• Federal Circuit vacates PTAB over error in determining real party in interest in RPX petition

    The Federal Circuit found that the PTAB didn’t meaningfully examine Salesforce’s relationship with RPX and the nature of RPX as an entity that helps its clients extricate themselves from patent litigation. Both of those factors are ones which are contemplated by the PTAB’s Trial Practice Guide.

    The post Federal Circuit vacates PTAB over error in determining real party in interest in RPX petition appeared first on IPWatchdog.com | Patents & Patent Law.

    Continue Reading ...
  • Federal Circuit vacates PTAB over error in determining real party in interest in RPX petition

    The Federal Circuit found that the PTAB didn’t meaningfully examine Salesforce’s relationship with RPX and the nature of RPX as an entity that helps its clients extricate themselves from patent litigation. Both of those factors are ones which are contemplated by the PTAB’s Trial Practice Guide.

    The post Federal Circuit vacates PTAB over error in determining real party in interest in RPX petition appeared first on IPWatchdog.com | Patents & Patent Law.

    Continue Reading ...
  • Prescription Tracking Patents Confirmed as Unpatentable After IPR Appeal

    The Federal Circuit reviewed whether certain prior art was “publicly accessible,” because Jazz alleged the material was not a “printed publication” under Section 102(b). Jazz argued that the material, meeting minutes, transcripts, and slides pertinent to an FDA advisory meeting scheduled during the review process for a particular “sensitive drug” (Xyrem), failed to meet a “searchability or indexing” requirement and that the Board erred by “equating the constructive notice provided by the…

    Continue Reading ...
  • CAFC Finds Publication Did Not Inherently Disclose Aveed Composition

    In Endo Pharmaceuticals Solutions, Inc. v. Custopharm Inc., the Federal Circuit affirmed the district court’s finding that two patents listed in the Orange Book for Aveed® had not been shown to be obvious. Although prior art disclosed clinical studies that used the formulation, the Federal Circuit agreed the disclosures were not sufficient for inherency-based invalidity….… Continue reading this entry

    Continue Reading ...
  • 構造である

                            目次はこちら

    構造である

    (BE STRUCTURE)
    $$ Typically the component is a multilayered structure of thickness in the range 0.2 10 microns. / 典型的には、当該…

    Continue Reading ...
  • DIRTT wins at CAFC on SAS issue

    DIRTT Environmental Solutions, Ltd. appeals from a
    final written decision of the Patent Trial and Appeal
    Board (“Board”) in an inter-partes review proceeding,
    finding that Allsteel Inc. (“Allsteel”) had shown by a
    preponderance of the evidence that claims 1, 4–7, 9, 10,
    14–20, and 25 of U.S. Patent No. 8,024,901 are unpatentable
    under 35 U.S.C. § 103. Allsteel Inc. v. DIRTT Envtl.
    Sols. Ltd., No. IPR2015-01691, 2017 WL 379367 (P.T.A.B.
    Jan. 19, 2017). Because the Board’s final written decision
    addresses fewer than all claims challenged in Allsteel’s
    petition to institute inter-partes review, and the parties
    have not waived their objections to the Board’s failure to
    address the non-instituted claims, we vacate and remand
    to allow the Board to issue a final written decision consistent
    with SAS Institute Inc. v. Iancu, 138 S. Ct. 1348
    (2018).

    Continue Reading ...
  • Saint Regis Mohawk Tribe, Allergan v. Mylan: No Tribal Immunity for IPR

    By Jason Rantanen

    Saint Regis Mohawk Tribe, Allergan, Inc. v. Mylan Pharmaceuticals Inc., Teva Pharmaceuticals USA, Inc., AKORN, Inc. (Fed. Cir. 2018) Download Opinion

    Panel: Dyk (concurring), Moore (author), Reyna

    Last fall, Allergan transferred a set of patents relating to its Restasis product (the “Restasis Patents”) to the Saint Regis Mohawk Tribe (“the Tribe”). The Tribe promptly asserted tribal sovereign immunity in the pending inter partes review proceedings involving the Restasis patents.  In February, the PTAB denied the Tribe’s motion to terminate the IPRs, a decision the Tribe appealed.  Following an expedited briefing schedule, the Federal Circuit has now affirmed the PTAB’s denial of sovereign immunity.

    The panel opinion, joined by all three judges, addressed only one of the arguments against sovereign immunity: that under the Supreme Court’s analysis in Fed. Maritime Comm’n v. S.C. State Ports Auth., 535 U.S. 743 (2002), tribal sovereign immunity does not apply.  It’s important to note at the outset that “Generally, immunity does not apply where the federal government acting through an agency engages in an investigative action or pursues an adjudicatory agency action.”   Slip Op. at 5.

    Continue reading Saint Regis Mohawk Tribe, Allergan v. Mylan: No Tribal Immunity for IPR at Patently-O.

    Continue Reading ...
  • Supreme Court Update – July 2018

    by Dennis Crouch

    Each summer, the Supreme Court takes a recess and patent cases begin to pile-up in the high-court’s docket. Only a handful of intellectual property petitions are granted certiorari each year, but almost all of the petitions raise interesting and important issues of law and policy.

    The following is a comprehensive list of Patent cases pending before the Supreme Court.  I have excluded a small handful that have (in my estimation) no shot at certiorari and also fail to raise interesting patent law issues.

    Petitions Granted:

    1. Prior Art – On Sale Bar: Helsinn Healthcare S.A. v. Teva Pharmaceuticals USA, Inc., et al., No. 17-1229. This case questions whether 102(a) prior art under the AIA is limited to publicly available prior art. Particularly, does a pre-filing sale of the invention count as “on sale” prior art where the sale was a private sale that did not publicly disclose the invention? Merits briefing should be complete in October with oral arguments likely held in November 2018.

    Petitions for Writ of Certiorari Pending:

    1. Inequitable Conduct: Regeneron Pharmaceuticals, Inc.

    Continue reading Supreme Court Update – July 2018 at Patently-O.

    Continue Reading ...
  • What Drives Product Companies to Sue?

    There are many studies of patent litigation, including the reasons that firms litigate – I have worked on some myself. Much of it is really helpful information, but all of the studies lack one key component: the patents that get litigated are highly selected. They are selected for a) the firms that litigate (practicing v. non-practicing), b) the patents that are litigated (individual, portfolio, lead), and c) the cases that are litigated to judgment (default, settlement, summary judgment, trial).

    In the realm of which firms and patents litigate, most of the studies have looked at the litigation level, comparing characteristics of patents and technology with samples of those patents and technologies that were not litigated. This is helpful information, but it certainly doesn’t tell the whole story. So, Dirk Czarnitzki and Kristof Van Criekingen (KU Leuven Managerial Economics) have used suvey data of Belgian firms to be better understand which firms litigate. A draft of their paper New Evidence on Determinants of IP Litigation: A Market-Based Approach is posted on SSRN.  Here is the abstract:

    We contribute to the economic literature on patent litigation by taking a new perspective. In the past, scholars mostly focused on specific litigation cases at the patent level and related technological characteristics to the event of litigation. However, observing IP disputes suggests that not only technological characteristics may trigger litigation suits, but also the market positions of firms, and that firms dispute not only about single patents but often about portfolios. Consequently, this paper examines the occurrence of IP litigation cases in Belgian firms using the 2013 Community Innovation Survey with supplemental information on IP litigation and patent portfolios. The rich survey information regarding firms’ general innovation strategies enables us to introduce market-related variables such as sales with new products as well as sales based mainly on imitation and incremental innovation. Our results indicate that when controlling for firms’ IP portfolio, the composition of turnover in terms of innovations and imitations has additional explanatory power regarding litigation propensities. Firms with a high turnover from innovations are more likely to become plaintiffs in court. Contrastingly, firms with a high turnover from incremental innovation and imitation are more likely to become defendants in court, and, moreover, are more likely to negotiate settlements outside of court.

    The paper itself is relatively straightforward and the results are unsurprising: firms that seem to rely heavily on big innovation sue more, and firms that “imitate” or make incremental innovations tend to get sued more.

    I’m not sure what to make of the finding that defendants who imitate are more likely to settle pre-suit (patent portfolio quality being held equal). I suppose that defendants who are making their own big innovations are more likely to challenge validity or argue noninfringement. Then again, the study finds that imitator defendants are more likely to seek patent invalidity, so it may be that either a) they settle when they cannot do win the challenge, or b) innovator defendants rely more on noninfringement.

    I suppose that my primary critique is not so much with the empirical method but with the literature review. I think the discussion could have been informed a bit by reference to some of the legal literature in this area. I realize that most economists see law reviews as articles non grata due to lack of peer review, but there’s been plenty of decent enough work in this area to merit comment. For example, this draft argues that it is the first to consider out of court settlements, but Lemley, Richardson and Oliver circulated a draft of comprehensive survey results in 2017. Similarly, the article discusses patent portfolios in enforcement, but doesn’t mention any of the several legal articles focusing on these dynamics. This is a small point, but an important one. I think legal scholars should look to the economics literature much more often than they do, and I think economic research wouldn’t hurt by doing the opposite every once in a while.

    In any event, this is an interesting paper that adds new information about how we should think about what drives competitive company litigation.

    Continue Reading ...
  • Maine Supreme Judicial Court: Claim Alleging Bad Faith Patent Assertion Preempted

    The opinion in Puritan Medical Products Co. v. Copan Italia s.P.a is available here.  (Hat tip to Professor Paul Gugliuzza for noting this case on Twitter; his article on the subject, Patent Trolls and Preemption, 101 Va. L. Rev. 1579 (2015), is cited in the opinion.)  As I note in my recent book Patent Wars, “since 2013 over thirty state legislatures have enacted laws forbidding the ‘bad faith assertion of patent infringement,'” but “Federal Circuit case law in recent years has required persons asserting more traditional unfair competition claims premised on the wrongful assertion of IP rights” to prove that the claims asserted by the defendant were both objectively and subjectively baseless; and that if this principle is correct “the impact of these state laws would appear to be rather limited.”  Now the Maine Supreme Judicial Court has held that the claim asserted in this case was preempted by federal patent law, because the plaintiff did not prove by clear and convincing evidence that the defendant’s assertion was objectively baseless.  For his part, Professor Gugliuzza thinks that the Maine court applied the Federal Circuit’s case law correcfly, but that that case law itself is dubious.  See Gugliuzza, supra, at 1584 (arguing that “the Federal Circuit’s preemption rule is wrong as a matter of doctrine, is misguided as a matter of policy, and ignores important lessons from the history of patent enforcement”).

    Also on the topic of patent assertion, the IAM Blog has an interesting story this morning titled Husband and Wife Accused of Patent Troll Activity Face Criminal Extortion Charges in Shanghai.  As the author, Jacob Schindler, notes, “As cases like this come to public attention, it may be that China is headed for a big public debate over the role of NPEs in its patent system.  That could have a huge impact on almost all global tech companies, as well as local patent stakeholders in China.”

    Continue Reading ...
  • More Bites at the Apple?

    After TLC lost its IPRs against Ericsson in a written decision at PTAB, it was barred from filing subsequent IPRs against the ‘510 patent.  TLC was then hit with a very large verdict for infringement of the patent in court. Then, four months after the verdict the same patent is challenged at the PTAB again by a consortium that has some relationships to TLC.

    The post More Bites at the Apple? appeared first on IPWatchdog.com | Patents & Patent Law.

    Continue Reading ...