The Central District of California denied a defendant’s motion to dismiss or transfer plaintiff’s first-filed declaratory judgement action based on defendant’s later-filed patent infringement suit in Wisconsin. Though suit...more
In a series of rulings on a motion in limine, the District of Delaware recently distinguished between what qualifies as being incorporated by reference and what does not for the purposes of an anticipation defense. In short,...more
The District of Delaware recently denied a motion to dismiss a patent infringement complaint involving gene editing technology that sought relief under the Safe Harbor Provision of the Hatch-Waxman Act. Specifically, the...more
1/20/2025
/ Biotechnology ,
Food and Drug Administration (FDA) ,
Hatch-Waxman ,
Intellectual Property Litigation ,
Life Sciences ,
Motion to Dismiss ,
Patent Infringement ,
Patent Litigation ,
Patents ,
Pharmaceutical Patents ,
Regulatory Requirements ,
Safe Harbors
The Patent Trial and Appeal Board granted institution of inter partes review of a patent directed to delivery of targeted television advertisements. The board rejected patent owner’s argument that a lack of particularity as...more
A district court recently refused to exclude testimony regarding consumer surveys conducted by a design patent expert, holding instead that the consumer surveys may be probative of how an ordinary observer would view the...more
The PTAB denied a petitioner’s motion to compel routine discovery that sought information from a parallel ITC investigation for alleged inconsistent positions taken by patent owner in the IPR. The board found that patent...more
10/30/2024
/ Discovery ,
Evidence ,
Intellectual Property Protection ,
International Trade Commission (ITC) ,
Motion to Compel ,
Parallel Proceedings ,
Patent Infringement ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Semiconductors
The Federal Circuit recently upheld the USPTO’s authority under the estoppel provision 37 C.F.R. § 42.73(d)(3)(i) to prohibit a patent owner from obtaining patent claims that are not patentably distinct from claims previously...more
The Director of the USPTO initiated sua sponte review of a PTAB panel’s decision to impose sanctions based on patentee’s conduct during IPR proceedings.The PTAB cancelled all of patentee’s claims, including those not...more
9/24/2024
/ America Invents Act ,
Duty of Candor ,
Ethics ,
Good Faith ,
Inter Partes Review (IPR) Proceeding ,
Patent Trial and Appeal Board ,
Patent Validity ,
Patentability Search ,
Patents ,
Prior Art ,
Sanctions ,
USPTO
The Western District of Texas granted a motion to stay a patent infringement lawsuit pending inter partes review not only because doing so would simplify the issues in the still-early litigation and reduce the burden on the...more
The Patent Trial and Appeal Board has denied institution of an inter partes review for a design patent in part because the petitioner failed to show that three asserted references qualified as prior art. Specifically, the...more
The Federal Circuit dismissed an appeal of a final written decision in an IPR based on issue preclusion where a district court had dismissed a complaint finding the patent claims subject-matter ineligible. The patentee had...more
In an appeal from the ITC, the Federal Circuit recently held that by presenting cumulative financial data across different products that practice various combinations of patents, appellant provided insufficient evidence for a...more
The Federal Circuit recently ruled that a petitioner in an inter partes review (IPR) proceeding with related district court litigation cannot recover attorneys’ fees under 35 U.S.C. § 285. The Federal Circuit further held...more
In keeping with precedent, a judge in the District of Delaware issued an oral order restricting the extent of permissible activities for litigation counsel before the Patent Trial and Appeal Board. The order resolved a...more
In advance of a new trial to determine damages for patent infringement, a district court denied plaintiff’s motion to preclude defendants from introducing the terms of plaintiff’s settlement offers. The district court...more
A divided panel of the Federal Circuit affirmed a district court’s grant of summary judgment of noninfringement, holding that importation of two product samples into the U.S. was reasonably related to obtaining FDA approval...more
4/22/2024
/ 35 U.S.C. § 271(e)(1) ,
Dual Purpose ,
FDA Approval ,
Innovation Patent ,
Life Sciences ,
Medical Devices ,
Noninfringement ,
Patent Infringement ,
Patents ,
Safe Harbors ,
Summary Judgment
The Patent Trial and Appeal Board recently found claims directed to a web-based point of sale system and method unpatentable as obvious after conducting a thorough examination of whether a reference with one common inventor...more
The Patent Trial and Appeal Board denied institution of a petition for IPR after determining that the petitioner failed to show a reasonable likelihood that its primary asserted reference, which was available through the...more
The Patent Trial and Appeal Board denied institution of an inter partes review after determining that petitioner failed to establish public availability of a prior art reference based on an alleged publication date listed in...more
The District of Delaware recently held that evidence addressing a lack of non-infringing alternatives from the perspective of the market as a whole, as opposed to customer-by-customer, may suffice when the market includes...more
The Western District of Texas recently denied a defendant’s motion to stay pending inter partes review based in part on the defendant’s status as a non-party in the IPR proceedings. In doing so, the district court focused on...more
The Federal Circuit recently held that the Patent Trial and Appeal Board (PTAB) was within its discretion to reach different conclusions in a Final Written Decision (FWD) than those provided in preliminary guidance regarding...more
On remand from the Federal Circuit following an appeal and petition for cert to the Supreme Court, the District of Delaware considered whether the claims remaining in dispute in American Axle v. Neapco were invalid for...more
In a decision denying summary judgment, the District of Massachusetts weighed in on an unsettled issue: whether after receiving a final written decision in an inter partes review, a patent challenger is permitted to raise...more
In an appeal from the United States District Court for the Western District of Washington, the Federal Circuit confirmed that on the issue of inter partes review (IPR) estoppel, the burden of proof rests on the patentee to...more