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The United States Deposits Ratification of the 1999 Geneva Act of the Hague Agreement and Becomes a Member Country of the Hague System 0

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

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.

Recent Case Reveals Effective Strategy for Responding to NPE Suits 0

Recent Case Reveals Effective Strategy for Responding to NPE Suits

A recent decision from the United States District Court of the District of Hawaii reveals an effective strategy for responding to non-practicing entity (NPE) suits and obtaining leverage early on in the litigation. This strategy takes into account the business model of some NPEs to name many (unconnected) industry players in one lawsuit and plead only bare allegations of patent infringement.

How to Meet the Inequitable Conduct Standard after Therasense 0

How to Meet the Inequitable Conduct Standard after Therasense

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.

AIA Post Issuance Proceedings – Patent Owner Challenges Standing of United States Entities to Bring PGR Review of CBM Patent 0

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

AIA Post-Issuance Proceedings – Patent Owner’s Preliminary Response Persuades PTAB Denial of IPR 0

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

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.

AIA Post-Issuance Proceedings – Live Testimony Finds Its Way Into Oral Argument for Inter Partes Review 0

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

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.”

AIA Post-Issuance Proceedings – First Claim Amendment Motion Granted in Inter-Partes Review 0

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

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.

AIA Post Issuance Proceedings – Additional Discovery Requested in Inter Partes Review Must Be “Surgically” Tailored 0

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

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.

AIA Post-Issuance Procedures – Estoppel Provisions Raised by Patent Owner In Attempt to Defeat “Synchronized” Decisions 0

AIA Post-Issuance Procedures – Estoppel Provisions Raised by Patent Owner In Attempt to Defeat “Synchronized” Decisions

The America Invents Act (AIA) of 2011 introduced a number of new inter partes procedures for post-issuance challenges of patents, including inter partes review (IPR) and a transitional program for covered business method patents (CBM). According to U.S. Patent & Trademark Office (PTO) statistics, nearly 1,200 petitions for IPR and CBM been have filed since September 16, 2012.

PTAB Finds DNA Sequencing Patent Claims to be Invalid 0

PTAB Finds DNA Sequencing Patent Claims to be Invalid

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.