Intellectual Property Law Blog

FEBRUARY 13, 2024

In Medronic, Inc. v. Teleflex Life Sciences Limited, 2022-1721, 2022-1722 (Fed. Cir. Nov. 16, 2023) , the Federal Circuit considered whether U.S. Patent RE46,116 (“the ’116 patent”) was entitled to an alleged priority date sufficient to moot Medtronic’s asserted pre-AIA §102(e) prior art reference, which depended on whether Medtronic had waived its challenged to Teleflex’s asserted priority date by attempting to incorporate those arguments by reference in its Inter Partes Review (“IPR”) petition

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Intellectual Property Law Blog

FEBRUARY 13, 2024

RAI Strategic Holdings, Inc. v. Phillip Morris Products S.A. , No. 2022-1862 (Fed. Cir. February 9, 2024) addressed two issues: (1) when the written description requirement is met in the context of a claimed range that is narrower than the ranges disclosed in the patent specification, and (2) the kind of prior art disclosure language which supports a finding of a motivation to combine for an obviousness rejection.

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Intellectual Property Law Blog

FEBRUARY 6, 2024

This article was originally posted to Law360. The America Invents Act created inter partes review in 2012. Statutory estoppel is one of the features of the statute that balances the interests of patent owners and patent challengers. The statute simply states that an IPR petitioner may not later assert in court that a claim “is invalid on any ground that the petitioner raised or reasonably could have raised during that inter partes review.” 35 U.S.C. § 315(e)(2).

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Intellectual Property Law Blog

JANUARY 22, 2024

In VLSI Technology LLC v. Intel Corporation , No. 22-1906 (Fed. Cir. 2023) , VLSI sued Intel for infringement of U.S. Patent Nos. 7,523,373 (the “’373 patent”) and U.S. Patent No. 7,725,759 (the “’759 patent”). After a jury trial in 2021, VLSI was awarded $1.5 billion for literal infringement of the ’373 patent and an additional $675 million for infringement of the ’759 patent under the doctrine of equivalents.

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Intellectual Property Law Blog

JANUARY 22, 2024

In Sisvel International S.A. v. Sierra Wireless, Inc. et al. , Nos. 22-1493, 22-1547 (Fed. Cir. 2023) , Sierra Wireless challenged claims 1-10 of Sisvel’s U.S. Patent No. 6,529,561 (“the ’561 patent”) in an inter partes review. The Patent Trial and Appeal Board’s final written decision found claims 1-3 and 9 unpatentable, but upheld the patentability of claims 4-8 and 10.

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Intellectual Property Law Blog

JANUARY 18, 2024

In H. Lundbeck A/S, et al. v. Lupin Ltd., et al. , Nos. 2022-1194, 2022-1208, and 2022-1246 (December 7, 2023) , the Federal Circuit held that generic pharmaceutical companies may continue to use skinny labels to avoid infringement of method of treatment claims as long as they do not engage in advertising or promotional activities that encourage infringement of the patents.

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Intellectual Property Law Blog

JANUARY 2, 2024

In Elekta Limited v. Zap Surgical Systems, Inc. , No. 21-1985 (Fed. Cir. Sept. 21, 2023) , the case addresses the interplay between findings related to motivation to combine and reasonable expectation of success in determining obviousness under 35 U.S.C. § 103. Background Elekta Limited (“Elekta”) is the owner of U.S. Patent No. 7,295,648 (the “’648 patent), which discloses “a device for treating a patient with ionizing radiation for certain types of radiosurgery and radiation therapy.

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Intellectual Property Law Blog

DECEMBER 21, 2023

The Biden administration recently determined that it has the right to seize patents covering certain high-priced medicines, in an apparent effort to take a more aggressive approach to lowering drug prices. See Targeting costly meds, Biden admin asserts authority to seize certain drug patents – POLITICO. Pursuant to this plan, the Commerce Department announced it plans to issue a framework that lists the factors the government should consider in determining whether to seize drug patents.

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Intellectual Property Law Blog

DECEMBER 21, 2023

In Purdue Pharma L.P. v. Collegium Pharmaceutical, Inc. 2022-1482 (Fed. Cir. Nov. 21, 2023) , the case addresses the Patent Trial and Appeal Board’s (“PTAB’s”) authority to issue a Final Written Decision in a post grant review (“PGR”) after the prescribed statutory deadline. Background In September 2017, Purdue Pharma L.P. (“Purdue”) sued Collegium Pharmaceutical, Inc.

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Intellectual Property Law Blog

DECEMBER 21, 2023

In Incept v. Palette Life Sciences 21-2063, 21-2065 (Fed. Cir. Aug. 16, 2023) , the case addresses the Board’s anticipation and obviousness determinations in two IPRs (IPR2020-00002 and IPR2020-00004), where the Board held the claims in the challenged patents unpatentable as anticipated by, or obvious in view of, the asserted prior art. Background Palette Life Sciences, Inc.

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Intellectual Property Law Blog

DECEMBER 21, 2023

In Columbia Sportswear North America, Inc. v. Seirus Innovative Accessories, Inc. 2021-2299, 2021-2338 (Fed. Cir. Sept. 15, 2023) , the Federal Circuit vacated a jury verdict of non-infringement in a design-patent infringement action filed by Columbia Sportswear against Seirus Innovative Accessories. It found that the lower court erred by failing to instruct the jury that “comparison prior art” must be tied to the same article of manufacture as that claimed.

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Intellectual Property Law Blog

DECEMBER 21, 2023

In Jodi A. Schwendimann, fka Jodi A. Dalvey, v. Neenah, Inc., Avery Products Corporation, No. 2022-1333, 2022-1334, 2022-1427, 2022-1432 (Fed. Cir. October 6, 2023) (“Opinion”) , the case addresses whether there was substantial evidence to support that a person of ordinary skill in the art had motivation and a reasonable expectation of success in combining references to render obvious the incorporation of a white pigment of a first reference to the layers of a transfer sheet of a second referenc

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Intellectual Property Law Blog

DECEMBER 18, 2023

In Finjan LLC, FKA Finjan, Inc. v. SonicWall, Inc. , No. 2022-1048 (Fed. Cir. Oct. 13, 2023) , the Federal Circuit vacated a summary judgement of invalidity based on collateral estoppel, where the case that provided estoppel was subsequently vacated. The Federal Circuit also examined various arguments attempting to circumvent an agreed-upon claim construction as well as the district court’s application of that construction in finding non-infringement, and the propriety of excluding expert testim

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Intellectual Property Law Blog

DECEMBER 18, 2023

In this case, the Federal Circuit determined the sufficiency of evidence to rebut a nexus between objective evidence and non-obviousness; and to establish the objective indicia of copying. Background Medtronic petitioned for inter-partes review of U.S. Patent Nos. 8,048,032; RE45,380; and RE45,776 that cover catheters to treat stenosis, that is, a narrowing of the lumen of a patient’s arteries due to the buildup of plaque.

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Intellectual Property Law Blog

DECEMBER 15, 2023

In Medtronic, Inc., Medtronic Vascular, Inc. v. Teleflex Innovations S.A.R.L. , the case addresses whether the final written decisions in a consolidated inter partes appeal (“IPR”) correctly found that U.S. Patent 7,736,355 (“the ’355 patent”) does not qualify as prior art to related U.S. Patents 8,048,032, RE45,380, RE45,776, RE45,760, and RE47,379 (collectively, “the challenged patents”) under pre-AIA’s first-to-invent provisions.

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Intellectual Property Law Blog

DECEMBER 15, 2023

Allgenesis Biotherapeutics Inc. v. Cloudbreak Therapeutics, LLC addresses whether an IPR petitioner can assert Article III standing on appeal based on potential infringement liability and potential preclusive effects on its patents. Background Cloudbreak owns U.S. Patent No. 10,149,820 (the “’820 patent”), which is directed to compositions and methods for treating pterygium.

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Intellectual Property Law Blog

DECEMBER 15, 2023

The Federal Circuit vacated and remanded two Patent Trial and Appeal Board (“PTAB”) decisions because the PTAB erred in its obviousness analysis and found that Axonics failed to show a motivation to combine as to Medtronic’s ‘314 and ‘756 patents. Background Medtronic sued Axonics for patent infringement. Medtronic’s invention concerns a medical device that stimulates sacral nerves.

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Intellectual Property Law Blog

DECEMBER 14, 2023

In Medtronic, Inc., Medtronic Vascular, Inc., v. Teleflex Innovations S.A.R.L. , the case addresses the weight the Patent Trial and Appeal Board (PTAB) should give to the intended purpose of a primary reference when evaluating a Person of Ordinary Skill in the Art’s (POSITA) motivation to combine that primary reference with secondary references. Background Teleflex Innovation S.A.R.L.

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Intellectual Property Law Blog

DECEMBER 14, 2023

In Malvern Panalytical Inc. v. TA Instruments-Waters LLC , the Federal Circuit addressed the proper construction of the claim term “pipette guiding mechanism.” Specifically, the Federal Circuit found the plain and ordinary meaning of “pipette guiding mechanism” sufficient and addressed how various claim construction doctrines affected its analysis, including the use of a non-related patent cited in an IDS as intrinsic evidence.

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Intellectual Property Law Blog

DECEMBER 14, 2023

In ABS Global, Inc., Genus plc v. Cytonome/ST, LLC , the case addresses a claim construction issue regarding whether a claim term is plural-allowing. Background ABS Global Inc. and Genus plc (collectively, ABS) petitioned for an inter partes review of claims 1, 2, 6, 8, and 9 of U.S. Patent No. 10,583,439 (the “’439 patent”) owned by Cytonome/ST, LLC.

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Intellectual Property Law Blog

DECEMBER 13, 2023

In United Therapeutics Corp. v Liquidia Tech Inc. , the Federal Circuit reviewed the district court’s decision on invalidity and infringement of two pharmaceutical patents and the impact of the Final Written Decision (FWD) in a parallel inter-partes review (IPR) upon the district court’s decision. Background Liquidia filed a New Drug Application for Yutrepia TM , its non-generic dry powder inhalation formulation of the drug treprostinil, under § 505(b)(2) of the Food, Drug, and Cosmetic Act.

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Intellectual Property Law Blog

DECEMBER 7, 2023

In its first opportunity to apply the Supreme Court’s recent decision in Jack Daniel’s Properties v. VIP Products LLC , which held that the First Amendment did not protect infringing works that “use [the complainant’s] mark [ ] as a mark,” the Second Circuit upheld an Eastern District of New York order enjoining art collective MSCHF from offering its “Wavy Baby” sneaker that likely infringed Vans’ marquee “Old Skool” sneaker.

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Intellectual Property Law Blog

NOVEMBER 13, 2023

App developers who pay 30% commission fee to Apple via In-App Purchasing should take note of an important legal decision recently presented to the Supreme Court for possible review. The Supreme Court’s decision whether to take the case, and its ultimate decision if it does take the case, will directly affect the commission that developers must pay Apple to sell their products using the App Store.

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Intellectual Property Law Blog

NOVEMBER 8, 2023

In Great Concepts, LLC, v. Chutter, Inc. , the Federal Circuit decided on whether the Trademark Trial and Appeal Board can cancel a trademark based on the inclusion of false statements in a declaration to obtain an incontestable status for the trademark. Background Great Concepts applied for and received trademark registration for DANTANNA’S, Registration No. 2929764 (the “’764 Mark”), for a restaurant.

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Intellectual Property Law Blog

NOVEMBER 8, 2023

In Apple Inc. v. Corephotonics, LTD. , the court addressed two final written decisions in inter partes review (“IPR”) proceedings and in particular (1) whether the Patent Trial and Appeal Board’s (“PTAB” or “Board”) claim construction is correct when the intrinsic evidence supports a different construction and relatedly whether the PTAB’s first final written decision relying on its claim construction should be vacated and remanded and (2) whether, in the second final written decision, the PTAB’s

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Intellectual Property Law Blog

NOVEMBER 7, 2023

This case addresses the ability of a petitioner in an IPR to present new evidence in a reply brief, particularly where the patent owner proposes a new claim construction in its patent owner response. Background Medtronic, Inc. (“Medtronic”) owns multiple patents relating to transcutaneous (i.e. through the skin) charging of implanted medical devices.

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Intellectual Property Law Blog

NOVEMBER 7, 2023

This case is primarily about the Daubert standard as applied to expert testimony on damages. The Federal Circuit reversed the Northern District of California’s admission of expert testimony on damages, which relied on calculations that failed to differentiate between infringing products and non-infringing products. The Federal Circuit also reiterated the standards for a judgment as a matter of law (“JMOL”) of non-obviousness, and clarified that “by means of” claim language does not limit to but-

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Intellectual Property Law Blog

NOVEMBER 1, 2023

The White House Executive Order on AI (“EO”) is comprehensive and covers a wide range of topics. We provided a summary here. It addresses many of the risks and problems that can arise with AI. One of the topics which raises many legal issues, particularly with generative AI (“genAI”), is intellectual property. Some of the IP issues include: i) whether training AI models on copyrighted content constitutes infringement; ii) whether the output of genAI that is based on copyright-protected training

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Intellectual Property Law Blog

OCTOBER 30, 2023

The US just catapulted into being the world leader on regulating AI. Bypassing Congress, the White house issued an Executive Order focusing on safe, secure and trustworthy AI and laying out a national policy on AI. In stark contrast to the EU, which through the soon to be enacted AI Act is focused primarily on regulating uses of AI that are unacceptable or high risk, the Executive Order focuses primarily on the developers, the data they use and the tools they create.

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Intellectual Property Law Blog

OCTOBER 24, 2023

This case addresses how Patent Term Adjustment (PTA) interacts with obviousness-type double patenting (ODP). Background Cellect sued Samsung Electronics, Co. for infringement of four patents. Subsequently, Samsung requested four ex parte reexaminations asserting that the patents were unpatentable based on ODP, which was not raised by the examiner during prosecution.

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Intellectual Property Law Blog

OCTOBER 24, 2023

This case addresses the validity of two patents asserted against wireless communications technologies. In particular, this case discusses claim construction and post-issuance claim amendments that broaden the scope of challenged claims. Background Sierra Wireless, along with several other defendants, filed petitions seeking inter partes review of U.S.

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Intellectual Property Law Blog

OCTOBER 17, 2023

This case addresses whether attorney’s fees are warranted due to an inequitable conduct and conflict of interest defense. Background UCANN filed suit in the District of Colorado in July 2018, accusing Pure Hemp of infringing the ’911 patent, entitled “ Cannabis Extracts and Methods of Preparing and Using the Same.” The parties stipulated to the dismissal of this case in 2021.

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Intellectual Property Law Blog

OCTOBER 6, 2023

This case addresses whether patents relating to methods and systems for connecting users based on their answers to polling questions claim patentable subject matter under 35 U.S.C. § 101. Background Trinity sued Covalent for patent infringement of U.S. Patent 9,087,321 (“the ’321 patent”) and U.S. Patent 10,936,685 (“the ’685 patent”) (collectively, “the challenged patents”).

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Intellectual Property Law Blog

OCTOBER 6, 2023

This case addresses certain implications of the Laehy-Smith America Invests Act (AIA), namely whether patents with a filing date after March 16, 2013 (pure AIA patents) may be part of an interference proceeding under pre-AIA, 35 U.S.C. § 135, and specifically whether the Patent Trial and Appeal Board (Board) has the authority to cancel SNIPR’s pure AIA claims through an interference for lack of invention priority under pre-AIA § 102(g).

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Intellectual Property Law Blog

OCTOBER 3, 2023

The growth of artificial intelligence (“AI”) and generative AI is moving copyright law into unprecedented territory. While US copyright law continues to develop around AI, one boundary has been set: the bedrock requirement of copyright is human authorship. Given this, it is clear in the US, AI alone cannot be an author. This bedrock principle was reinforced in two recent copyright decisions.

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Intellectual Property Law Blog

SEPTEMBER 13, 2023

The use of artificial intelligence (AI) is booming. Investors and companies are pouring cash into the space, and particularly into generative AI (GAI), to seize their share of the market which McKinsey reports could add up to $4.4 trillion annually to the global economy. Some companies are investing tens or hundreds of millions of dollars or more into GAI.

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Intellectual Property Law Blog

AUGUST 30, 2023

This case addresses the issue of res judicata and the interpretation of the scope of an earlier judgment awarding an ongoing royalty. Background In 2006 and 2012, ABS and STGenetics entered into related contracts for sorting semen. In 2014, ABS filed an antitrust lawsuit in the Western District of Wisconsin against STGenetics. STGenetics brought counterclaims and third-party claims for, among other things, infringement of the ’987 patent.

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