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IP Law Alert

Practical Perspectives on Intellectual Property Legal Developments

Category Archives: Patent

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The ITC and FTC Take Actions to Address the Toll of NPE Litigation

Posted in ITC, Patent
We have previously posted on proposed federal and state legislation aimed at addressing the toll of “patent troll” litigation by non-practicing entities (“NPEs”) on the U.S. economy. Additionally, a recent Federal Circuit ruling relaxing the standard for finding “an exceptional case” to justify attorneys’ fees in patent infringement actions also appears to have been motivated by need to address NPE litigation. Now the United States trade commissions want to enter the fray. The U.S. International Trade Commission (ITC), through its recent decision In the matter of Certain Optical Disc Drives, Components Thereof, and Products Containing the Same, limited the ability of licensing entities, whose patent-related activities are purely revenue driven, to bring actions under 19 U.S.C. § 1337(a)(3). Additionally, the U.S. Federal Trade Commission (FTC) has recently been given approval to conduct a study on NPEs to examine how they operate and to what extent they affect competition and innovation… Continue Reading

How to Meet the Inequitable Conduct Standard after Therasense

Posted in Patent
The Court of Appeals for the Federal Circuit recently clarified the standard necessary for holding a patent unenforceable for inequitable conduct relating to intentionally withheld references and misrepresentations of material information. Apotex Inc. v. UCB, Inc., No. 2013-1674 (Aug. 15, 2014). Given the high standard set forth in the Federal Circuit’s prior opinion in Therasense, this decision finding inequitable conduct provides a roadmap for inventors, prosecutors, and litigants alike with regard to potential claims of inequitable conduct… Continue Reading

The Section 1447(d) Bar – State of Vermont v. MPHJ Technology Investments, LLC

Posted in Patent
In a case of procedural jockeying, the United States Court of Appeals for the Federal Circuit in State of Vermont v. MPHJ Technology Investments, LLC, held that a “district court’s remand order dominate[d] any proceedings on th[e] appeal” and because a remand under 28 U.S.C. 1447(d) “is not reviewable on appeal or otherwise[,]” the Federal Circuit lacked appellate jurisdiction… Continue Reading

AIA Post Issuance Proceedings – Patent Owner Challenges Standing of United States Entities to Bring PGR Review of CBM Patent

Posted in Patent
The United States Court of Federal Claims recently deferred decision on whether to stay a litigation brought in 2011 by a patent owner against the United States. In the case, captioned Return Mail, Inc. v. United States, patent owner Return Mail seeks compensation under 28 U.S.C. § 1498(a) for what it alleges to be use and manufacture by or for the U.S. Postal Service (USPS) of its patent related to methods and systems for providing address change services. The government’s stay motion in the Return Mail litigation was filed on the same day that it filed a petition with the Patent Trial and Appeal Board (PTAB) for post-grant review (PGR) of the patent-in-suit, which it claims is a covered business method (CBM) patent under the America Invents Act. The government’s petition and related stay motion come more than three years into the litigation. … Continue Reading

PTAB Decides First Pharma IPR

Posted in Patent
Last week, in what appeared to be one of the first pharmaceutical based cases brought to a decision under the IPR regime, the Patent Trial and Appeals Board (PTAB) of the US Patent and Trademark Office held that the majority of claims in a series of vitamin supplement patents were invalid. This decision turns the welcoming lights on for the generic drug industry to utilize the inter partes review (IPR) procedures under the America Invents Act to challenge proprietary pharmaceutical patents. In this matter, the challenger Gnosis, a defendant in an infringement action brought by Merck & Cie, South Alabama Medical Science Foundation and Parmlab, which was stayed pending the IPR decision, successfully defended against the four patents in issue: United States Patent Nos. 5,997,915, 6,011,040, 6,673,381 and 7,172,778 which are directed to compositions and methods of use involving chiral reduced natural folate compounds used as food supplements to prevent or treat folate deficiency diseases… Continue Reading

USPTO Implements Test for Patent Eligible Subject Matter Under §101 Following the Supreme Court’s Alice Decision

Posted in Patent
We recently discussed the Supreme Court’s test for patentable subject matter under section 101 in Alice Corp. Pty v. CLS Bank Int’l, 573 U.S. ___ (2014). In its opinion, the Court applied the two-step process set forth in Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. __ (2102); (i) whether the claims are directed to patent-ineligible matter (e.g., abstract idea) and (ii) whether the claims contain an inventive concept (e.g., “additional features to ensure that the claim is more than a drafting effort designed to monopolize the abstract idea.”)… Continue Reading

Carving Out State Protections in Patent Enforcement

Posted in Patent
We have previously posted on proposed federal and state legislation aimed at addressing the toll of patent troll litigation on the U.S. economy. To date, twenty-five states have passed or are considering legislation aimed at curbing bad-faith patent assertion through state law, either based in consumer protection or through laws directed at bad business practices. From Vermont, one of the first states to adopt such legislation, MPHJ Technology Investments LLC (“MPHJ”), an alleged patent troll, seeks the opinion of the Court of Appeals for the Federal Circuit on the issue of federal patent law preemption… Continue Reading

AIA Post-Issuance Proceedings – Patent Owner’s Preliminary Response Persuades PTAB Denial of IPR

Posted in Patent
In accordance with the statutory provisions of the America Invents Act, a patent owner may at his/her option file a preliminary response to a third-party petition requesting inter partes review (IPR) of a patent. Through the first quarter of 2014, about 55 percent of patent owners opted to file preliminary responses to IPR petitions, while 45 percent of patent owners opted instead either to expressly waive or file no preliminary response… Continue Reading

Alice is Not in Wonderland: Generic Computers and Abstract Ideas Don’t Mix

Posted in Patent
District courts have been abuzz with accused infringers asserting invalidity based on ineligible subject matter under section 101. This is a result of evolving jurisprudence developed by the Federal Circuit and Supreme Court over the last few years. Today, that continued with the Supreme Court unanimously holding in Alice Corp. Pty v. CLS Bank Int’l, 573 U.S. ___ (2014) that, for claims drawn to an abstract idea, “merely requiring generic computer implementation fails to transform that abstract idea into a patent-eligible invention.”… Continue Reading

NJ District Courts Bar Defendants’ Indefiniteness Argument During Claim Construction Because Not Alleged in Invalidity Contentions

Posted in Patent
We previously reported that New Jersey District Court Judges will limit a patent infringement defendant’s discovery to the claims and defenses identified in its Invalidity Contentions served under Local Patent Rule 3.3. For the same reasons, a defendant may be barred from taking certain positions during claim construction. In an opinion issued last week, Judge Jose L. Linares held in Auxilium Pharmaceuticals, Inc. & FCB I LLC v. Watson Laboratories, Inc., No. 12-3084 (JLL) that a defendant that does “not raise an indefiniteness defense in its invalidity contentions . . . cannot seek a determination that the patents-at-issue are invalid for indefiniteness through claim construction.”… Continue Reading

Two Wrongs Don’t Make a Right: Supreme Court Declines to Expand the Scope of Indirect Infringement Liability in View of Federal Circuit’s Muniauction Ruling

Posted in Patent
The United Supreme Court has been a “hot bench” for patent cases. On the same day, it issued two unanimous decisions reversing the Federal Circuit relating to claim definiteness and inducement infringement, the former of which we previously discussed. In the latter, Limelight Networks v. Akamai Tech. No. 12-786, 572 U.S. ___ (2014), the U.S. Supreme Court held that a party cannot be liable for inducing infringement under 35 U.S.C. §271(b) unless there is direct infringement in 35 U.S.C. §271(a). The Court in dicta also suggested that the Federal Circuit may wish to reconsider its prior decision, Muniauction, Inc. v. Thomson Corp., 532 F.3d 1318 (2008), which held that a party--who does not perform all the method steps--cannot be liable for direct infringement in §271(a) unless it controls or directs another party to complete the other steps… Continue Reading

USPTO Adopts Final Rules of Practice for Recalculation of PTA

Posted in Patent
On May 15, 2014, The United States Patent and Trademark Office (USPTO) published a Federal Register notice regarding the final changes to the rules of practice that relate to the patent term adjustment (PTA) provisions of section 1(h) of the Leahy-Smith America Invents Act (AIA) Technical Corrections Act. The previously published information was in guideline form only and did not encompass issues addressed by the presently provided rules… Continue Reading

AIA Post-Issuance Proceedings – Live Testimony Finds Its Way Into Oral Argument for Inter Partes Review

Posted in Patent
In order to achieve the statutory requirement of rendering a final determination no later than one year following the institution of an Inter Partes Review (IPR), the Trial Practice Guidelines set forth by the U.S. Patent & Trademark Office “lay out a framework for conducting the proceedings aimed at streamlining and converging the issues for proceeding.” For example, the guidelines for oral arguments prohibit the submission of new evidence and arguments by the parties, and suggest that live testimony is generally unnecessary. The parties may however move for live testimony in “appropriate situations.”… Continue Reading

Nautilus, Inc. v. Biosig Instruments, Inc. – Definiteness Now Requires Reasonable Certainty

Posted in Patent
On June 2, the Supreme Court in Nautilus, Inc. v. Biosig Instruments, Inc., No. 13-369, __ U.S. __ (June 2, 2014) (Ginsburg, J.) ruled that the prior tests for indefiniteness, insoluble ambiguity and amenable to construction, are no longer appropriate. The new test for definiteness requires reasonable certainty… Continue Reading

AIA Post-Issuance Proceedings – First Claim Amendment Motion Granted in Inter-Partes Review

Posted in Patent
Prior to April 22, 2014, and since the filing of the first petition for inter partes review on September 16, 2012, the Patent Trial and Appeal Board (PTAB) of the U.S. Patent and Trademark Office (USPTO) had not granted any patent owner’s motion to amend claims of patents under review. On April 22, 2014, this record changed as the PTAB issued its first decision in International Flavors & Fragrances, Inc. v. U.S. Department of Agriculture (IPR2013-00124) partially granting the patent owner’s motion for claim amendment… Continue Reading

AIA Post Issuance Proceedings – Additional Discovery Requested in Inter Partes Review Must Be “Surgically” Tailored

Posted in Patent
In comparison to discovery obtainable in federal district court proceedings, discovery obtainable in inter partes review (IPR) proceedings conducted by the Patent Trial and Appeal Board (PTAB) of the U.S. Patent and Trademark Office (USPTO) under the America Invents Act (AIA) is sharply limited. Aside from “mandatory initial disclosures” agreed to by the parties and “routine discovery” largely limited to the cross-examination of experts, additional discovery must be requested by motion to the PTAB, with a showing that such discovery is required “in the interests of justice.” If the request is denied, the moving party can request the motion to be reheard by the PTAB by identifying all matters the party believes the Board misapprehended or overlooked. … Continue Reading

Case Highlight: Spiro v. Vions Technology, Inc. – State Court Maintains Subject Matter Jurisdiction In Dispute Surrounding Intellectual Property Ownership Rights of A Now-Bankrupt Corporation

Posted in Patent
Intellectual property and bankruptcy disputes are matters typically reserved for the subject matter jurisdiction of the federal courts. However, in Spiro v. Vions Technology, Inc., C.A. No. 8287-VCP (Del. Ch. March 23, 2014) the Court of Chancery of the State of Delaware (“Chancery Court”) addressed a procedural question as to subject matter jurisdiction and held that where a debtor’s intellectual property and related licensing agreements had been abandoned by the bankruptcy trustee, the Chancery Court has subject matter jurisdiction over an action to determine, among other things, the ownership of such intellectual property. Specifically, plaintiff Spiro, a creditor in the bankruptcy action and a former shareholder of the bankrupt corporation, Ionsep Corporation Inc. (“Ionsep”), brought an action in the Chancery Court seeking, along with damages, that the Court: (i) void the exclusive licensing of the intellectual property as an allegedly fraudulent transfer, (ii) enjoin further licensing of the intellectual property by the licensee and (iii) return the intellectual property to the shareholders of Ionsep. Defendant Vions Technology Inc. (“Vions”), to which the intellectual property at issue had been transferred pre-bankruptcy, argued that Spiro had no standing to bring the fraudulent transfer action and that the bankruptcy court maintained jurisdiction over the intellectual property in question. … Continue Reading

Patent 101 Continued

Posted in Patent
Section 101 challenges continue to be front and center at the district court level, including three recent decisions in the United States District Courts for the Northern District of California and Eastern District of Virginia which reflect holdings falling on opposite sides of 101 patentability. In France Telecom S.A. v. Marvell Semiconductor Inc., the court denied defendant’s summary judgment motion because it failed to meet the “high level of proof” needed to succeed on an eligibility challenge under section 101. There, the patent involved correcting errors in telecommunication and other signals (caused by noise or interference which distorts the data) known as turbo coding. After summarizing relevant jurisprudence, the court identified the abstract ideas relevant to the subject matter of the patent claims at issue as “error-correction coding” or “decoding digital data elements.” The court then analyzed whether the claims contained “additional substantive limitations that narrow, confine, or otherwise tie [them] down.” Specifically, the court found that they provide “unique and detailed [error-detection coding or decoding] methods . . . or inventive concepts that exceed the prior art, namely, coding in parallel and a novel method of iterative coding.” Thus, the claimed inventions “provide the necessary substantive claim limitations beyond the mere recitation” of abstract ideas. The court also gave the claims a passing grade in the machine-or-transformation test: “[c]laim 1 takes digital data elements and turns them into a distinct series of coded data elements, which Claim 10 in turn decodes.” The court further found relevant (similar to the court in TQP Development we previously discussed) that the purpose of the patent was “to disclose a method for more accurate and efficient data transmission.”… Continue Reading

It Ain’t that Obvious to Try

Posted in Patent, Pharmaceuticals
In Sanofi-Aventis Deutschland GmbH v. Glenmark Pharms Inc., the Federal Circuit followed previous precedent in holding that the combination of compounds is not “obvious to try” if unexpected properties are supported by evidence. The patent-at-issue was directed to an antihypertension drug, Tarka®, which is the combination of an angiotension-converting enzyme inhibitor (such as trandolapril or quinapril, both double-ring compounds) and a calcium channel blocker. The jury found that the patent had not been proven invalid and defendant, on appeal, argued that “if a combination of classes of components is already known, all selections within such classes are obvious to try . . . .” The Federal Circuit found that there was substantial evidence supporting the jury’s verdict that obviousness had not been proved by clear and convincing evidence because of the unpredicted “longer-lasting effectiveness” achieved with the drug… Continue Reading

In the Limelight: Induced Infringement Issues Retakes Center Stage

Posted in Patent
On April 30, 2014, the Supreme Court heard oral arguments in Limelight Networks, Inc., v. Akamai Technologies, Inc., et al., No. 12-786. We previously reported on the Federal Circuit’s twin en banc opinions in Akamai Techs., Inc. v. Limelight Networks, Inc., and McKesson Techs. Inc. v. Epic Sys. Corp., 692 F.3d 1301 (Fed. Cir. 2012), finding inducement under 35 U.S.C. § 271(b) even when a single actor was not liable for direct infringement. Both Limelight and Epic petitioned the Supreme Court for review, but the Epic case subsequently settled… Continue Reading

Supreme Court Reestablishes Standard for Attorneys’ Fees Under §285

Posted in Patent
On Tuesday, April 29, 2014, the Supreme Court in Octane Fitness v. ICON Health and Fitness issued a ruling that reestablishes the previous standard for awarding attorneys' fees in the event of an exceptional case under 35 U.S.C. §285. In its opinion, the Court held that a case should be considered “exceptional” when it “is simply one that stands out from others with respect to the substantive strength of a party’s litigating position … or the unreasonable manner in which the case was litigated.” The Court instructed that this determination should be made on a “case-by-case” basis “considering the totality of the circumstances.”… Continue Reading

Upcoming Gibbons Institute Event – “USPTO Patent Post-Issuance Proceedings Under the America Invents Act” – May 6

Posted in Patent
On Tuesday, May 6, the Gibbons Institute of Law, Science & Technology will host, "USPTO Patent Post-Issuance Proceedings Under the America Invents Act: Considerations Impacting the Healthcare and Technology Sectors," at 5:00 pm in the Metropolitan Room of the Newark Club. In-house patent counsel from Pfizer, Johnson & Johnson, IBM, and Alcatel-Lucent are among the featured panelists… Continue Reading

NJ District Courts Hold Defendants’ Feet to the Fire on Patent Contentions

Posted in Patent
We previously reported that plaintiffs need to diligently seek to amend their infringement contentions to include accused instrumentalities identified during discovery or risk preclusion. That premise applies equally to defendants. This week in Nippon Steel & Sumitomo Metal Corp. v. POSCO et al., No. 2:12-cv-02429-SRC-CLW, Judge Stanly R. Chesler affirmed a Special Master’s Order denying discovery on Plaintiff’s prior art manufacturing process because Defendant “had failed to disclose an Invalidity Contention based on [Nippon’s manufacturing process].”… Continue Reading
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