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Making the Right Moves: District Court Finds Waiver on Rule 50(b) Motion Because the Patentee Raised a Different Issue in Its Rule...

The District Court for the District of Delaware recently held a patentee waived its right to seek JMOL on infringement following a jury verdict of non-infringement because the patentee’s Rule 50(a) motion focused solely on...more

Withholding Data That PTAB Would Deem Relevant to Patentability Supports Adverse Judgment in an IPR

The Patent Trial and Appeal Board (PTAB) granted Petitioner’s motions to sanction Patent Owner for failure to meet its duty of candor and fair dealing in five related inter partes review  proceedings. The PTAB found that...more

Courts Must Analyze Claims as a Whole to Determine Whether Independent Claims That Lack Written Description Preclude Assertion of...

The District Court for the District of New Jersey recently denied a defendant’s motion for summary judgment which sought to invalidate a dependent claim on preclusion grounds based on the PTAB’s invalidation of the related...more

PTAB Precedential Ruling: Expert Declaration Devoid of Supporting Evidence Dooms IPR Petition

The Patent Trial and Appeal Board recently rejected an inter partes review petition that relied on a conclusory and unsupported expert declaration. The expert’s written testimony, which repeated portions of the petition...more

USPTO Director Issues Second Sua Sponte Precedential Decision Addressing Abuse of Process

In the wake of her October 4, 2022 Precedential OpenSky decision, the United States Patent and Trademark Office Director Katherine Vidal issued another precedential decision further clarifying the actions that should be...more

Witness Testimony Regarding Intent to Infringe Excluded Because Defendant Refused Such Discovery Based on Privilege

The U.S. District Court for the District of Colorado granted a motion in limine to preclude testimony from corporate executives about their “business understanding” regarding infringement because the defendant previously...more

Federal Circuit: Claim Amendments During IPR That Respond to Grounds of Unpatentability May Also Make Changes Unrelated to the IPR

In a recent decision, the Federal Circuit affirmed the PTAB’s policy of permitting claim amendments unrelated to the IPR proceedings when the amended claims also included amendments that respond to a ground of...more

PTAB Applies Director’s Guidance and Holds that Compelling Evidence of Unpatentability Precludes Fintiv Denial

In an IPR institution decision issued shortly after the USPTO issued interim guidance on discretionary denials, the PTAB held that the petition presented “compelling evidence of unpatentability,” foreclosing a Fintiv...more

Voluntary Nature of IPR Proceedings Forecloses Attorney’s Fees, According to District Court

A district court recently denied a motion for attorney’s fees under 35 U.S.C. § 285 where the defendant successfully invalidated each claim of the patent at issue during an inter partes review proceeding. The district court...more

PTAB Awards Priority for CRISPR-Cas9 Systems in Eukaryotic Cells to Broad Institute, MIT and Harvard

In its latest decision in a series of interferences related to the CRISPR gene-editing system, the Patent Trial and Appeal Board (PTAB) granted priority to The Broad Institute, MIT and Harvard (collectively, “Broad”) for...more

No Enablement of a “Make and Screen” Invention Where Working Examples Do Not Represent Diversity of the Claimed Genus

Federal Circuit Judge Dyk, sitting by designation in the District of Delaware, recently granted summary judgment of no enablement for certain claims covering a genus of antibodies intended to treat blood coagulation...more

Federal Circuit Clarifies Scope of IPR Estoppel, Reversing Prior Shaw Decision

The Federal Circuit recently clarified that the scope of IPR estoppel in district courts includes prior art grounds that were raised or reasonably could have been raised in a petition for inter partes review (IPR), reversing...more

Cancellation of Independent Claims in IPR Does Not Estop Doctrine of Equivalents Arguments for Surviving Dependent Claims

A judge in the Eastern District of Virginia recently held that cancellation of independent claims in an inter partes review (IPR) did not preclude the plaintiff from asserting infringement based on the doctrine of equivalents...more

PTAB: Inadvertent Mistake in Analysis of Experimental Data that Substantially Impacts Proceeding Cannot be Corrected

The PTAB recently denied a motion to correct clerical mistakes under 37 C.F.R. § 42.104(c) because the corrections presented substantive new evidence that would have had a substantial impact on the proceedings and prejudiced...more

Focusing on the Language Used in the Claims, the Federal Circuit Vacates a District Court’s Construction of the Terms “Antibody”...

The Federal Circuit recently vacated a district court’s construction of the terms “antibody” and “antibody fragment.” The court’s constructions were not consistent with the claim language, and nothing in the specification or...more

Sufficiently Pleading Claims of Indirect and Willful Infringement: Alleging that Defendant Generally Monitored Competitors’...

The U.S. District Court for the District of Delaware recently rejected a plaintiff’s attempt to add to its complaint claims of induced infringement and enhanced damages based on pre-suit conduct. Specifically, the court held...more

Can ‘Loophole’ in IPR Statute Lead to Resurgence of DJ Actions?

Declaratory judgment (“DJ”) actions have fallen out of favor in patent cases in recent years. In 2011, DJ complaints made up approximately 11 percent of all patent cases filed that year. Last year, they made up less than 5...more

Due to “Apparent Loophole” in Statutory Framework, District Court Permits Invalidity Challenge that Does Not Foreclose Later IPR

When bringing a lawsuit for a declaratory judgment of non-infringement of a patent, careful pleading may allow plaintiffs to avoid the restrictions against later seeking inter partes review (IPR) of that patent, while also...more

Supreme Court Forecloses Judicial Review of PTAB’s Timeliness Determinations

- The Supreme Court ruled 7-2 in Thryv, Inc. v. Click-to-Call Technologies, LP, that the PTAB’s application of the one-year time limit for petitions for inter partes review, set out in 35 U.S.C. § 315(b), is not subject to...more

PTAB Designates Two Decisions as Precedential and One Decision as Informative, Clarifying Its Exercise of Discretion on...

The Patent Trial and Appeal Board (PTAB or Board) recently designated two decisions as precedential and one decision as informative, marking its first precedential and informative designations for 2020. In two of the...more

Federal Circuit Confirms That Specific Treatments Are Not Abstract Ideas—But They Still Might Be Obvious

The Federal Circuit recently held certain method of treatment claims patent eligible under step one of Alice, reversing a district court’s judgment on the pleadings. In that same case, the Federal Circuit upheld the district...more

District Court Awards Post-Markman Attorneys’ Fees After Plaintiff Continued to Litigate Claims That Became Baseless in Light of...

A federal judge in the Eastern District of Virginia granted defendant Amazon.com, Inc.’s motion for attorneys’ fees under 35 U.S.C. § 285, ordering plaintiff Innovation Sciences, LLC to pay over $700,000 in fees that accrued...more

District Court Rejects Plaintiff’s Bid to Extend IPR Estoppel to Institution Denials

A federal judge in the Northern District of California recently rejected an argument that would have expanded inter partes review (IPR) estoppel seemingly beyond the plain reading of 35 U.S.C. § 315(e)(2). The plaintiff had...more

District Court in Alabama Rejects Inexorable Flow Theory of Lost Profit Damages

On January 28, 2020, the Northern District of Alabama granted-in-part a defendant’s motion for summary judgment, holding that the plaintiff could not recover damages based on a theory of lost profits because the plaintiff...more

U.S. – China Trade Agreement: China Agrees to Make Changes That Could Benefit U.S. Drug Companies Doing Business in China

On January 15, 2020, the United States and China signed a Phase 1 trade agreement (the “Agreement”). The Agreement addresses a broad range of economic issues including intellectual property, agriculture, financial markets,...more

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