The Supreme Court unanimously finds that the AIA's "on sale" statutory language did not alter the pre-AIA "on-sale" bar.
On January 22, 2019, the U.S. Supreme Court held that the America Invents Act ("AIA") did not change...more
1/28/2019
/ America Invents Act ,
Appeals ,
Assignment of Inventions ,
Confidentiality Agreements ,
Helsinn Healthcare SA v Teva Pharmaceuticals USA Inc ,
Inventions ,
On-Sale Bar ,
Patent Applications ,
Patent Infringement ,
Patents ,
Pharmaceutical Industry ,
Pharmaceutical Patents ,
Public Use ,
Reaffirmation ,
Reversal ,
SCOTUS ,
Section 102 ,
Third-Party Relationships
A recent initial determination (“ID”) from the ITC resulted in a general exclusion order for products infringing several patents belonging to Complainant National Products Inc. (“NPI”). Certain Mounting Apparatuses For...more
Under 37 C.F.R. § 42.5(d), communications with a Board member regarding a specific proceeding are not permitted “unless both parties have an opportunity to be involved in the communication.” This prohibition, however, does...more
We previously noted that the Commission does not believe it is required to vacate a civil penalty order just because the litigants settle a case. The Federal Circuit’s decision in DBN Holdings, Inc. v. ITC, No. 17-2128 (Fed....more
Under 35 U.S.C. § 325(d), the PTAB has discretion regarding whether to institute a covered business method review if the arguments presented in the petition are the same, or substantially the same, as those previously...more
In In re Certain Magnetic Tape Cartridges and Components Thereof, 337-TA-1058 (ITC October 2, 2018, Order), Administrative Law Judge Cheney ruled that even if a respondent is estopped from raising certain invalidity...more
The ITC recently indicated that 19 U.S.C. 1337(a)(2) does not require that a domestic industry product be sold before a complaint is filed for a domestic industry to exist. See Certain Road Construction Machines and...more
Any person or entity may file an IPR proceeding to invalidate a patent, regardless of whether it faces a specific threat of infringement. An adverse decision in an IPR proceeding is appealable only to the Federal Circuit....more
In a recent order, Administrative Law Judge Shaw denied in part the Respondents’ Motion to Supplement their Notice of Prior Art. In re Certain Strontium-Rubidium Radioisotope Infusion Systems, And Components Thereof Including...more
In Diebold Nixdorf, Inc. v. ITC, the Federal Circuit reversed the ITC’s finding of a Section 337 violation based on the ITC’s reliance on unrebutted expert testimony. Diebold, No. 17-2553 (Fed. Cir. Aug. 15, 2018). The case...more
On July 27, 2018, the Federal Circuit reversed the PTAB’s finding that Petitioner GoPro, Inc. failed to establish the public availability of an alleged prior art printed publication. GoPro, Inc. v. Contour IP Holding LLC, __...more
In a recent decision, the Commission overruled the ALJ to clarify, and ultimately expand, the universe of investments that complainants can use to meet the economic prong of the domestic industry (“DI”) requirement. Certain...more
8/6/2018
/ Administrative Law Judge (ALJ) ,
Corporate Counsel ,
Domestic Industry Requirement ,
Initial Determination (ID) ,
International Trade Commission (ITC) ,
Investment ,
Manufacturers ,
Patent Infringement ,
Patents ,
Research and Development ,
Section 337
When the Supreme Court issued its decision in SAS Institute regarding partial IPR institution, the PTAB estimated that there were several hundred pending IPRs in which the Board had instituted some, but not all, claims and/or...more
While patent decisions from the ITC do not have collateral estoppel effects on later district court cases, other ITC decisions may create collateral estoppel. In a case of first impression, a district court recently ruled...more
On April 24, 2018, the U.S. Supreme Court issued its decision in SAS Institute Inc. v. Iancu, where the Court held that the Patent Trial and Appeal Board (PTAB) must issue a final written decision as to any patent claim...more
Late last week, the International Trade Commission (“ITC”) finalized changes to its rules, which changes were first proposed in late 2015. The new rules are expected to be published in the Federal Register in early May 2018...more
5/3/2018
/ Administrative Law Judge (ALJ) ,
Corporate Counsel ,
Expedited Discovery ,
Federal Pilot Programs ,
Federal Register ,
Federal Rules of Civil Procedure ,
Intellectual Property Protection ,
International Trade Commission (ITC) ,
New Rules ,
Patents ,
Proposed Regulation ,
Rulemaking Process ,
Rules of Practice ,
Section 337 ,
Young Lawyers
On February 14, 2018, the Commission affirmed ALJ Pender’s initial determination of non-infringement but based on modified grounds related to the construction of the claim term “single-molecule sequencing.” In re Certain...more
On March 20, 2018, Reps. Steve Stivers (R-Ohio) and Bill Foster (D-Ill.) announced in an article that they would introduce the STRONGER Patents Act to the U.S. House of Representatives. More formally referred to as The...more
In a recent order, the Commission again declined to institute an Early Disposition Pilot Program (100-day Pilot Program), this time citing the complexity of the issues raised in the request. In the Matter of Certain...more
In previous posts, we have discussed whether the PTAB and the district courts can reach different conclusions on the same issue. In those instances, the Federal Circuit held they can, because the standards applicable at the...more
Following up on a previous post, Administrative Law Judge Bullock recently granted Respondents Fujifilm Holdings Corporation, Fujifilm Corporation, Fujifilm Holdings America Corporation, and Fujifilm Recording Media U.S.A.,...more
By Dave Maiorana By now, most PTAB practitioners are familiar with 35 U.S.C. § 325(d), which gives the Board the authority to deny institution of a post-grant proceeding because the same or substantially the same prior art or...more
In a recent order, Administrative Law Judge Lord denied Respondents CSL Behring LLC, CSL Behring GMBH, and CSL Behring Recombinant Facility AG (“CSL Behring”) motion to compel discovery from Complainants Bioverativ Inc.,...more
1/2/2018
/ Administrative Law Judge (ALJ) ,
Discovery ,
Inequitable Conduct ,
Motion to Compel ,
Patent Infringement ,
Patent Litigation ,
Patent-in-Suit ,
Patents ,
Prior Art ,
Section 337 ,
USPTO
The PTAB’s practice of partially instituting IPRs has been in the news lately, with Jones Day recently arguing against that practice at the Supreme Court on behalf of the SAS Institute (“SAS”). On December 5, 2017, the week...more
In two recent orders, the Commission denied respondents’ requests for entry into its Early Disposition Pilot Program (100-day Pilot Program). It has now been over two years since the ITC issued its proposed rulemaking for the...more