Posts in IPWatchdog Articles

When an individual or company challenges the validity of a patent, “the burden of establishing invalidity of a patent or any claim thereof shall rest on the party asserting such invalidity.” In other words, the challenger bears the burden of demonstrating that the patent is invalid—the individual or company holding the patent need not show that the patent is valid. However, the text of the statute is silent on the precise nature of the challenger’s burden.

The Federal Circuit heard the case of Sanofi v. Watson Labs.. Sanofi is the owner of two patents claiming compositions and uses of the cardiovascular drug dronedarone. The ‘167 patent claims methods of reducing cardiovascular hospitalization by administering dronedarone to patients meeting specific conditions that mirror those of a clinical study conducted by Sanofi between 2005 and 2008 (“ATHENA”). The court held that the asserted claims do not exclude compositions containing polysorbate surfactants. Watson and Sandoz appealed; the Federal Circuit affirmed the judgment in full.

In Promega Corporation v. Life Technologies Corporation, on remand from the Supreme Court, the Federal Circuit affirmed district court rulings that granted Life Technologies’ motion for judgment as a matter of law (“JMOL”) that Promega Corp. had failed to prove its infringement case under 35 U.S.C. § 271(a) and § 271(f)(1), and subsequently denied Promega’s motion for a new trial.

Wouldn’t it be a great world if people innovated for the sake of innovating, spending every waking moment in the pursuit of solutions and inventions that would better mankind? Wouldn’t it be a great world if investors, the top 1% and the richest corporations would invest hundreds of millions of dollars, even multiple billions of dollars, and fund the many years of arduous work from large teams of scientists and engineers necessary to achieve paradigm shifting innovation? In such an idealized world innovation would happen just because— well because it would just happen. But that isn’t a patent strategy, or a national innovation strategy either.

Luckily for Apple and Microsoft, however, VirnetX did not assert the ‘135 patent against Mangrove Partners, a hedge fund, which filed a petition for IPR against the ‘135 patent on April 14th, 2015; Mangrove reportedly shorted VirnetX stock around this time. On October 7th, 2015, the PTAB panel adjudicating the case decided to institute the IPR as the petitioner Mangrove had demonstrated a reasonable likelihood of proving invalidity of the challenged claims. Then in January 2016, Apple was successful in having its petition for IPR review of the challenged ‘135 claims joined to Mangrove’s IPR. VirnetX had objected to Apple’s motion for joinder based on the Section 315(b) language but the PTAB found that Section 315(b) did not apply to joinder motions which are governed by 35 U.S.C. § 315(c).

For the last 20 years, manufacturers have used 3D printing to build prototypes, but it was only recently that this industrial technology entered the mainstream.  The 3D printing of products can enable faster time-to-market, save money, mitigate risk and allow manufacturers to customize a component to suit customer needs. 3D printing can produce individual, specifically tailored parts on demand. Boeing printed an entire plane cabin in 2013 and Ford can manufacture vehicle parts in four days that would have taken four months using traditional methods.

The first design patent case to go to trial since Apple v. Samsung has given design patent owners hope that a ‘total profit’ award is still achievable… Patent owners are keeping a close eye on how juries respond to the new legal framework, and will be carefully attuned to appeals from these cases as the Federal Circuit addresses the standards that apply to design patent damages cases going forward. If patent owners continue to get total profits for design patent infringement, even after Samsung v. Apple, companies are likely to increase their efforts in obtaining design patents, particularly given the current climate facing utility patents.

Means plus function claiming allows the drafter to claim the invention based on functionality rather than the more traditional (and preferred) claiming technique that employs structure within the body of the claim itself… If there is no structure in the specification the person of skill in the art cannot save the disclosure by understanding what the drafter intended to be covered by the means plus function limitation in the claims. Thus, means-plus-function claims are valid at the mercy of the specification, and only to the extent that the specification contains support for the structures that define the means… The Federal Circuit does not blindly elevate form over substance when evaluating whether a particular claim limitation invokes means treatment. See Greenberg v. Ethicon Endo-Surgery, Inc., 91 F.3d 1580, 1584 (Fed. Cir. 1996) (“We do not mean to suggest that section 112(6) is triggered only if the claim uses the word ‘means.’”).

The United States Constitution grants to the Congress the power to grant patents. The relevant portion of the Constitution is Article I, Section 8, clause 8. This clause uses of the word “Right” and is the only place in the Constitution the Founding Fathers actually used the word “Right.” Yet today the Supreme Court is poised to determine whether this most fundamental of all rights, a right deemed so important that it was the only right specifically mentioned in the Constitution itself, is a private right or a public right that can be stripped with proceeding in an Article III federal court.

Specifically, the petition presents the question: is patent ineligibility under 35 U.S.C. § 101, which Congress did not codify in 35 U.S.C. § 282(b), not a cognizable defense in a patent litigation? The question presented parallels that of the one recently decided by the Supreme Court in SCA Hygiene Products Aktiebolag v. First Quality Baby Products, LLC, 137 S. Ct. 954 (2017). In SCA Hygiene, the Supreme Court examined 35 U.S.C. § 282(b), which enumerates the defenses that may be raised in a patent litigation, and held that laches, which is not recited in § 282(b), is not a defense to patent damages within the statute of limitations set forth in 35 U.S.C. § 286. RPost’s petition asks the Court to again examine § 282(b) in order to determine whether patent ineligibility under 35 U.S.C. § 101, which, like laches, is not recited in § 282(b), is similarly not a defense that may be raised in a patent litigation.

The PTO reports a case as affirmed if all claims are rejected for at least one issue on appeal and reversed if all claims are reversed for at least one ground of rejection. A case is only reported affirmed-in-part by the PTO’s statistics if at least one claim remains standing, regardless of which legal issue ((§101, §103, §112, etc.) the claim was originally rejected. Since a large portion of PTAB ex parte appeals involve rejections over more than one ground of rejection (between 35%-45% according to this statistical estimate), this reporting process masks what the PTAB is deciding on each legal issue presented to it. Because the USPTO data does not report the outcome of each legal issue in multiple issue cases, it is impossible to collect statistically meaningful data on outcomes of specific legal issues from the data set from the FOIA website.

It is no secret that the fortunes of Mountain View, CA-based tech conglomerate Alphabet Inc. are largely based upon the advertising revenues accrued through its subsidiary Google and its incredibly popular search engine. The company’s most recent earnings report for the third quarter of 2017 shows that, of the company’s $22.5 billion in revenues for the quarter, $19.8 billion came from Google advertising revenues. That’s nearly 90 percent of Google’s entire revenues for the third quarter; the rest comes from Google’s other revenues ($2.4 billion) and Alphabet’s Other Bets ($197 million). The name of the corporation may be Alphabet but that entity is nothing without Google and its advertising revenues.

The United States Supreme Court will hear oral arguments in SAS Institute v. Matal on Monday, November 27, 2017. This case will give the Supreme Court the opportunity to declare whether the Patent Trial and Appeal Board must issue a written decision covering all claims challenged in an inter partes review proceeding. In advance of this much anticipated hearing, I reached out to a number of industry insiders with a simple question: What are you thoughts and predictions on SAS Institute in advance of Supreme Court oral arguments? Their answers follow.

The U.S. International Trade Commission (ITC) announced that it had decided to open a Section 337 investigation over allegations of potential patent infringement in the consumer hygiene product sector. The products at issue in the investigation are certain shaving cartridges used together with a shaving handle, including shaving cartridges marketed under the Schick Hydro Connect 5 brand. The investigation was petitioned by Gillette, a subsidiary of American consumer goods giant Procter & Gamble (NYSE:PG), and it named Schick and its parent company Edgewell Personal Care (NYSE:EPC) as respondents in the case.

On November 6, 2017, Fish & Richardson announced that Brian M. Gaff has joined the firm’s Boston office as a principal in its Litigation Group, where he will continue to focus his practice on complex patent litigation. Previously, Mr. Gaff was a partner at McDermott Will & Emery.