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 US Court of Appeals for the Federal Circuit affirmed a district court’s holding that the asserted method of treatment patent was valid and infringed because safety and efficacy are not patent concerns. The Federal Circuit...more
Sequoia Technology, LLC v. Dell, Inc., Appeal Nos. 2021-2263, -2264, -2265, -2266 (Fed. Cir. April 12, 2023) In an appeal from a stipulated judgment of noninfringement and invalidity following an adverse claim construction...more
Last year, in our inaugural issue of “The Year in Review,” we reported that since the landmark jury verdict in the IP litigation between Apple and Samsung in 2012, which awarded more than $1B to Apple for infringement of...more
As part of the recovery from the global COVID-19 pandemic, the U.S. Court of Appeals for the Federal Circuit took steps to return to normal operations. It began requiring live oral arguments in August 2022 and, by November,...more
This year, we will mark the 10-year anniversary of the first jury verdict in the landmark IP litigation between Apple and Samsung, which resulted in the jury awarding more than $1B to Apple. More than $500M of that award was...more
BLEPHEX, LLC. v. MYCO INDUSTRIES, INC. Before: Moore, Schall, and O’Malley. Appeal from the Eastern District of Michigan. Summary: Conclusory statements about how a skilled artisan would combine embodiments in a prior...more
Evidence Supports Prior Art’s Public Accessibility but Not the Board’s Adoption of an Unpresented Theory of Anticipation - In M & K Holdings, Inc. v. Samsung Electronics Co.,Ltd., Appeal No. 20-1160, the Federal Circuit...more
[co-author: Kathleen Wills] The PTAB Strategies and Insights newsletter provides timely updates and insights into how best to handle proceedings at the USPTO. It is designed to increase return on investment for all...more
Update: The litigation between Janssen and Hospira relating to the biosimilar INFLECTRA, including the appeal of the reconsideration decision, was discontinued in July 2021. As reported previously... the Federal Court had...more
The US Court of Appeals for the Federal Circuit found that facilitating browsing of documents on a website was sufficient to support public accessibility of prior art references, but that the Patent Trial and Appeal Board...more
The availability of post-grant proceedings at the Patent Trial and Appeal Board (PTAB) has changed the face of patent litigation. This monthly digest is designed to keep you up-to-date by highlighting interesting PTAB,...more
A district court has ruled that the statutory estoppel arising from an inter partes review (IPR) proceeding does not apply to anticipation and obviousness defenses that rely significantly on a physical device. The court also...more
In what may be simple happenstance, the Federal Circuit issued opinions on the same day reversing a District Court grant of summary judgment in opinions written by Judge Lourie, here in BASF Corp. v. SNF Holding Co....more
Update: On January 8, 2021, the Supreme Court of Canada dismissed Janssen’s application for leave to appeal (Docket No. 39099). On January 12, 2021, the Trial Judge issued the reconsideration decision, again finding the...more
The Federal Circuit reversed a decision from the District Court for the District of Delaware invalidating three patents on anticipation grounds, finding the district court improperly relied on disclosures from multiple...more
In a digital-age David versus Goliath case, Dr. Luc Bessette has come head-to-head with the Quebec government in a battle over rights to a technology solution that provides shared access to critical medical information...more
Federal Circuit Summary - Before Lourie, Dyk and Taranto. Consolidated Appeals from the Patent Trial and Appeal Board and the Southern District of California. Summary: A person is a joint inventor of the anticipating...more
PATENT CASE OF THE WEEK - WesternGeco LLC v. Ion Geophysical Corp., Appeal Nos. 2013-1527, 2014-1121, -1526, -1528 (Fed. Cir. Jan. 11, 2019) - In the continuing saga between WesternGeco and ION Geophysical, a Federal...more
The Board’s Final Written Decision Must Address All Grounds for Unpatentability Raised in a Petition for Inter Partes Review - In Adidas AG v. Nike, Inc., Appeal Nos. 2018-1180, 2018-1181, the Federal Circuit held that...more
Determining Whether a Claim Element or Combination of Elements Would Have Been Well-Understood, Routine, and Conventional Is a Question of Fact - In Aatrix Software, Inc. v. Green Shades Software, Inc., Appeal No....more
On June 29, 2018, Justice Fothergill of the Federal Court granted Shire’s application under the pre-amended Patented Medicines (Notice of Compliance) Regulations (PMNOC Regulations) for an order prohibiting the Minister of...more
D Three Enterprises, LLC v. SunModo Corporation, Appeal Nos. 2017-1909, -1910 (Fed. Cir. May 21, 2018) - The Court affirmed a grant of summary judgment of invalidity in favor of patent infringement defendants, based on a...more
In an order issued on April 4, 2018, Judge Lynn granted plaintiff ZitoVault’s motion for summary judgment under 35 U.S.C. 315(e)(2), holding that defendant IBM is estopped from asserting invalidity defenses based on prior art...more
Where Parties Raise an Actual Dispute Regarding Claim Scope, the Court Must Resolve It In Nobelbiz, Inc. v. Global Connect, L.L.C., Appeal Nos. 2016-1104, 2016-1105, the Federal Circuit held that where parties raise an actual...more