IP UPDATE
Exploring the Latest in Intellectual Property Law
IP UPDATE
Exploring the Latest in Intellectual Property Law
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PTAB Time Bar Application in Instituting IPR Proceedings Nonappealable

by | May 7, 2020 | ,

Addressing the scope of review of the Patent Trial and Appeal Board’s (PTAB’s) application of the one-year time bar of 35 USC § 315(b) in deciding whether to institute an inter partes review (IPR) proceeding, the Supreme Court of the United States held that application of the time bar by the PTAB is nonappealable. Thryv, Inc. v. Click-to-Call Techs., LP, Case No. 18-916 (Supr. Ct. Apr. 20, 2019) (Ginsburg, Justice) (Gorsuch, Justice, joined in part by Sotomayor, Justice, dissenting). The Court explained that an appeal based on the PTAB’s application of the time bar for filing an IPR petition is prohibited under 35 USC § 314(d), which states that the PTAB’s decision on institution “shall be final and nonappealable.”

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Article III Standing Required to Appeal Final Decisions by the PTAB

by | May 7, 2020 |

Addressing the issue of Article III standing in an appeal of an inter partes review (IPR) decision, the US Court of Appeals for the Federal Circuit dismissed the appeal because the party appealing failed to establish an injury sufficient to confer standing. Argentum Pharms. LLC v. Novartis Pharms. Corp., Case No. 18-2273 (Fed. Cir. Apr. 23, 2020) (Moore, J.).

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Assignor Estoppel Does Not Apply to AIA Challenges

by | May 7, 2020 | ,

The US Court of Appeals for the Federal Circuit reiterated that while assignor estoppel prevents a party that assigned a patent to another party from later challenging the validity of the assigned patent in district court, it does not preclude the party from challenging the validity of the assigned patent in an America Invents Act inter partes review (IPR) proceeding. Hologic, Inc. v. Minerva Surgical, Inc., Case Nos. 19-2054; -2081 (Fed. Cir. Apr. 22, 2020) (Stoll, J.) (Stoll, J., additional views).

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Prevailing at the PTAB Can Mean Prevailing Party Attorneys’ Fees

by | May 7, 2020 |

Addressing whether attorneys’ fees may be awarded in a patent infringement lawsuit where an accused infringer successfully invalidates claims in an inter partes review (IPR) proceeding, the US Court of Appeals for the Federal Circuit found that the accused infringer is considered the “prevailing party” for purposes of 35 U.S.C. § 285, but remanded for consideration on whether fees incurred in IPR proceedings can be awarded. Dragon Intellectual Property, LLC v. DISH Network LLC, et al., Case No. 19-1283 (Fed. Cir. Apr. 22, 2020) (Moore, J.).

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Patent Term Extension Only Applies to Approved Product

by | May 7, 2020 |

In a case relating to a patented method for treating multiple sclerosis, the US Court of Appeals for the Federal Circuit found that patent term extension (PTE) only applies to methods of using the approved product as defined under the relevant statute, 35 U.S.C. § 156, even if the patent claim is broad enough to cover methods of using additional compounds. Biogen International GMBH v. Banner Life Sciences LLC, Case No. 20-1373 (Fed. Cir. Apr. 20, 2020) (Lourie, J.).

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Defendant Not “Prevailing Party” for Purposes of Attorneys’ Fees After Voluntary Dismissal Without Prejudice

by | Apr 30, 2020 |

The US Court of Appeals for the Federal Circuit affirmed a district court’s denial of attorneys’ fees under § 285, finding that a defendant is not a “prevailing party” for purposes of collecting attorneys’ fees where the plaintiff voluntarily dismissed its case without prejudice and there was no final court decision designating either litigant as the prevailing party. O.F. Mossberg & Sons, Inc. v. Timney Triggers, LLC, Case No. 19-1134 (Fed. Cir. Apr. 13, 2020) (Hughes, J.).

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Can’t Have Layered Architecture Cake and Eat It Too: No Importing Limitations from Specification in § 101 Analysis

by | Apr 30, 2020 |

Addressing both the availability of appeal in the absence of a Rule 50(b) motion and the appropriateness of importing limitations from the specification in a 35 USC § 101 analysis, the US Court of Appeals for the Federal Circuit reversed a district court’s ruling that a patent was not invalid under § 101. Ericsson Inc. v. TCL Commc’n Tech. Holdings Ltd., Case No. 18-2003 (Fed. Cir. Apr. 14, 2020) (Prost, CJ.) (Newman, J., dissenting).

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Patent’s Explicit Description of Claimed Advantages Defeats § 101 Challenge

by | Apr 30, 2020 |

Reversing a district court’s motion to dismiss, the US Court of Appeals for the Federal Circuit found patent claims directed to cardiac monitoring devices patent eligible under 35 USC § 101 because the claims were directed to a technical improvement to the function of such devices. CardioNet, LLC v. InfoBionic, Inc., Case No. 19-1149 (Fed. Cir. Apr. 17, 2020) (Stoll, J.) (Dyk, J., dissenting in part, concurring in the result).

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No Summary Judgment Where Primary Reference Might Not Be “Basically the Same” as Asserted Design Patent

by | Apr 30, 2020 |

The US Court of Appeals for the Federal Circuit found that the district court improperly resolved a genuine dispute of material fact with respect to summary judgment of invalidity for design patent obviousness because a reasonable fact finder could have concluded that the primary prior art reference did not create “basically the same” visual impression as the asserted designed patent. Spigen Korea Co., Ltd. v. Ultraproof Inc. et al., Case Nos. 19-1435; -1717 (Fed. Cir. Apr. 17, 2020) (Reyna, J.) (Lourie, J., dissented without opinion).

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