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IP Law Alert

Practical Perspectives on Intellectual Property Legal Developments

Category Archives: Patent

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Start the Clock: NJ Court Holds Declaratory Judgment Available to Later ANDA Filers

Posted in Patent
Yesterday, the United States District Court for the District of New Jersey held that patents listed in the Approved Drug Products with Therapeutic Equivalence Evaluations (the “Orange Book”), but not asserted under the Hatch-Waxman framework, are subject to declaratory judgment actions by later ANDA filers seeking to trigger the first ANDA filer’s exclusivity period… Continue Reading

Market Growth of Fuel Cell Products Follow Patent Growth of Fuel Cell Technologies

Posted in Patent
Recently, Wal-Mart placed an order for 1,738 fuel cell powered forklifts that move products in Wal-Mart’s warehouses. This highly publicized order spotlights the emerging commercial markets, the technologies and patents that have made the production of energy through fuel cells more cost effective. The commercial use of fuel cells is certainly not new, however. Advancements in the technology have decreased costs associated with the production of energy from fuel cells and consequently there has been a rise in the commercial use of fuel cells. The Clean Energy Patent Growth Index shows that for the last decade fuel cell related patents outpaced all other clean energy technology patents until 2013 when solar patents for the first time surpassed fuel cell patents… Continue Reading

PTAB Roundtables Coming to a City Near You

Posted in Patent, USPTO
On March 25, 2014, the United States Patent and Trademark Office (USPTO) announced that the Patent Trial and Appeal Board (PTAB) would be hosting roundtables across the country to educate the public, and collect feedback regarding the new America Invents Act (AIA) trial proceedings. These roundtables are free and open to the public. According to Deputy Under Secretary of Commerce for Intellectual Property and Deputy Director of the USPTO, Michelle Lee, “[t]hese roundtables are a part of USPTO’s ongoing efforts to provide more opportunities for the public and other key stakeholders to share ideas, feedback, experiences and insights on additional ways we can improve our processes.”… Continue Reading

Patent 101

Posted in Patent
On the heels of CLS Bank Int’l v. Alice Corp. Pty presently before the Supreme Court, the Federal Circuit and district courts in 2014 have continued to issue decisions analyzing computer-implemented inventions under 35 U.S.C. § 101. These courts have generally sought to answer similar questions: whether the claim is an abstract idea; whether this abstract idea preempts all other uses or can be performed in the human mind (or on a pen and paper); and whether the claim contains other limitations to narrow it sufficiently, such as being tied to a specific machine or transforming the data into a different thing… Continue Reading

New Patent Case Scheduling Order Seeks to Achieve Efficiencies in Delaware

Posted in Patent
This week, United States District Judge Sue L. Robinson issued a new Patent Case Scheduling Order dictating how patent cases will proceed in Her Honor’s Court. The District of Delaware is second only to the Eastern District of Texas in the number of patent cases filed; both of which have nearly three times the number of patent cases as the third busiest district, the Central District of California. In order to help streamline the hundreds of patent cases assigned to Her Honor, Judge Robinson issued a new Patent Case Scheduling Order, requiring the identification of key issues earlier in the case, which should improve overall case efficiencies… Continue Reading

PTAB Finds DNA Sequencing Patent Claims to be Invalid

Posted in Biotech, Patent
As we have previously reported, Inter Partes Review (IPR) was introduced on September 11, 2012, under provisions of the America Invents Act (AIA) as one of new several tools for challenging the validity of granted patents in the U.S. Patent & Trademark Office (USPTO). With an anticipated pendency of 18 to 24 months to final written decision upon filing of an IPR request, the USPTO’s Patent Trial and Appeal Board (PTAB) is presently proceeding to issue its first IPR decisions. Although a majority of IPR requests filed to date have been directed to patents in the electrical and computer arts, decisions are also being rendered for patents in other technology domains including the biological arts… Continue Reading

A Quest to Slay the Trolls: Legislative Attempts to Send a Cease and Desist Message to Patent Trolls

Posted in Patent
Concerns about shake-down patent assertion have prompted response at federal and state levels, from all branches of government. Proposed legislative solutions have included bills that would penalize bad faith claims, impose fines on patent assertion entities (“PAEs”) that send letters with vague allegations of infringement, or make the awarding of attorney’s fees standard in PAE patent litigations. While no legislative proposal answers all the unique challenges patent trolls represent, these lawmaking efforts have highlighted the issue and are prompting other stakeholders to meaningfully assess the holes in the current patent system… Continue Reading

Potential For Harm: Indemnity Agreements and Willfulness Determinations

Posted in Licensing, Patent
Patent indemnification agreements, common in asset purchases, mergers and acquisitions, manufacturing, and patent licensing agreements, reduce the possibility of liability should a third party later assert its patent against the asset purchaser or licensee. However, entering into such agreements to mitigate risk can actually increase exposure. During the damages stage of patent infringement lawsuits plaintiffs often seek, with varying success, to bring in evidence of the existence of a defendant’s indemnification agreement to show that defendant knew of the patent and committed willful infringement. Thus, the very vehicle used to shift the risk of monetary liability can sometimes itself be used as a mechanism to enhance damage awards… Continue Reading

Track B – EDTX Continues to Spearhead Efficient Patent Litigation Procedures

Posted in Patent
The Eastern District of Texas continues to lead the way with practical and efficient procedures for patent litigations. On February 25, Chief Judge Leonard Davis implemented General Order 14-3 “Regarding Track B Initial Patent Case Management Order.” This Order provides “additional efficiencies and cost savings” for appropriate patent cases, and is designed to complement the existing and now familiar case management procedures and local rules, or so-called “Track A,” case management schemes… Continue Reading

Watch Out: Lack of Diligence When Amending Contentions Can Lead to Preclusion

Posted in Patent
A party needs to be cognizant of the infringing instrumentalities it identifies in its infringement contentions and any subsequent amendments. In LMT Mercer Group, Inc. v. Maine Ornamental, LLC et al, No. 10-4615, 2014 U.S. Dist. LEXIS 5719 (D.N.J. Jan. 24, 2014), Judge Wolfson denied Plaintiff LMT Mercer Group’s (“LMT”) motion to amend its infringement contentions to add a product that it removed from its previous filings and then delayed in correcting that exclusion… Continue Reading

The United States Patent Trial and Appeal Board Determines That a Civil Action Dismissed Without Prejudice Does Not Bar a Petition for Inter Partes Review Under 35 U.S.C. § 315 (a)(1)

Posted in Patent
We previously reported on February 6, 2014, that the United States Patent Trial and Appeal Board ("PTAB") determined that a "complaint alleging infringement of the patent" does not include arbitration proceedings for purposes of triggering the time bar under 35 U.S.C. § 315(b)… Continue Reading

Federal Circuit Fires Shot Across Congress’s Bow: Redefines Standard for Finding an Exceptional Case and Awarding Attorneys’ Fees

Posted in Patent
In Kilopass Tech., Inc. v. Sidense, Corp., No. 13-1193, 2013 U.S. App. LEXIS 25671 (Fed. Circ., Dec. 26, 2013), the Court of Appeals for the Federal Circuit recently relaxed the standard for finding "an exceptional case" to justify attorneys' fees in patent infringement actions. For IP practitioners, this case highlights the current state of the law regarding the necessary showing of bad faith to justify an award of attorneys' fees in a patent infringement suit… Continue Reading

Momentum Builds on Patent Litigation Reform…Goodlatte Bill Passes House

Posted in Patent
As we previously reported, House Judiciary Committee Chairman Bob Goodlatte (R-VA) recently introduced H.R. 3309, entitled "Innovation Act," (hereafter, "the Goodlatte Bill"). After varying support and challenges to the bill, as well as a competing Senate version, on December 5, 2013, the House passed an amended version of the Goodlatte Bill with a bi-partisan vote of 325-… Continue Reading

Court Finds No Direct Infringement by Fracking Water Suppliers

Posted in Patent
In Energy Heating, LLC, et al. v. Heat On-the-Fly, LLC, et al., 13-cv-00010 (D. N.D.), the District Court for the District of North Dakota recently granted partial summary judgment of noninfringement for the Plaintiffs, who provide portable water heaters in North Dakota. Plaintiffs had brought a declaratory judgment action against Defendants, who had allegedly reported the suspected infringement of their patent to Plaintiffs' customers… Continue Reading

Supreme Court to Take Case on Patentability of Software

Posted in Patent
On Friday, the Supreme Court granted a writ of certiorari in Alice Corp. v. CLS Bank Int'l (Docket No. 13-298). In this case, the Court will take up the issue of: Whether claims to computer-implemented inventions - including claims to systems and machines, processes, and items of manufacture - are directed to patent-eligible subject matter within the meaning of 35 U.S.C. § 101 as interpreted by this Court… Continue Reading

A Rare Inter Partes Review for an Orange Book Listed Patent

Posted in Patent
Ranbaxy Laboratories, Ltd. ("Ranbaxy") and Vertex Pharmaceutical, Inc. ("Vertex") recently settled an inter partes review ("IPR") proceeding regarding Vertex's U.S. Patent No. 6,436,989 ("the '989 Patent"). Vertex had listed the '989 Patent in the FDA's published Approved Drug Products with Therapeutic Equivalence Evaluations, otherwise known as the Orange Book, as covering its HIV drug, Lexiva®. The significance of this event is the rarity of the use of IPR on patents typically challenged under the Hatch-Waxman framework. Recent statistics show that the majority of IPR have involved electrical/computer patents. Less than 6% of IPRs have been directed to biotechnology/pharmaceutical patents. The likely reason for the limited use of IPR on pharmaceutical patents, particularly those listed in the Orange Book, is the estoppel provisions of the IPR proceedings. See 35 U.S.C. §§ 315(e)… Continue Reading

PTAB Issues its First Decision in an Inter Partes Review Trial

Posted in Patent
Just ten months after issuing its Decision to Initiate Trial in the very first Inter Partes Review ("IPR") proceeding (IPR2012-00001, Garmin International, Inc. et al. v. Cuozzo Speed Technologies LLC ), the Patent Trial and Appeal Board ("PTAB") of the United States Patent and Trademark Office ("USPTO") has issued a Final Written Decision in favor of the Petitioner, Garmin. In its Decision, the PTAB found the claims at issue to be unpatentable as obvious in view of the cited prior art, and further denied Patent Owner Cuozzo's Motion to Amend the claims… Continue Reading

Lawmakers Urge Caution on Innovation Act

Posted in Patent
We previously reported on the recent efforts by Congress to reform patent litigation procedures by way of the House's "Innovation Act" H.R. 3309. The Senate is considering its version of the bill, entitled the Patent Litigation Integrity Act, S. … Continue Reading

Senate Proposes Its Bill on Patent Litigation Changes

Posted in Patent
Last week, Senate Judiciary Chairman Orrin Hatch (D. UT) introduced the Patent Litigation Integrity Act, S. 1612. The Senate bill follows the introduction of a bill proposed by House Judiciary Committee Chairman Bob Goodlatte (R. VA), H.R. 3309, entitled "Innovation Act," which also proposes a number of significant changes to patent litigation procedures… Continue Reading

Supreme Court Will Not Review Bar for Proving Inequitable Conduct

Posted in Patent
We have previously reported on the Federal Circuit's en banc decision in Therasense, Inc. v. Becton Dickinson & Co., 649 F.3d 1276 (Fed. Cir. 2011) issued on May 25, 2011. In that decision, the Federal Circuit heightened the standard required to show that a patent holder committed inequitable conduct during the prosecution of the patent at issue. Prior to Therasense, an accused infringer asserting inequitable conduct as a defense had to show that the withheld information or false statements were material and the patent applicant intended to deceive the USPTO. Materiality and intent were analyzed on a sliding scale, where intent could be inferred if the withheld information was considered highly material… Continue Reading
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