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Practical Perspectives on Intellectual Property Legal Developments

Category Archives: Patent

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The New European Unitary Patent and Unified Patent Court: Are You Opting In?

Posted in Patent
The Gibbons Institute of Law, Science & Technology recently hosted a program to explore significant changes underway for the European patent landscape. At this program, Dr. Christoph Cordes, Partner at the German law firm Esche Schümann Commichau, presented an overview of the new European Unitary Patent and Unified Patent Court, and was joined by several panelists in a discussion about the anticipated impact of this new European patent regime.… Continue Reading

IRS Takes Aggressive Position in Challenging the Treatment of a License Agreement as a Sale of a Capital Asset

Posted in Patent
Recently, a Memorandum in Support of Motion for Summary Judgment was filed by the Internal Revenue Service (the “IRS”) in the Tax Court case Mylan Inc. & Subsidiaries v. Commissioner of Internal Revenue (Docket Nos. 16145-14 and 27086-14). Mylan’s opposition brief to the IRS’s motion followed shortly thereafter. This case illustrates the importance of exercising care when transferring intellectual property rights if you intend to benefit from capital gains treatment. An improperly structured sale may be recharacterized by the IRS as a license, resulting in a much larger tax liability for the transferor than what was anticipated.… Continue Reading

Supreme Court to Review Willful Infringement under 35 U.S.C. § 284

Posted in Patent
Last week, the U.S. Supreme Court granted certiorari to review the standard for willful infringement under 35 U.S.C. § 284. The Court was specifically asked to reject the rigid two-part test set forth by the Federal Circuit in In re Seagate, 497 F.3d 1360 (Fed. Cir. 2007), which requires the court to determine whether an alleged infringer: (1) acted despite an objectively high likelihood that its actions constituted infringement of a valid patent; and (2) this objectively-defined risk was either known or so obvious that it should have been known to the accused infringer.… Continue Reading

Federal Circuit En Banc Reaffirms Laches as a Defense to Patent Suits

Posted in Patent
Recently, the Federal Circuit, sitting en banc, ruled in SCA Hygiene Prods. Aktiebolag v. First Quality Baby Prods., LLC that laches remains a viable defense in patent infringement actions. In doing so, the Federal Circuit rejected the extension of the Supreme Court’s 2014 decision in Petrella v. Metro-Goldwyn-Mayer, Inc., which held that the laches defense does not apply in copyright cases because the copyright statute provides a three year statute of limitations for bringing an infringement suit.… Continue Reading

State of Vermont v MPHJ Technology Investments: A Case Study in the Timeliness and Basis of Removal

Posted in Patent
In State of Vermont v MPHJ Technology Investments, what appears initially as a factual simple matter, presents a complex procedural lesson in the timeliness and basis for removal of a matter from state court to federal court. In 2012, a number of Vermont businesses began receiving correspondence from MPHJ shell corporations alleging patent infringement. As a pattern, a business would receive an initial letter from the MPHJ corporation saying that the business had been identified as using patented technology. The letter included a survey to determine infringement and offered a licensing arrangement. If there was no response from Letter No. 1, Letter Nos. 2 and 3 would follow from MPHJ’s counsel, stating that the lack of a response was an admission and implying that litigation would follow.… Continue Reading

Federal Circuit Considering En Banc Rehearing in Ariosa Diagnostics, Inc. v. Sequenom, Inc.

Posted in Patent
The United States Court of Appeals for the Federal Circuit is deciding whether to reconsider en banc its panel decision in Ariosa Diagnostics, Inc. v. Sequenom, Inc. Numerous amici have lined up in support of rehearing. At stake is what room recent U.S. Supreme Court jurisprudence leaves for obtaining patent claims involving diagnostic innovations that use established processes.… Continue Reading

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
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