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Joseph Robinson & Robert Schaffer
Joseph Robinson has over 20 years of experience in all aspects of intellectual property law. He focuses his practice in the pharmaceutical, life sciences, biotechnology, and medical device fields. His practice encompasses litigation, including Hatch-Waxman litigation; licensing; counseling; due diligence; and patent and trademark prosecution. He has served as litigation counsel in a variety of patent and trademark disputes in many different jurisdictions, and has also served as appellate counsel before the Court of Appeals for the Federal Circuit. Joe also focuses on complex inter partes matters before the U.S Patent and Trademark Office, inventorship disputes, reexaminations and reissues. His experience includes numerous interferences, a particular advantage in new U.S. Patent and Trademark Office post-grant proceedings. He also counsels on patent–related U.S. Food and Drug Administration issues, including citizen petitions, Orange Book listing, and trademark issues. For more information and to contact Joe please visit his profile page at the Troutman Sanders website.
Robert Schaffer is an intellectual property partner at Troutman Sanders. Bob applies more than 30 years of experience to IP counseling and litigation. His work includes patent procurement, strategic planning and transactional advice, due diligence investigations, district court patent cases, and Federal Circuit appeals. He regularly handles complex and high-profile domestic and international patent portfolios, intellectual property agreements and licensing, IP evaluations for collaborations, mergers, and acquisitions. In disputed court cases Bob’s work includes representing and counseling client in ANDA litigations, complex patent infringement cases and appeals, and multidistrict and international cases. In disputed Patent Office matters his work includes representing and counseling clients in interferences, reexaminations, reissues, post-grant proceedings, and in European Oppositions. For more information and to contact Bob please visit his profile page at the Troutman Sanders website.
Recent Articles by Federal Circuit Affirms Dismissal of Patent Infringement Complaint Under Res Judicata
The Federal Circuit recently affirmed a decision by the U.S. District Court for the Northern District of California dismissing a complaint for patent infringement on the grounds of res judicata. See Sowinski v. Cal. Air Res. Bd., No. 2019-1558, 2020 U.S. App. LEXIS 26616 (Fed. Cir. Aug. 21, 2020) (Before Newman, Lourie, and Schall, Circuit Judges) (Opinion for the Court, Newman, Circuit Judge). On November 24, 2015, Dr. Richard Sowinski, the owner of Patent No. 6,601,033 (the ’033 patent), sued the California Air Resources Board (CARB) and several individual and corporate defendants for infringement of the ’033 patent. After Dr. Sowinski failed to file a response to several motions to dismiss, the district court dismissed the complaint with prejudice and without leave to amend pursuant to Central District of California Local Rule 7–12. On appeal, the Federal Circuit affirmed the dismissal, concluding that the Central District of California had considered all of the relevant factors and that there was no clear error of judgment.
The Federal Circuit recently vacated and remanded a district court’s grant of summary judgment invalidating patent claims owned by Nevro Corporation (Nevro). See Nevro Corp. v. Boston Sci. Corp., Nos. 2018-2220, 2018-2349, 2020 U.S. App. LEXIS 11170 (Fed. Cir. Apr. 9, 2020) (Before Moore, Taranto, and Chen, Circuit Judges) (Opinion for the Court, Moore, Circuit Judge). The district court found the “paresthesia-free” system and device claims to be indefinite because “infringement of these claims depended on the effect of the system on a patient, and not a parameter of the system or device itself.” Using this reasoning, the district court concluded that a skilled artisan could not identify the bounds of the system and device claims with reasonable certainty. The Federal Circuit disagreed.
The Federal Circuit recently reversed, vacated, and remanded a decision by the United States District Court for the Eastern District of Michigan, finding that the District Court had abused its discretion when it granted a preliminary injunction enjoining BlephEx, LLC from making allegations of patent infringement without a finding of bad faith and with no adequate basis to conclude that allegations of patent infringement would be false or misleading. See Myco Indust., Inc. v. BlephEx, LLC, No. 2019-2374, 2020 U.S. App. LEXIS 10510 (Fed. Cir. Apr. 3, 2020) (Before Newman, O’Malley, and Taranto, Circuit Judges) (Order for the Court, O’Malley, Circuit Judge).
In November, the Federal Circuit issued an opinion reversing the Patent Trial and Appeal Board’s (the PTAB or the Board) decision that claim 8 of IPR Licensing Inc.’s (IPRL) wireless communications patent—U.S. Patent No. 8,380,244 (the ‘244 Patent)—was unpatentable as obvious. The Board’s obviousness finding as to claim 8 was erroneous as it relied on a prior art reference that IPRL could neither anticipate nor rebut. Furthermore, its finding was, for the second time, unsupported by substantial evidence. See In re IPR Licensing, Inc. (Fed Cir. Nov. 22, 2019) (Before Newman, O’Malley, and Taranto, Circuit Judges) (Opinion for the Court, O’Malley, Circuit Judge).