Intellectual Property

In Ethicon Endo-Surgery, Inc. v. Covidien LP, a 2-1 panel split of the Federal Circuit held that neither the American Invents Act (“AIA”) nor the Constitution precludes the same panel of the Patent Trial & Appeal Board (“PTAB” or “Board”) from both deciding whether to institute an inter partes review (“IPR”) of a challenged U.S. Patent and making the final patentability determination in that IPR.

On Monday, January 4, the Court of Appeals for the Federal Circuit heard oral argument in two appeals that may determine what effect the Supreme Court’s Daimler AG v. Bauman decision will have on the exercise of personal jurisdiction over generic pharmaceutical manufacturers in Hatch-Waxman litigation.

On December 17, 2015, Judge Rodney Gilstrap of the Eastern District of Texas (EDTX) ruled that, in light of Alice Corporation Pty. Ltd. v. CLS Bank International, 134 S. Ct. 2347 (2014) (“Alice”), a plaintiff’s position on the validity of the patent-in-suit under § 101 was “objectively unreasonable” and that the harm to the defendants was compounded by the plaintiff  litigating in “an unreasonable manner[,]” meriting an award of attorneys’ fees under 35 U.S.C. § 285. eDekka LLC v. 3balls.com, Inc.et al., C.A. Nos. 2:15-cv-541 and 2:15-cv-585 (Dec. 17, 2015).

Join us for the first webinar in our five-part Biologics/Biosimilars series, “Legal and Regulatory Overview” tomorrow, January 7, 2016 at 3:00 PM ET, featuring Terri Shieh-Newton and Joanne Hawana!

2015 was a busy year for post-grant review appeals at the Federal Circuit and produced notable opinions in the areas of claim construction, IPR procedural issues, and the constitutionality of IPRs in general. In 2015, the Federal Circuit reversed the Board’s claim construction in an IPR for the first time, and found that IPRs do not violate Article III and the Seventh Amendment of the Constitution.

George Bailey stands on a bridge begging for another chance at life. Upon being granted a second chance, he joyously runs home to embrace his family. As the community of Bedford Falls rallies around him and raises funds to save the endangered Building and Loan and George Bailey personally from an unjustified failure, someone proclaims a toast to George Bailey, “the richest man in town.”

On Monday, in the latest episode of the smartphone wars, Samsung filed a petition for certiorari with the Supreme Court. Samsung is appealing a Federal Circuit decision that upheld a $399 million judgment against Samsung for infringing three of Apple’s design patents.

Mintz Levin is running a series of webinars to educate our clients and friends on developments in the biosimilars space.  A cross-practice team of professionals from the IP, Health and Litigation sections are collaborating to present on Patent Prosecution, Health Regulatory, FDA, Patent Litigation, Transactional and Products Liability issues.

A recent U.S. District Court decision has clarified a potential danger when filing terminal disclaimers that contain overly-broad language. The U.S. District Court for the Northern District of Illinois in Hagenbuch v. Sonrai Systems interpreted the terminal disclaimer language “I hereby disclaim the terminal part of any patent granted on the above-identified application or any continuation of it” as applying to any continuation application claiming priority from the application in which this terminal disclaimer was filed.

Filing an appeal brief with the Patent Trial and Appeal Board (PTAB) can be an effective way to advance prosecution and secure allowable claims. After an appellant’s filing of a PTAB appeal brief, an examiner may respond with an examiner’s answer. 37 C.F.R. §§ 41.37, 41.39.

Yesterday the Federal Circuit ruled in MCM Portfolio LLC v. Hewlett-Packard Company that vesting the Patent Office with power to take back previously-conferred patent rights through inter partes review does not violate Article III or the Seventh Amendment.

Mintz has won extraordinary relief for its client, Straight Path IP Group, Inc., convincing the Federal Circuit to completely reverse and remand an IPR final written decision adverse to a patent owner for the first time.

In July the U.S. Patent and Trademark Office issued additional guidelines for determining Subject Matter Eligibility under 35 U.S.C. § 101, as previously discussed at Global IP Matters. 

Last week, the Federal Circuit explained that the Patent Trial and Appeal Board did not err when it allowed a petitioner to revise its Inter Partes Review Reply brief after first cautioning the petitioner that the PTAB may reject the Reply in its entirety if it improperly raised new issues.

On November 10, 2015, the Federal Circuit issued its opinion in ClearCorrect Operating, LLC v. ITC, and struck a blow to both the ITC and the entertainment and software industries by overturning the ITC’s opinion and finding that “[t]he Commission’s decision to expand the scope of its jurisdiction to include electronic transmissions of digital data runs counter to the ‘unambiguously expressed intent of Congress’” and stating that the ITC’s jurisdiction is limited to “material things.”

On Monday, October 19, 2015, the U.S. Supreme Court granted certiorari to hear two patent infringement cases on the issue of willfulness. The first case is Stryker Corp. v. Zimmer Inc. and the second one is Halo Elecs., Inc. v. Pulse Elecs., Inc.

The Federal Circuit has again held that it lacks jurisdiction to review certain decisions of the U.S. Patent Trial & Appeal Board in Inter Partes Reviews, continuing the Court’s apparent “hands off” approach to reviewing PTAB decisions in IPRs.

On Thursday, September 17, 2015, in the fourth Federal Circuit opinion arising out of the patent skirmishes between global high technology titans Apple and Samsung Electronics, a sharply divided Federal Circuit panel vacated the trial court’s denial of Apple’s post-trial motion for a permanent injunction against Samsung.

The International Trade Commission proposed a series of new procedural rules, which were published in the Federal Register on September 24, 2015.

The United States and Australia each offer the option of filing a provisional patent application before filing a national or PCT non-provisional patent application.