Analysis of patent litigation, PTAB practice, prosecution and pharma IP, written on the data behind LexDana.
Supplemental Briefing Focuses on Remedies As discussed last week, the Federal Circuit has requested supplemental briefing in Arthrex Inc. v. Smith & Nephew to assess how best to remedy a potential Appointments Clause violation . The supplemental briefing…
An Avalanche of FWD Do-Overs Imminent? Back in June I explained the latest constitutional challenge to AIA Trial Proceedings under the Appointments Clause of the U.S. Constitution . In a nutshell, the argument is that PTAB Administrative Patent Judges…
Burden of Persuasion to Demonstrate Unpatentability on Petitioner The United States Patent and Trademark Office (USPTO) has issued a Notice of Proposed Rulemaking (NPRM) to allocate the burdens of persuasion on motions to amend in AIA trial proceedings…
On Oct. 17th, the PTO published Guidelines intended to supplement the Jan. 2019 Subject Matter Eligibility Guidelines (“2019 PEG”). The Guidelines and associated Examples are extensive. Only two of the Examples (43 and 44) are concerned with…
CASE OF THE WEEK Due to technical issues, this week’s report covers the past two weeks. HZNP Medicines LLC v. Actavis Laboratories UT , Inc., Appeal Nos. 2017-2149, et al. (Fed. Cir. Oct. 10, 2019) In a lengthy decision following a bench trial, the…
Federal Gov’t & Federal Contractors in the Court of Federal Claims – A Legal Relationship? Federal government contractors are protected from patent infringement suits when infringing activities are performed pursuant to a contract with the…
FRAUNHOFER-GESELLSCHAFT v. SIRIUS XM RADIO INC. Before Dyk, Linn, and Taranto. Appeal from the District of Delaware. Summary: Contract interpretation must be applied in determining whether a sublicense survives termination of the main license.…
Informative Decisions Address Design Choice Considerations Today, the Patent Trial & Appeal Board (PTAB) designated two ex parte appeal decision informative, Ex parte Spangler, Appeal No. 2018-003800 (Feb. 20, 2019) & Ex parte Maeda, Appeal No. 2010-009814…
In OSI v. Apotex, Appeal no. 2018-1925 (Fed. Cir., October 4, 2019) , the panel reversed the PTAB and found that the method of treatment claims in U.S. Pat. No. 6,900,221 were not obvious over a primary reference taken with each of two secondary…
HZNP Medicines LLC, Horizon Pharma USA, Inc. v. Actavis Laboratories UT, Inc. Before Prost, Newman, and Reyna . Appeal from the District Court for the District of New Jersey. Summary : Claims using “consisting essentially of” to define an…
B.E. TECHNOLOGY, L.L.C. v. FACEBOOK, INC. Before Lourie , Plager, and O’Malley. Appeal from the United States District Court for the Western District of Tennessee. Summary: A decision on the merits is not a prerequisite to a finding of prevailing…
On October 1st, Athena filed a petition for a writ of certiorari to the Supreme Court following the Fed. Cir.’s fractured denial for its petition for rehearing en banc in Amgen v. Mayo. The original request for rehearing en banc posed two questions.…
