife’s failure to present (1) an alternative non-infringement argument based on Medafor, Inc.’s proposed claim construction and (2) expert analysis to support its invalidity contentions. As security, Medafor has agreed to pay CryoLife $100,000 if the injunction is overturned.… Continue Reading

Congress Reintroduces Innovation Act in Hopes to Curb Frivolous Patent Litigation

Posted in Patent, USPTO
Recently, House Judiciary Committee Chairman Robert Goodlatte reintroduced a patent reform bill, known as the Innovation Act of 2015 (H.R. 9) (“The Act”). This reintroduced bipartisan bill is substantially similar to its predecessor, Innovation Act of 2013. The Innovation Act of 2013 had received overwhelming support by the House of Representatives, but was ultimately tabled, along with other patent reform bills, due to bipartisan disputes.… Continue Reading

The Patient Survives: Third Party Challenge to PTO Revival of Patent Application Barred under the Administrative Procedures Act

Posted in Patent
The Federal Circuit Court of Appeals recently held that a third party may not challenge a decision by the United States Patent and Trademark Office (“PTO”) to revive an application under the Patent Cooperation Treaty and enabling statutes (“PCT”) through the Administrative Procedures Act (“APA”). See Excela Pharma Sciences, LLC v. Lee, No. 13-1206 (Fed. Cir. Mar. 26, 2015). In combination with the Federal Circuit’s prior holding in Aristocrat Technologies Australia Pty Ltd. v. International Game Technology, 543 F.3d 657 (Fed. Cir. 2008), this holding puts such decisions beyond the reach of third parties, whether affirmatively attacked under the APA or defensively raised in a later infringement action.… Continue Reading

Award of Preliminary Injunction to Declaratory Judgment Defendant in the District of Delaware Offers Cautionary Tale in Opposition Strategy

Posted in Patent
District Court Judge Sue L. Robinson, U.S.D.J., of the United States District Court for the District of Delaware granted a rare preliminary injunction to the declaratory judgment defendant in a patent infringement action, highlighting the importance of presenting infringement arguments under both parties’ claim constructions and expert analysis that supports invalidity. CryoLife Inc. v. C.R. Bard Inc. et al., No. 14-559, Dkt. Entry No. 116, Mem. Order. The injunction bars sales of PerClot Topical, CryoLife’s blood-clotting powder product.… Continue Reading

Potential Delay Enough to Reduce PTA

Posted in Patent, USPTO
The Federal Circuit recently addressed the issue of whether Patent Term Adjustment (“PTA”) can be reduced under 35 U.S.C. § 154(b)(1)(C) by conduct that does not actually cause delay in the conclusion of prosecution. Section 154(b)(1)(C) provides that PTA “shall be reduced by a period equal to the period of time during which the applicant failed to engage in reasonable efforts to conclude prosecution of the application.” The USPTO has interpreted the statute to mean that conduct that did delay or that could potentially delay the examination of a patent applications should be sanctioned. In Gilead Sciences Inc. v. Lee, Gilead Sciences, Inc. (“Gilead”) contested the USPTO’s interpretation and argued that the statue required actual delay in the conclusion of prosecution. The Federal Circuit held that Congress’s intent in enacting the statute was “to sanction not only applicant conduct or behavior that result in actual delay, but also those having the potential to result in delay irrespective of whether such delay actually occurred.”… Continue Reading

Heightened Pleading in Patent Complaints to Frustrate Trolls – Exception for Hatch-Waxman/ANDA Cases

Posted in Patent
All branches of government have worked to decrease frivolous litigation by non-practicing entities (“NPEs”), or patent trolls, in order to both encourage developing technology and allow businesses to utilize that technology without a looming threat of disruptive and costly litigation. In the course of our coverage of these efforts, we have seen state and federal legislative bodies, as well as the United States Patent and Trademark Office (“USPTO”), the executive branch, and the courts, suggesting potential solutions. Congress is currently weighing a revamped version of House Judiciary Committee Chairman Bob Goodlatte’s Innovation Act bill, which seeks to reform patent litigation by focusing on pleading standards.… Continue Reading

The United States Deposits Ratification of the 1999 Geneva Act of the Hague Agreement and Becomes a Member Country of the Hague System

Posted in Patent, USPTO
On Friday, February 13, 2015, the United States deposited an instrument of ratification to the 1999 Geneva Act (Geneva Act) of the Hague Agreement Concerning the International Registration of Industrial Designs (Hague Agreement) with the World Intellectual Property Organization (WIPO). With this final step by the United States to become a signatory to the Geneva Act, qualifying U.S. applicants will be able to more easily protect their design patents in member countries and intergovernmental organizations (Contracting Parties) that have also signed on to the Geneva Act.… Continue Reading

Depending on the Circumstances, Claim Construction May Be Subject to Clear Error Review on Appeal

Posted in Patent
Traditionally, claim construction, which can be an important phase in patent litigation for setting the metes and bounds of a patent, has been viewed as a pure question of law and subject to de novo review by the Federal Circuit on appeal. This was considered problematic by some because the district court’s findings on claim construction, which the parties had been relying on throughout the litigation, were not given any deference on appeal.… Continue Reading

Federal Circuit Issues Its First AIA Appeal Ruling

Posted in Patent, USPTO
On Tuesday, the Federal Circuit issued its first ruling on an appealed Patent Trial and Appeal Board (“PTAB”) decision of an inter partes review (“IPR”). Cuozzo Speed Technologies (“Cuozzo”) owns U.S. Patent No. 6,778,074 (the “’074 patent”) entitled “Speed Limit Indicator and Method for Displaying Speed and the Relevant Speed Limit.” Garmin International, Inc. and Garmin USA, Inc. (collectively, “Garmin”) petitioned the United States Patent and Trademark Office (“USPTO”) for IPR of claims 10, 14, and 17 of the ’074 patent. The PTAB found the claims to be invalid as obvious.… Continue Reading
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