Resources

Publications

Publications

3/11/2019
Federal Circuit No. 2018-1076
7/20/2018
Federal Circuit No. 2017-1976   
7/10/2018
Federal Circuit No. 2017-1169
6/19/2018
Federal Circuit No. 2016-2099
6/5/2018
6/4/2018
5/7/2018
Federal Circuit No. 2016-2309
5/7/2018
Federal Circuit No. 2017-1355
4/30/2018
The assignment of effective control over the scope of trials before the Patent Trial and Appeal Board (PTAB) of the U.S. Patent and Trademark Office (“Office”) under the America Invents Act of 2012 (AIA) has been an area of controversy since implementation of the Act.  In SAS Institute Inc. v. Iancu, the question of control arose in the context of 35 U.S.C. § 318(a), and whether that provision requires the PTAB to issue a final written decision on all claims challenged by the petitioner in an inter partes review, allowing the scope of the petition to “guide the life of the litigation,” or instead permitted the Board to follow a practice, ostensibly authorized under Office rules, of instituting review as to only some claims challenged in the petition, and denying review as to the remaining claims.1
4/9/2018
Federal Circuit No. 2017-1437 & 2017-1494
4/2/2018
Federal Circuit No. 2017-1445
4/2/2018
Federal Circuit No. 2014-1469, 2014-1504
3/14/2018
Federal Circuit No. 2016-2684
3/14/2018
Federal Circuit No. 2016-2520
3/1/2018
US patents have been challenged by inter partes review (IPR) at the US Patent Trial and Appeal Board (PTAB) at an increasing rate since their creation by the America Invents Act in 2011. Patent owners often point to the ‘commercial success’ of the products covered by their patent as an indication that their patent is non-obvious. Non-obviousness is a legal requirement for the patent owner to maintain its patent rights. The showing of ‘commercial success’ to fight off a challenger’s claim of patent invalidity is an approach that has been taken by patentees for decades in district court litigations.
2/23/2018
To request cancellation of one or more claims of a patent in an inter partes review (IPR), a petitioner must challenge the claim on the basis that the claim is unpatentable under 35 U.S.C §102 or 103, in view of prior art patents or printed publications. 35 U.S.C. § 311(b).  Two ways a patent owner can disqualify references relied upon by the petitioner for unpatentability are by (i) asserting that the petitioner did not set forth sufficient evidence showing that the reference qualifies as a printed publication, or (ii) antedating the reference to show that the date of invention is prior to the critical date of the reference.
2/12/2018
Federal Circuit Case No. 2016-2386
2/13/2018
Federal Circuit No. 2015-1944
1/12/2018
Federal Circuit No. 2016-2465
1/12/2018
Federal Circuit No. 2016-1233
12/19/2017
12/11/2017
Federal Circuit No. 2016-1728
12/11/2017
Federal Circuit No. 2016-2531, 2016-2532
11/14/2017
Federal Circuit No. 2016-1996
11/14/2017
Federal Circuit No. 2017-129
11/14/2017
Federal Circuit No. 2016-2303
11/14/2017
Federal Circuit No. 2016-1706
10/31/2017
10/31/2017
9/30/2017
In Garmin Int’l, Inc. v. Cuozzo Speed Tech. LLC, the Patent Trial and Appeal Board (Board) set forth fi ve factors—commonly referred to as the Garmin factors—for determining whether “additional discovery” will be granted to a party during a proceeding before the Board, such as an inter partes review, covered business method review, or post-grant review. In their article, Nelson D. Runkle and Tyler Del Rosario, of Sughrue Mion, PLLC, discuss the five factors and when to ask for additional discovery.
9/1/2017
The America Invents Act established three post-grant proceedings (inter partes review (IPR), post-grant review (PGR) and covered business method review (CBM)) to allow patent infringement defendants and would-be defendants
a means to challenge the viability of patent claims without incurring the costs and delays of district court litigation.
8/25/2017
Aiyda Cobb urges patent owners to file a preliminary response when a third party requests an inter partes review


The America Invents Act created a post-grant review process to challenge the validity of a patent before the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board. An Inter Partes Review (IPR), one of the proceedings introduced in 2012, provides an opportunity for the Board to review the patentability of one or more claims in a patent on a ground that could be raised under §§ 102 or 103, and only on the basis of prior art consisting of patents or printed publications.
07/27/2017
7/9/2017
Inter partes review (“IPR”) has been popularly adopted and used as a strategy for invalidating patent claims due to its compact and expedited process. The Board is required to render an institution decision within 3 months of preliminary briefings on issues of claim patentability and a final decision within 12 months of any instituted proceeding. Such a time frame allows both a petitioner and a patent owner to reach a conclusion on the patentability dispute. Further, the expedited schedule allows each party to understand its relative strength of argument, leading to a settlement within a relatively short period of time as compared to a proceeding before a federal district courts, thereby saving time and expense in the patent dispute.
06/12/2017
06/07/2017
05/11/2017
05/02/2017
04/28/2017
4/14/2017
4/11/2017
03/23/2017
3/8/2017
03/07/2017
3/7/2017
On February 22, 2017, the Supreme Court in Life Technologies Corp. Et. Al. v. Promega Corp., No. 14-1538, 2017 WL 685531, held that exporting a single component of a patented multicomponent invention from the U.S. for combination with other components for distribution and sales outside of the U.S. does not raise patent infringement liability under 35 U.S.C. § 271(f)(1). The Supreme Court reversed the Federal Circuit's decision that exporting a single important component of a patented multicomponent invention is substantial enough to invoke patent infringement under 35 U.S.C. § 271 (f)(1). 2017 WL 685531 at *1. 
2/22/2017
02/14/2017
1/25/2017
1/24/2017
1/9/2017
1/3/2017
12/16/2016
12/1/2016
Since the U.S. Supreme Court’s ruling in Nautilus, Inc. v. Biosig Instruments, Inc., several courts have reviewed the indefiniteness of patent claims under the new “reasonable certainty” standard. Although it is difficult to gauge the full impact of the changed standard for indefiniteness, it appears that some types of claim terms are more vulnerable to being found indefinite than others. Patent practitioners can use the recent decisions on indefiniteness to shore up weaknesses in patent applications and claims or to exploit potential weaknesses in a competitor’s patent.
11/16/2016
Stakeholder Outreach - Transparency and Accountability (November 2016)
11/10/2016
11/8/2016
11/3/2016
10/11/2016
9/20/2016
9/15/2016
9/1/2016
9/1/2016
8/1/2016
7/28/2016
7/25/2016
7/22/2016
7/18/2016
6/20/2016
Supreme Court confirms “broadest reasonable interpretation” standard for Inter Partes Review proceedings
6/13/2016
Supreme Court vacates Seagate standard for willful infringement and enhancement of damages
5/13/2016
Rolls-Royce Motor Cars Limited and Rolls-Royce Motor Cars NA, LLC (collectively RR) were recently successful in a proceeding filed against a rapper who records and sells music, and performs under the name Rolls Royce Rizzy.
04/19/2016
Claim construction in design patent case rejected where elements found to be functional were wrongly removed
4/11/2016
In ClearCorrect Operating LLC v. U.S. International Trade Commission, [1] the Federal Circuit held that the ITC lacks authority over the electronic transmission of digital data into the United States.  Central to the court's holding was the determination that digital data is not an "article" within the meaning of 19 U.S.C. §1337(a)(1).
04/08/2016
Federal Circuit confirms finding that method of analyzing DNA sequences were directed to law of nature and not patent-eligible
4/7/2016
04/07/2016
Motion for new trial wrongly denied where expert testimony was determined to be false after trial concluded
4/6/2016
03/25/2016
3/21/2016
03/16/2016
Diagnostic tests are significant and essential steps in clinical decision making.  Among such tests, those using biomarkers have developed greatly along with the success in the field of molecular biology.  As such diagnostic tests become a crucial part of the health industry, more patent applications directed to diagnostic methods have been filed.
03/08/2016
Rejection of claims directed to card game upheld where conventional steps of shuffling and dealing found inadequate to provide an inventive concept
2/4/2016
1/29/2016
1/19/2016
1/14/2016
1/13/2016
12/31/2015
12/22/2015
12/10/2015
Mr. Callahan will provide a review of key aspects of successful practice before the PTAB – what do the statistics show and what does the PTAB require from a petitioner and patent owner.
12/4/2015
12/3/2015
12/2/2015
12/2/2015
11/25/2015
11/25/2015
11/10/2015
11/5/2015
10/20/2015
10/2/2015
10/2/2015
10/1/2015
9/23/2015
9/18/2015
9/4/2015
9/3/2015
8/17/2015

In a conflict situation, the strategy of manipulating enemies to fight amongst themselves is well known. In The Art of War, the Chinese military general Sun Tzu observed that

… skillful leaders of old knew how to drive a wedge
between the enemy’s front and rear; to prevent cooperation
between his large and small divisions; to
hinder the good troops from rescuing the bad, the
officers from rallying their men.1

8/13/2015
8/13/2015
2015年8月13日、連邦巡回区控訴裁判所(CAFC)大法廷は全員一致で、被告は全ての方法ステップを実施していないが、被告の顧客による最終ステップの実施は被告に帰属すると認定し、方法クレームの直接侵害が立証されたと判示した。
8/13/2015
8/10/2015
8/2/2015
7/29/2015
米国連邦最高裁判所は2015年5月26日、Commil USA, LLC v. Cisco Systems, Inc. No. 13-896事件において、「訴訟対象特許が無効であると誠実に信じていた(a good faith belief)としても、そのことは当該特許に関する誘発侵害の抗弁とはならない。特許無効の信念があったとしても、誘発侵害の要件である故意を否定できない」と判示した1。
7/28/2015
7/9/2015
7/6/2015
6/23/2015
6/23/2015
6/23/2015
6/23/2015
6/23/2015
6/16/2015
June 16, 2015, Federal Circuit No. 2013-1130
5/26/2015
5/20/2015
Recent Federal Circuit opinions have brought about commentary on a changing landscape for reasonable royalty damages
5/13/2015
5/13/2015
5/11/2015
5/6/2015
4/16/2015
3/26/2015
Federal Circuit, March 26, 2015, 2013-1206
3/10/2015
Federal Circuit, March 10, 2015, 2014-1254
3/5/2015
When inter partes reviews were instituted, the Patent Trial and Appeal Board’s Trial Practice Guide indicated that the board expected that most IPR petitions would rely on expert testimony. To date, the board’s expectations have been largely met as most IPR petitions are filed with an expert declaration.
1/30/2015
Patent litigation has been and remains a very expensive undertaking. According to the American Intellectual Property Association (AIPLA) 2013 economic survey, even a small stakes patent litigation1 can incur average attorney service fees of $500,000 through the discovery phase. This cost can increase to over $3 million for large-stakes cases proceeding to trial.2 The high cost of patent litigation can be attributed to uncertainties in the outcome. In order to present their best case, both plaintiffs and defendants aggressively seek to improve their positions on all legal and technical issues. A “leave no stone unturned” approach can increase the cost of patent litigation tremendously. Arguably, the financial crisis of Fall 2008 did affect patent litigation by bringing cost-pressure to conducting litigation proceedings, in the same manner that the financial crisis heightened cost pressure in many service sectors. In an uncertain financial climate, cost-conscious parties had to exercise selectivity in the legal and technical theories advanced in patent cases.
2/25/2015
About a decade ago, in an open letter to the Director General of the World Intellectual Property Organization, an international group of 59 top scientists, economists and scholars pointed to the importance to society of the emerging open collaborative projects, implicitly highlighting
the need for forms of intellectual property which do not have some of the negative effects associated with present forms of IP such as patents.1
2/21/2015
Over the past year, district courts across the united States and the Federal circuit issued numerous opinions relevant to design patents. While the old mantra that design patents “have no scope”1 has been seemingly set aside, showing infringement of a design patent is still not an easy burden to meet and invalidating a design patent is often a successful defense. a review of some recent court decisions should help practitioners uphold and enforce design patents, or in the alternative, dismiss alleged claims of infringement. this article highlights some of the recent case law relating to design patents, including court opinions regarding claim construction, invalidity, infringement, and remedies.
2/18/2015
2/19/2015
The decision of the United States Supreme Court in Teva v. Sandoz addressed the standard of review that the United States Court of Appeals for the Federal Circuit (CAFC) must accord to United States District Courts (DCTs). The opinion was authored by Justice Breyer; Justice Thomas wrote a dissenting opinion joined by only one other Justice.
2/12/2015
2/5/2015
1/20/2015
12/29/2014
For a patent to be valid in the United States, the claimed subject matter must be novel and unobvious in view of the requirements of 35 U.S.C. §102 and 35 U.S.C. §103. Moreover, the specification disclosure and the claims of the issued patent must meet the legal requirements set forth in 35 U.S.C. §101 and 35 U.S.C. §112, first and second paragraphs.
12/24/2014
12/19/2014
12/17/2014
12/15/2014
12/5/2014
12/5/2014
12/4/2014
12/3/2014
11/18/2014
More than two years ago, the America Invents Act (AIA) reshaped trials at the U.S. Patent and Trademark Office (USPTO). The AIA established inter partes review (IPR) proceedings with the goal of having a new procedure that would provide a faster and cheaper alternative to district court litigation. IPRs allow for any person other than the patent owner to file a petition challenging the validity of a patent in view of prior art patents or printed publications. IPRs have started to change the landscape of patent practice, as they are being filed at an exponential rate. In many cases, IPRs provide a cost-effective and quick alternative to challenge the validity of a patent. The benefits of IPRs have placed urgency and importance on invalidating patents at the USPTO.
11/18/2014
Today, the demand for modern technology is at an all time high. Mobile devices, for example, represent a vast and ever growing market, where companies invest significant resources into the research and development of new ideas and products. Ultimately, much of this research and development includes software development, and as a result there is a strong desire to protect those investments with software patents. However, under U.S. law, the question of what actually constitutes patentable “software” continues to be a difficult one for the courts. The recent decision in Alice Corp. v. CLS Bank Intl. is the Supreme Court’s latest attempt to shed light on this evolving area of law1
11/17/2014
11/5/2014
10/22/2014
The decision of the United States Supreme Court in Alice Corporation PTY. LTD. v. CLS Bank Int'l et Al, 573 U.S. ____ (2014), decided now a full three months ago, has had an impact in two recent precedential decisions of the Court of Appeals for the Federal Circuit (CAFC). In brief, Alice stands for the propositions that: (1) a claim drawn to an abstract idea is patent-ineligible unless it contains additional features that ensure the claim does not monopolize the abstract idea; (2) the relevant analysis is whether the claims do more than instruct the practitioner to implement the abstract idea; and (3) the analysis framework to apply is to first determine whether a claim is directed to an abstract idea and, if so, to ask whether the claim elements transform the nature of the claim to a patent-eligible application of the abstract idea.
10/20/2014
10/14/2014
In a recent inter partes review (IPR), the Patent and Trial Appeals Board (PTAB), in addressing two important concepts in construing and validating patent claims, found that only some of the grounds of patentability were sufficient to meet the “preponderance of the evidence
standard” for determining claims unpatentable. Specifically, the PTAB held that claim terms in an IPR are construed in a broad but reasonable manner and that secondary considerations, without any nexus between the evidence of the secondary considerations and the
claimed invention, are not enough to save claims from a prima facie case of obviousness.1
10/1/2014
9/30/2014
This is the third installment in a series reflecting on the anniversary of post-grant opposition proceedings conducted by the Patent Trial and Appeal Board. This piece looks at the interaction between the PTAB proceedings and patent infringement litigation in federal district courts.
9/24/2014
9/24/2014
9/18/2014
9/17/2014
Over a year ago, the America Invents Act (AIA) (http://1.usa.gov/19AoMZ2) reshaped trials at the U.S. Patent Office (USPTO). The AIA established inter partes review (IPR) proceedings with the goal of having a new procedure that would provide a faster and cheaper alternative to district court litigation. Inter partes reviews allow for any person other than the patent owner to file a petition challenging the validity of a patent in view of prior art patents or printed publications. Under this new regime, a Petitioner may challenge the validity of a patent with an inter partes review at the USPTO prior to a district court dispute on non-infringement.
9/17/2014
9/10/2014
9/5/2014
9/3/2014
8/29/2014
The author reviews estoppel effects in post-grant opposition proceedings and argues that patent owner preliminary responses should be limited to attacking facial deficiencies in the petition, and that a separate reexamination or reissue proceeding is likely preferable to a motion to amend.
8/26/2014
8/22/2014
8/22/2014
8/21/2014
8/15/2014
8/15/2014
8/6/2014
7/30/2014
Partner, Ruthleen Uy, authored the published article: "Future of Software Related Patents" that was also published in the special San Diego Top Attorney Supplement on Wednesday, July 30th, 2014.  
7/28/2014
How does a brand differ from a trademark? A brand is a way of identifying goods or services. A brand is recognized by its trademarks. A trademark is an intellectual property right and a legal term for a name, symbol, design or slogan that differentiates one product or service from another.
7/16/2014
7/11/2014
7/10/2014
Thomas Jefferson, Benjamin Franklin, and the multitude of men and women who helped establish the United States were visionaries in many ways. One of the most important of which was to provide Congress with the power “to promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries.”1 While the drafters of the Constitution likely understood that this provision, a mere 27 words, would lead to many patents, they likely did not realize that their actions would help foster the incredible inventions and discoveries we have today. Additionally, while the drafters of the Constitution gave Congress the power to regulate this patent system as Congress saw fit, the Founding Fathers did not intend for certain patent holders to have their rights stifled by future legislative, regulatory, or judicial proceedings. However, in the wake of the Federal Circuit’s recent decisions in Classen Immunotherapies, Inc. v. Biogen IDEC2 and Momenta Pharmaceuticals, Inc. v. Amphastar Pharmaceuticals,3 the right of patent owners, having patents directed to drugs, medical devices, and other products that require regulatory approval under a Federal law, to pursue infringers has been significantly limited. This could result in a diminished economic value of such patents.
7/10/2014
7/1/2014
In the past, enforcing a design patent was a challenging task because often a small difference between a patented drawing and an accused product would result in a finding of non-infringement. In fact, in 1988 the Federal Circuit noted that design patents "have no scope."1 However, over the past decade the Federal Circuit has shifted its tone and found infringement in several cases where the patented design and the accused design were not exactly the same, but were substantially the same. Following alongside the recent case law, design patents have started to play a central role in companies’ technology disputes, such as the highly-publicized smart phone and tablet patent wars.2 With these recent developments, design patents are becoming a more useful, and in some cases a more threatening,
tool in companies' patent portfolios.
6/16/2014
Trademarks are an extremely valuable asset, and often your company's most enduring asset. Trademarks serve as an information shortcut for consumers, helping to distinguish your products and services from those of competitors. Via a single brand, trademarks effectively communicate your company's reputation, products and services, as well as the consumers' lifestyle and desires.
6/5/2014
In the field of computer and electronics, the structure of the device, the materials used, or the processes at work in an electronic device are not readily apparent to a patent holder seeking to enforce a patent against potentially infringing electronic devices. As electronic devices shrink and become more complex, it is becoming more difficult to fully ascertain all of the structures, materials and processes at work in such devices. The difficulty of analyzing elements of electronic devices to determine whether the electronic devices are infringing a patent raises questions as to what is the level of reasonable inquiry required prior to filing a lawsuit.
5/31/2014
The doctrines of "first sale" in copyright and "exhaustion" in patents stem from a common policy concern -- to permit the free flow of trade. Once a rights holder sells an article protected by the IP, the rights holder cannot later assert infringement against a re-sale of that same article. In Kirtsaeng v. John Wiley & Sons,1 the U.S. Supreme Court recently decided that the foreign sale of the copyrighted article will trigger the "first sale" doctrine, thereby allowing import of that article into the U.S. However, the Supreme Court has declined to preside over the same issue for patents.2 Therefore, a U.S. patent is only exhausted by an authorized U.S. sale, despite an authorized sale abroad.3 Unlike in copyright, if the patented article is sold legally through a foreign sales channel, the U.S. patent holder may still preclude that product from entering into the U.S. market. While patent holders enjoy this additional barrier to entry of imported goods, there are still additional considerations for further protection against parallel imports. For instance, a common business model is to sell an expensive durable good to be used with a non-durable consumable part. These can range from common items such as printers and their ink cartridges to more sophisticated products such as medical imaging systems and their re-recordable media. Rights holders can prevent sale of the durable good from exhausting their rights in the consumable part through patent strategies and use restrictions. This is especially important where the consumable part can be originated from countries with low cost manufacturing or remanufacturing.
5/1/2014
In the U.S., each party to litigation ordinarily pays its own attorney fees regardless of the outcome (called the American Rule). However, in the context of patent litigation, the Patent Act of 1952 allowed for an award of “reasonable attorney fees to the prevailing party” in “exceptional cases” at the discretion of the lower court.
4/30/2014
This column is written by partner Andrew Taska, with a focus on the protection of intellectual property worldwide.
4/22/2014

The Federal Circuit affirmed-in-part, reversed-in-part, vacated-in-part, and remanded the district court’s summary judgment that Novel infringed U.S. Patent No. 6,946,149, which related to a magnesium sulfate, potassium sulfate, and sodium sulfate composition for colonic purging without causing clinically significant electrolyte shifts that Braintree markets as SUPREP® Bowel Prep Kit, and that the ’149 patent was not invalid.

4/11/2014

The Federal Circuit affirmed the district court’s summary judgment that U.S. Patents No. 7,718,634 and No. 7,410,957, which related to treating osteoporosis through the once monthly administration of ibandronate that Roche markets as Boniva®, were invalid for obviousness under 35 U.S.C. § 103(a).
4/4/2014

Question of Jurisdiction and Claim Construction issue: The Federal Circuit affirmed the district court’s decision that it lacked subject matter jurisdiction, finding that the version of 35 U.S.C. §145 in effect at the time did not authorize a patent owner in an ex parte reexamination to bring suit in the district court challenging the Board's action, and affirmed the Board's rejection of claim as obvious under § 103.
4/4/2014
Subject matter jurisdiction for declaratory judgment action by software manufacturers depends on nature of infringement allegation against customers.
4/2/2014

Claim Construction issue: The Federal Circuit affirmed the district court’s construction of two terms (1) temporarily transmitting voice of a caller to the called terminal, and (2) prohibiting voice transmission after the temporary voice transmission, in which the court found the terms require the transmission of a "live" voice, and affirmed the court's judgment of non-infringement.
4/2/2014
3/28/2014
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10/12/2009
10/6/2009
Coauthor - "ANDA Litigation- The Pitfalls of the Para IV letter after Takeda v. Mylan," Andrews Intellect. Prop. Litig. Reptr., Vol.16, Issue 12 (October 6, 2009)
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4/20/2009
 
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11/17/2008
As published in Enterprising Women  magazine September 2008
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9/2007
As published in IP Litigator
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3/19/2007
2/21/2007
12/1/2006
11/7/2006
11/01/2006
9/25/2006
9/7/2006
8/10/2006
7/01/2006
Co-Author with Meredith Martin Addy
6/1/2006
4/21/2006
3/1/2006
3/1/2006
3/1/2006
3/1/2006
2/1/2006
2/1/2006
1/31/2006
1/1/2006
1/1/2006
6/1/2005
6/1/2005
5/01/2005
5/01/2005
3/15/2005
3/1/2005
5/1/2004
4/1/2004
3/24/2004
3/1/2004
12/30/2003
11/01/2003
10/04/2003
9/1/2003
7/1/2003
3/1/2003
3/01/2003
2/01/2003
2/1/2003
1/12/2003
01/01/2003
6/1/2002
05/01/2002
04/30/02
Recent Decisions Impacting Patent Litigation
4/5/2002
4/2/2002
3/1/2002
1/1/2002
1/1/2001

 

9/1/2000
5/10/1999
1/15/1998
10/1/1997
3/1/1996
12/12/1995
11/1/1995
9/1/1995
7/30/1995
7/18/1995
06/01/1995
5/1/1995
05/01/1995
4/05/1995
1/15/1995
1/1/1995
5/7/1994
6/12/2018
Federal Circuit No. 2016-1559