News & Analysis as of

Patent Trial and Appeal Board Inequitable Conduct

McDermott Will & Emery

I Hear Ya – No Intent to Deceive, No Inequitable Conduct

The US Court of Appeals for the Federal Circuit affirmed a district court’s finding that the asserted patents were not unenforceable for inequitable conduct, determining that statements made by counsel to the US Patent &...more

Kilpatrick

4 Key Takeaways | Updates in Standard Essential Patent Licensing and Litigation

Kilpatrick on

Kilpatrick’s Alton Absher and Andie Anderson recently presented “Updates in Standard Essential Patent Licensing and Litigation” at the firm’s annual 2024 Advanced Patent Law Seminar. This full-day seminar featured discussions...more

McDermott Will & Emery

Neither Narrow Proposed Claim Construction nor Work Product Claim Justify Withholding Material Factual Information

The Patent Trial & Appeal Board of the US Patent & Trademark Office (PTO) canceled all challenged claims across five patents because the patent owner failed to meet its duty of candor by selectively and improperly withholding...more

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases - May 2023 #2

Sanofi-Aventis Deutschland GmbH v. Mylan Pharmaceuticals Inc., Appeal No. 2021-1981 (Fed. Cir. May 9, 2023) In our Case of the Week, the Court of Appeals for the Federal Circuit considered the “analogous art” inquiry in...more

MoFo Life Sciences

Recent Biden Administration Efforts On Drug Pricing: USPTO Notice Focuses On Eliminating Inconsistencies In USPTO/FDA Statements

MoFo Life Sciences on

On July 29, 2022, the U.S. Patent and Trademark Office (USPTO) issued a Notice in the Federal Register clarifying the duty of disclosure that may keep patent practitioners up at night. The Notice reminds applicants of the...more

McDonnell Boehnen Hulbert & Berghoff LLP

PTAB Hears Oral Argument in Interference No. 106,115

The Patent Trial and Appeal Board heard oral argument under 37 C.F.R. § 41.124(c) on February 4th in the Priority Phase of Interference No. 106,115 between the Broad Institute, Harvard University, and MIT (collectively,...more

McDonnell Boehnen Hulbert & Berghoff LLP

Inequitable Conduct by Senior Party Broad Alleged in Interference No. 106,115 (and PTAB May Finally Hear Evidence About It)

An enduring and persistent (albeit until now unresolved) issue in the patent interferences involving the Broad Institute, Harvard University, and MIT (collectively, "Broad") as Senior Party and the University of...more

Akin Gump Strauss Hauer & Feld LLP

PTAB’s Denial of IPR Petition Forecloses Defendant’s Inequitable Conduct Claim in District Court

Relying heavily on the Patent Trial and Appeal Board’s denial of an inter partes review (IPR) petition involving the patent-in-suit, a court in the Eastern District of Virginia recently refused to let the defendant amend its...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

PTAB Strategies and Insights - October 2019: Graphical Snapshot of Supplemental Examination

Supplemental Examination was born out of fixing potential inequitable conduct issues before they are raised in a court proceeding. 35 U.S.C. § 257(a); 27 CFR § 1.601; M.P.E.P. § 2800. The stated goal is to improve patent...more

Jones Day

Misbehavior In IPR Can Form Basis For Inequitable Conduct

Jones Day on

Finjan, Inc. v. Cisco Systems, Inc., Case No. 17-cv-00072-BLF (N.D. Cal. Sept. 13, 2018), reminds us that representations to the PTAB can have consequences in district court litigation, even outside the estoppel context. ...more

Schwabe, Williamson & Wyatt PC

Fresh From the Bench - August 2018 #2

PATENT CASE OF THE WEEK - Click-to-Call Technologies, LP v. Ingenio, Inc., Appeal No. 2015-1242 (Fed. Cir. Aug. 16, 2018) In an appeal of an inter partes review, the Federal Circuit reviewed for the first time the...more

Goodwin

Biosimilar Litigation Updates

Goodwin on

Below is an update on recent developments in several litigations involving biosimilar products. Amgen v. Sandoz (filgrastim, pegfilgrastim): As we previously reported, the district court granted summary judgment of...more

Schwabe, Williamson & Wyatt PC

Fresh From the Bench: Latest Federal Circuit Court Cases

Texas Advanced Optoelectronic Solutions, Inc. v. Renesas Electronics America, Inc., Appeal Nos. 2016-2121, -2208, -2235 (Fed. Cir. 2018)?- In an appeal from a jury trial, the Federal Circuit addressed numerous issues...more

Schwabe, Williamson & Wyatt PC

2017 and Early 2018 Supreme Court and Precedential Patent Cases From the Federal Circuit

Arbitration - Waymo v. Uber Technologies, 870 F.3d 1342 (Fed. Cir. 2017) - Waymo sued Uber and others for trade secret misappropriation and patent infringement. Uber contends that Waymo should be compelled to...more

Akin Gump Strauss Hauer & Feld LLP

Failure to Provide Patent Examiner with Copy of PTAB Decision Not Grounds for Inequitable Conduct

In a report and recommendation issued Tuesday, August 15, 2017, a magistrate judge in the Eastern District of Texas stated that failure to provide a patent examiner with a copy of a relevant post-grant review (PGR)...more

Morrison & Foerster LLP - MoFo@ITC

UV Curable Coatings: No Exergen, but PTAB Decision Leads to Stricken Inequitable Conduct Defense

In a recent decision in UV Curable Coatings for Optical Fibers, Inv. No. 337-TA-1031, Judge MaryJoan McNamara struck a respondent’s inequitable conduct defense, which the respondent based on the complainants’ conduct during...more

Akin Gump Strauss Hauer & Feld LLP

IP Newsflash - October 2014

Federal Circuit Affirms Inequitable Conduct Based On “Intentionally Selective” Disclosure - On September 26, 2014, a divided Federal Circuit panel affirmed the unenforceability of three American Calcar patents,...more

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