The Federal Circuit recently refused to apply collateral estoppel to claims of a patent asserted in district court litigation based on a Patent Trial and Appeal Board (PTAB) decision finding similar claims from the same...more
The District of Delaware recently denied in part a motion to compel production of documents and testimony between a patentee and potential investors, valuation firms and an international bank based on the common interest...more
The Federal Circuit affirmed a Patent Trial and Appeal Board (PTAB) final written decision holding that the prior art exception of AIA Section 102(b)(2)(B) does not apply to a prior sale by an inventor when the sale is...more
The Federal Circuit recently reversed a district court decision that found a patent that did not describe after-arising technology failed to satisfy the written description requirement. In so doing, the Federal Circuit...more
2/14/2025
/ Abbreviated New Drug Application (ANDA) ,
Claim Construction ,
Enablement Inquiries ,
Generic Drugs ,
Intellectual Property Litigation ,
Intellectual Property Protection ,
Patent Infringement ,
Patent Litigation ,
Patents ,
Pharmaceutical Patents ,
Section 112 ,
Written Descriptions
The District of Arizona recently held that a plaintiff’s failure to mark patented products during the time period that marking was required barred it from recovering all pre-notice damages, including for a period of time when...more
The Patent Trial and Appeal Board determined that a reference could be used as prior art because patent owner failed to provide sufficient evidence that the prior art’s disclosure was invented by all four named inventors, and...more
The Federal Circuit vacated a district court’s fee award because the district court considered certain information that was not relevant to the question of whether plaintiff’s case was exceptional. Specifically, the Federal...more
The Patent Trial and Appeal Board exercised its discretion under General Plastic to deny institution of a follow-on petitioner’s request for inter partes review despite determining that the petitioner did not have a...more
The Patent Trial and Appeal Board denied institution of an inter partes review petition because a prior art patent figure did not provide exact dimensions, and therefore could not meet the relevant claim limitation. On...more
In a case it described as “‘a prime example’ of when ODP does not apply,” the Federal Circuit recently reversed a decision from the District of Delaware that invalidated a claim for obviousness-type double patenting (ODP),...more
The Patent Trial and Appeal Board instituted an inter partes review over patent owner’s objections that the petition did not timely identify all real parties-in-interest (RPI) and was filed by a phantom legal entity after...more
7/29/2024
/ California ,
Delaware ,
Inter Partes Review (IPR) Proceeding ,
Jurisdiction ,
Limited Liability Company (LLC) ,
Patent Infringement ,
Patent Litigation ,
Patent Ownership ,
Patent Trial and Appeal Board ,
Patents ,
Reorganizations
A court in the Western District of Oklahoma dismissed a complaint as to one of the asserted patents where the patent included a terminal disclaimer stating that the patent would be enforceable only as long as it was co-owned...more
The Federal Circuit reversed a decision from the District of Delaware dismissing a case for failing to plead induced infringement because the totality of the evidence raised fact questions that could not be resolved on a...more
The district court in a patent infringement case granted plaintiff’s ex parte request to strike defendant’s prior use defense under 35 U.S.C. § 273. Because defendant failed to plead the defense and did not raise it until...more
The Director of the U.S. Patent and Trademark Office vacated and remanded a decision from the Patent Trial and Appeal Board discretionarily denying institution of an inter partes review petition. The Director concluded that...more
In a Hatch-Waxman case, the District Court for the District of New Jersey recently found that a generic label that included an allegedly infringing permissive use did not induce infringement where the label cautioned against...more
The Federal Circuit held that a subcontractor’s receipt of retroactive payment from a government grant brought the subcontractor’s work under Bayh-Dole even though the work was performed before the contract was entered into....more
The Patent Trial and Appeal Board granted institution of inter partes review after petitioner submitted a Sotera stipulation to patent owner via email, several days after patent owner’s preliminary response. The board...more
The Federal Circuit held in Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) that for a pre-AIA 35 U.S.C. § 102(e) prior-art reference to be entitled to a provisional application’s priority...more
The Central District of California denied a defendant’s motion for leave to amend to allege inequitable conduct due to the defendant’s delay in deposing a key inventor until the end of fact discovery. The district court held...more
Federal Circuit Judge William Bryson, sitting by designation in the District of Delaware, ruled on summary judgment that inter partes review (IPR) estoppel does not apply to device art, even if the device is cumulative of...more
The District Court for the District of Delaware recently held on summary judgment that a patent with 2,295 days of combined patent term adjustment (PTA) and patent term extension (PTE) was not invalid for obviousness-type...more
12/20/2023
/ Generic Drugs ,
Hatch-Waxman ,
Intellectual Property Protection ,
Obviousness ,
Obviousness-Type Double Patenting (ODP) ,
Patent Infringement ,
Patent Litigation ,
Patent Term Adjustment ,
Patents ,
Pharmaceutical Patents ,
Safe Harbors
The Patent Trial and Appeal Board rejected a patent owner’s argument that the Board should exercise its discretion to deny a petitioner’s inter partes review (IPR) petition because Petitioner failed to name a time-barred real...more
A Petitioner filed a request for rehearing and a request for Precedential Opinion Panel review after the Patent Trial and Appeal Board (PTAB or the “Board”) rejected its petition for post-grant review. The Director of the...more
The Federal Circuit recently affirmed a United States Patent and Trademark Office (PTO) decision to invalidate four related patents on obviousness-type double patenting grounds (OTDP), holding that any analysis of OTDP for...more