Posts in Patents

CAFC Affirms PTAB Finding that Prior Art Reference was Not ‘By Another’

In a precedential decision issued earlier this month, the U.S. Court of Appeals for the Federal Circuit (CAFC) affirmed a decision of the Patent Trial and Appeal Board (PTAB) in an appeal by LSI Corporation and Avago Technologies U.S. Inc. (LSI) regarding the PTAB’s finding that LSI’s cited reference in an inter partes review (IPR) did not qualify as prior art. The CAFC said in part that U.S. Patent No. 5,731,768 (“Tsang”) was not “by another” under 35 U.S.C. 102(e) for U.S. Patent No. 5,859,601 (‘601 patent).

What to Know About Adjudicating Redesigns Before and After ITC Determinations

Investigations brought under 19 U.S.C. § 1337, commonly known as “Section 337” cases, at the United States International Trade Commission (ITC) have become a go-to enforcement option for patent owners seeking fast, injunction-type relief against infringing imports. It is well known that the ITC issues powerful remedial orders, including (1) exclusion orders, which order United States Customs and Border Protection (Customs or CBP) to exclude infringing imports imported by Respondents or, in some cases, third parties, and (2) cease-and-desist orders, which order Respondents not to import or sell infringing, imported products in the United States. Because ITC remedial orders are broadly written to cover even unadjudicated products that infringe the subject patents, and because such orders are only prospective in nature, it is critical for ITC litigants and their attorneys to understand the available procedures to adjudicate redesigned products.

From SEPs to Discovery, Colombia is Getting More Patent Friendly

Latin American countries are not usually seen as a first line option when building a strategy to deploy global litigation campaigns to enforce patent rights. However, in 2022, developments in Colombian law highlighted it as a country with administrative and judicial systems that favor patent rights and provide for effective assertion of local patent assets.

CAFC Says Generic Blood Pressure Product Described in ANDA Will Not Infringe Par Pharma Patents

In its third precedential patent decision this week, the U.S. Court of Appeals for the Federal Circuit (CAFC) today affirmed a district court’s finding that Eagle Pharmaceuticals, Inc.’s abbreviated new drug application (ANDA) does not infringe two patents owned by Par Pharmaceutical, Inc., Par Sterile Products, LLC, and Endo Par Innovation Company, LLC (collectively, Par). The CAFC also affirmed the district court’s denial of declaratory judgment that the sale of the proposed generic product would infringe.

Streamlining Patent Examination: Amendments to Canada’s Patent Rules Coming Into Effect Soon

Responding to the patent term adjustment obligation under the Canada-United States-Mexico Agreement (CUSMA) and to “streamline the patent examination process”, the Canadian government has registered major changes to the Canadian Patent Rules. The amendments will come into effect on October 3, 2022, and include notable modifications to the patent application examination process, such as establishing excess claim fees for over 20 claims, fees for continuing examination beyond three office actions, and offering conditional notice of allowance.

Ingenio’s Failure to Seek Remand Under SAS Institute Dooms CAFC Appeal

On August 17, the U.S. Court of Appeals for the Federal Circuit issued a precedential decision in Click-to-Call Technologies LP v. Ingenio, Inc. finding in part that, as a matter of law, Ingenio was estopped from challenging the validity of a patent claim on grounds it could have reasonably challenged during inter partes review (IPR) proceedings at the Patent Trial and Appeal Board (PTAB). Although the impact of this precedential holding will likely be limited due to the “unusual procedural posture” of this case, which involves a partial IPR institution prior to the U.S. Supreme Court’s 2018 ruling in SAS Institute, the Federal Circuit’s decision does underscore the circuitous nature of PTAB proceedings that often add many years to patent lawsuits filed in U.S. district court.