An article authored by Libbie DiMarco titled “Top Five Recent Developments in Section 337 Litigation” was published in IP Litigator. 2023 was an exciting year for Section 337 litigation at the Interna...
An article authored by Rob Sahr and Curtis Powell titled “Proposed March-In Guidance Signals Funding Agencies to Actively Evaluate Government Rights Under the Bayh-Dole Act” was published in Volume 16...
We are pleased to spotlight Katie Canducci this month! Katie is our Reception and Conference Services Assistant and works in our Boston office.
A column authored by Jason Balich titled “Are Your NDAs Up to Date?” was published in the American Institute of Chemical Engineers’ Chemical Engineering Progress (CEP) Magazine. In this article, Jason...
2: Finding Your Outside Team This is the second in a series of articles that explores considerations and suggested actions for in-house counsel who are inexperienced in patent litigation, yet facing s...
We are pleased to spotlight Shareholder Heather DiPietrantonio this month! Heather works in the Biotechnology Practice in our Boston office. How long have you been at Wolf Greenfield? I’ve worked at W...
1: Initial Considerations This is the first in a series of articles that explores considerations and suggested actions for in-house counsel who are inexperienced in patent litigation and facing a suit...
John Welch, with the editorial assistance of Kira-Khanh McCarthy, co-authored the January-February 2024 edition of The Trademark Reporter, The Law Journal of The International Trademark Association (I...
Lawmakers in New York passed a bill in June of 2023 to ban noncompetes statewide. Although Gov. Kathy Hochul vetoed the bill in December 2023 due to overbreadth, citing concerns regarding its impact o...
For many who draft, prosecute, or examine software-based claims, the Supreme Court’s 2014 opinion in Alice Corporation Pty. Ltd. v. CLS Bank International (Alice) kicked off an era of uncertainty and ...
We are pleased to spotlight Paralegal Henry Adeleye this month! Henry works in the Litigation group in our Washington, DC office.
A column authored by Jason Balich titled “Insuring Against an IP Disaster” was published in the American Institute of Chemical Engineers’ Chemical Engineering Progress (CEP) Magazine. In this article,...
What should in-house counsel be on the lookout for in 2024? As we begin a new year, our attorneys look ahead at intellectual property topics they expect will be trending in 2024. They cover areas incl...
2023 was an exciting year for Section 337 litigation at the ITC, particularly in the final quarter of the year. As we ring in the new year, Wolf Greenfield Shareholder Libbie DiMarco examines five of ...
An article authored by Hunter Keeton titled “Non-Practicing Entities at the International Trade Commission: Statistics, Legal Updates, and Tactics for Respondents” was published in IP Litigator. If yo...
We are pleased to spotlight IP Administrator Melissa Simpson this month! Melissa works in the Biotechnology Practice and is based in Boston.
An article authored by Allison Mayne, Amanda Varrichione, and Usha Parker titled “Language in a Patent Application Specification: A Balanced Approach” was published in Intellectual Property & Tech...
An article authored by Matthew Grady titled “Updating IP Protection Strategies With Growth” was published in Managing Intellectual Property. In this article, Matt explores how new companies can determ...
An article authored by Jonathan Roses titled “Best Practices for Orange Book Listings” was published in The Pharma Letter as an “Expert View.” In this article, Jon provides insights into how to succes...
We are pleased to spotlight Patent Agent Roshan Plamthottam this month! Roshan works in the Chemical & Materials Technologies Practice and works out of our Boston office.
(as published in IPWatchdog) Start-ups often face many competing pressures. Two such pressures that are frequently at odds with each other are the need to adequately protect the intellectual property ...
An article authored by Evan Bender, James Morris, and Usha Parker titled “The Ins and Outs of Incorporation by Reference” was published in Intellectual Property & Technology Law Journal. This arti...
We are pleased to spotlight Executive Assistant Katherine (Kathy) Rodriguez this month! Kathy works in the Paralegal and Library Services department and is based in Washington, DC.
Bio/pharma patents are rarely targeted in inter partes review (IPR) proceedings because their technical vulnerabilities often relate to written description and/or enablement. IPR, of course, is restri...
On September 21, 2023, the Federal Circuit considered an expectation of success argument in the predictable arts as it related to electro-mechanical assemblies. In Elekta Limited v. Zap Surgical Syste...
“Rapunzel, Rapunzel, let down your hair, so that I may climb thy golden stair . . .”
A column authored by Jason Balich titled “The Billion-Dollar Design” was published in the American Institute of Chemical Engineers’ Chemical Engineering Progress (CEP) Magazine. In this article, Jason...
An article co-authored by Jason Balich and Brandon Blackwell titled “Is Your Company’s NDA Up to Date With Robust IP Provisions?” was published in Corporate Counsel.
An article authored by Scott McKeown titled “New Pair of Federal Circuit Precedents Add Wiggle Room for PTAB Petitioners” was published in IAM. In inter partes review (IPR) proceedings, the scope of a...
Technology companies and manufacturers know that they do not infringe a patent if they (or their products) do not practice a claimed invention. But did you know that there are certain circumstances wh...
An article authored by Jason Balich titled “Lessons For UPC Litigation From United States Patent Cases” was published in IAM. Practice before Europe’s new Unified Patent Court (UPC) represents unchart...
We are pleased to feature Technology Specialist Lupe Cruz in the September 2023 Diversity & Inclusion Employee Spotlight. Lupe works in the Biotechnology Practice and is based in Boston.
An article authored by Robert Maldonado titled “Why the INFORM Consumers Act May Present Challenges for Schedule A Cases” was published in World Trademark Review. While the INFORM Consumers Act has be...
A summary written by John McGrath on Certain Power Semiconductors, and Mobile Devices and Computers Containing Same (Inv. No. 337-TA-1308) titled “Commissioner Karpel Disputes ‘Per Se Exclusion’ of Po...
An article authored by Matthew Grady titled “Successful IP Strategies in Down Economies” was published in Today’s General Counsel. With the economy facing headwinds and investment harder to come by, p...
An article co-authored by Usha Parker titled “Get Your Priorities Straight: The Perks and Pitfalls of Patent Priority Claims” was published in Intellectual Property & Technology Law Journal. In th...
Administered by the International Trade Commission (Commission), Section 337 of the Tariff Act of 1930 1 provides relief to U.S. industries from unfair or injurious competition involving imported good...
An article authored by Ed Russavage and Usha Parker titled “Don’t Let a Disclosure or Sale Thwart Your Patent Protection” was published in Intellectual Property & Technology Law Journal. Ed, Usha,...
A column authored by Jason Balich titled “Use Litigation Funding to Enforce Patents” was published in the American Institute of Chemical Engineers’ Chemical Engineering Progress (CEP) Magazine. In thi...
This recent CAFC decision deals with the issue of joint inventorship. The US District Court for the District of Delaware ruled that an inventor be added as a joint inventor based on his contribution t...
An article co-authored by Sarah Schlotter titled “Patenting Quantum Computing Technologies in Europe and the US” was published in the Hoffmann Eitle Quarterly. Quantum technologies, and quantum comput...
An article author by Matthew Grady titled “Generative AI Makes Early Patent Protection More Important” was published in Corporate Counsel, an ALM I Law.com publication. Generative AI (e.g., ChatGPT) h...
An article authored by Ed Russavage titled “Company Policy Issues and Examples Relating to Employee Use of AI-Generated Content” was published in IPWatchdog. Artificial Intelligence (AI) has become a ...
What is top of mind right now for in-house life sciences IP counsel? I recently attended the Life Sciences Patent Network (LSPN) North America conference in Boston, and was lucky enough to moderate a ...
An article authored by Andrew Pinkard, Mike Pomianek, and Jason Balich titled “Finding Stealth Prior Art Before It Finds You” was published in IAM. In this article, the authors explain what happened i...
A column authored by Jason Balich titled “Uncloaking Stealth Prior Art” was published in the American Institute of Chemical Engineers’ Chemical Engineering Progress (CEP) Magazine. In this article, Ja...
(originally published by FORGE) The innovative idea behind your product is what makes it exciting and valuable to consumers and investors. As a start-up leader, your business success depends on keepin...
An article authored by Ed Russavage titled “Software Start-ups Should Address IP Considerations Early On” was published in Law360. In this article, Ed discusses the importance of capturing IP in the e...
John Welch co-authored the January-February 2023 edition of The Trademark Reporter, The Law Journal of The International Trademark Association (INTA). Titled “United States Annual Review: The Seventy-...
An article co-authored by Scott McKeown titled “How Agency Activity is Impacting Patent Litigation This Year” was published in Bloomberg Law. In this article, Scott and his co-authors evaluate federal...
Jonathan Roses was the lead author on behalf of the Boston Intellectual Property Law Association (BIPLA) of a January 2023 Response to USPTO Request for Comments regarding proposed initiatives to ensu...
Jonathan Roses co-authored on behalf of the Boston Intellectual Property Law Association (BIPLA) a January 2023 Response to USPTO Request for Comments regarding proposals to expand the criteria for ad...
A column authored by Jason Balich titled “Patents Expire, But Trademarks Can Last Forever” was published in the American Institute of Chemical Engineers’ Chemical Engineering Progress (CEP) Magazine. ...
An article co-authored by Sarah Hassan titled “ITC transparency trend highlights best practices for filing complaints” was published in IAM Media. Patent litigants and counsel in the US International ...
An article authored by John Welch titled “The Top 10 TTAB Decision of 2022” was published in World Trademark Review (WTR), Boston Intellectual Property Law Association's newsletter, and The TTABlog®. ...
(as published in IPWatchdog) Divided patent infringement—also called “joint infringement”—is a doctrine plaintiffs can use to allege infringement where more than one party may have participated in a p...
A column authored by Jason Balich titled “Escape Infringing a Patented Method of Manufacturing – Legally” was published in the American Institute of Chemical Engineers’ Chemical Engineering Progress (...
An article authored by Ed Russavage titled “Software Patents in the United States: Essential Considerations and Important Trends” was published in The Journal of Robotics, Artificial Intelligence &...
A column authored by Jason Balich titled “Good Engineers Can Make Good Lawyers” was published in the American Institute of Chemical Engineers’ Chemical Engineering Progress (CEP) Magazine. In this art...
An article co-authored by Sarah Hassan titled “How the pandemic has hit patent procurement” has been published in IAM Media’s Special Report 2022 Q3: Patent Portfolio Management. In this article, Sara...
An article authored by Emma Frank titled “Protecting Both Intellectual Property and Progress” was published in BioPharm International. In this article, Emma discusses the Hatch Waxman safe harbor prov...
(as published in IPWatchdog) Prior to the Supreme Court’s ruling in eBay v. MercExchange, when there was a finding of infringement, granting an injunction was almost automatic. See Richardson v. Suzuk...
An article authored by Jason Balich and Brandon Blackwell titled “Top Tips to Protect a Company’s Confidential Information When Sharing with Others” published in the Intellectual Property & Techno...
An article co-authored by Scott McKeown titled “A New Era at the PTAB? Director Vidal Issues New Guidance on Discretionary Denials of Institution” was published in Westlaw Today, a Thomson Reuters pub...
A column authored by Jason Balich titled “Patent Update: Don’t Patent That!” was published in the American Institute of Chemical Engineers’ Chemical Engineering Progress (CEP) Magazine. In this articl...
Jonathan Roses co-authored on behalf of the Boston Patent Law Association (BPLA) a July 2022 Response to USPTO Request for Comments regarding issues associated with, and options for designing, a small...
An article authored by Christina Licursi titled “Creating a Diverse, Equitable, and Inclusive Law Firm: One Firm’s Reckoning Post-Pandemic” was published in Massachusetts Lawyers Weekly. In this artic...
An article co-authored by Sarah Hassan titled “The Unique Nature Of COVID-Era Patent Procurement Trends” has been published in Law360. In this article, Sarah and her co-author examine changes in the f...
Author: Doug Wolf, Wolf Greenfield Verifier: Brian Darville, Oblon, McClelland, Maier & Neustadt, LLP
An article written by Charlie Steenburg, Jason Balich, and Alex Kim titled “Patent Deposition Notices With Minimal Motion Practice Risk” was published in Law360
Introduction In February of 2022, the Federal Circuit affirmed a New Jersey District Court’s determination that four patents claiming methods of treating opioid overdose by intranasal administration o...
Author: Brian Darville, Oblon, McClelland, Maier & Neustadt, LLP Verifier: Doug Wolf, Wolf Greenfield
While issue preclusion means one strike and you are out, a court might need to call a few balls before calling the strike that ends the case.
March is Women's History Month, where Americans commemorate and encourage the study, observance, and celebration of the vital role of women in history. We honor the women at Wolf Greenfield year round...
March is Women's History Month, where Americans commemorate and encourage the study, observance, and celebration of the vital role of women in history. We honor the women at Wolf Greenfield year round...
March is Women's History Month, where Americans commemorate and encourage the study, observance, and celebration of the vital role of women in history. We honor the women at Wolf Greenfield year round...
Under 35 U.S.C. § 311(b), a Petitioner may seek to institute an IPR on grounds that “could be raised under section 102 or 103 and only on the basis of prior art consisting of patents or printed public...
The 2022 “Annual Review of US Trademark Cases,” co-authored by John L. Welch of Wolf Greenfield and Theodore H. Davis, Jr. of Kilpatrick Townsend and titled “The Seventy-Fourth Year of Administration ...
Design applications may be a cost effective way to protect a commercialized product from competitors, or supplement other coverage of a utility application. In commercialized products, the design and ...
Section 315(e)(2) states that once a final decision issues in an IPR challenging a claim, the Petitioner “may not assert either in [court or the ITC] that the claim is invalid on any ground that the p...
The Federal Circuit vacated the PTAB’s construction of a claim term, underscoring the principle that proper claim construction may require a close examination of the specification and other available ...
In a two-part series on his blog, “The TTABlog®,” John Welch discusses the 10 Trademark Trial and Appeal Board (TTAB) decisions that he considers to be the most important and/or interesting from 2021....
An article written by Libbie DiMarco, “Commission Finds Violation and Affirms No Indefiniteness Where Previous IPR Declaration Undermined Respondents Indefiniteness Positions” was published in the Dec...
An article written by Michael Albert, Jason Balich and Alex Kim titled “Suing a Foreign Patent Infringer” was published in Today’s General Counsel.
In Juno Therapeutics v. Kite Pharma, the Court of Appeals for the Federal Circuit (CAFC) reversed a $1.2 billion dollar judgment to Juno, finding that Juno’s asserted claims, which they alleged were i...
In honor of Veterans Day, Wolf Greenfield is featuring four veterans who are near and dear to us. Learn about some of the veterans at the firm by clicking below.
An article written by Charlie Steenburg, Jason Balich, and Alex Kim titled “Understanding A Company's Duty To Prep For Depositions” was published in Law360. In this article, the authors discuss the pr...
Jonathan Roses co-authored on behalf of the Boston Patent Law Association's (BPLA’s) Patent Office Practice Committee an October 2021 Response to USPTO Request for Information on the current state of ...
An article written by John Welch of Wolf Greenfield and Martin Schwimmer of Leason Ellis titled “Why Your TTAB Judgment May Fall Flat in Court” was published in World Trademark Review (WTR). In this a...
Many questions have been raised about the patentability of software in the wake of the Alice Corp. decision by the Supreme Court. While the precise scope of the new approach on abstract ideas is being...
John Welch wrote an article published by World Trademark Review titled "TTAB Upholds Fraud Claim Against Distributor of Massage Chairs Who Registered Manufacturer's Mark." In this article, John discus...
In Mitsubishi Tanabe Pharma Corp. v. Sandoz, Inc., the District Court for the District of New Jersey considered whether a patent receiving patent term adjustment (PTA) may be invalidated for obviousne...
This article is part of Wolf Greenfield's design patents page. To learn more about design patents, click here. The Court of Appeals for the Federal Circuit was tasked with determining whether a design...
Overview In a recent case analyzing enablement and the weight of remarks made at trial about a technology’s relevance to COVID-19, the Federal Circuit affirmed a United States District Court for the D...
An article titled "Exploring the Reasons that Guiding Case No. 20 Lost Its Guiding Effect" was published in China Law Connect, a journal of Stanford Law Schools' China Guiding Cases Project. Read more...
Jonathan Roses co-authored on behalf of the Boston Patent Law Association's (BPLA’s) Patent Office Practice Committee a May 2021 Response to USPTO Request for Comments on proposed updates to the USPTO...
Mylan v. Janssen considers a topic IPR petitioners may be concerned about when institution of their petition is denied by the PTAB – is there any way to appeal the decision? The Federal Circuit held t...
Joinder may allow a party to challenge patent claims with an IPR even if the one-year time bar in Section 315(b) would otherwise preclude the party from filing a petition for IPR. In Uniloc 2017 LLC v...
On appeal of a PTAB decision that all claims in a patent on compressing video files were unpatentable, the Federal Circuit clarified two issues. This post considers the second addressed issue – is the...
(as published by Law360) The U.S. Court of Appeals for the Federal Circuit recently highlighted an important rule of patent claim construction: that claim limitations should be construed in a way that...
On appeal of a PTAB decision finding all claims in a patent directed to compressing video files unpatentable, the Federal Circuit clarified two issues. This post considers the first clarified issue – ...
(as published by IPWatchdog) “Many startups make the mistake of ignoring the value of non-patent intellectual property…. A company’s brand can be immensely valuable in the marketplace.”
(as published by Law360) As we round the corner into a second year of the COVID-19 pandemic, many of us are not back in our offices, and working from home has become the new normal. While the challeng...
John Welch co-authored an article published by World Trademark Review titled "Where to Appeal a TTAB Decision? The Choice is Complicated." Read more (subscription required).
An article written by John Strand and Kira-Khanh McCarthy, titled "Does the Buck(eye) Stop Here? Sixth Circuit Reinstates Ohio State Trademark Claims," featured in World Trademark Review. Read more (s...
The time bar in Section 315(b) says that IPR may not be instituted if the petition was filed more than one year after the petitioner was “served with a complaint alleging infringement of the patent.” ...
(as published in the May 2021 issue of the American Chemical Society's Northeast Section publication of The Nucleus)
Roughly a year after lockdowns occurred nationwide, its impact on the country’s federal court system is still being felt. While the strain of the pandemic and its attendant restrictions are universall...
Jonathan Roses was the lead author on behalf of the Boston Patent Law Association’s (BPLA’s) Patent Office Practice and Licensing Committees of an April 2021 Response to a Notice of Proposed Rulemakin...
On February 11, 2021 the Federal Circuit upheld a United States District Court for the District of Delaware decision finding that Amgen’s function-only anti-PCSK9 monoclonal antibody claims were noten...
Authors: Jason Balich, K. Blake Chancellor, Sam Estabrooks, Eric Greenwald, Chelsea Loughran, Gabe McCool, Marie McKiernan, Kevin Mosier, Jonathan Roses, Claire Schuster, Charlie Steenburg, Patrick Wa...
Discretionary denial has been a hot topic at the PTAB. On Wednesday, February 24th, Wolf Greenfield hosted a webinar to discuss discretionary denial at the PTAB, and in particular, discretionary denia...
John Welch co-authored the January-February 2021 edition of The Trademark Reporter, The Law Journal of The International Trademark Association (INTA). Titled “United States Annual Review: The Seventy-...
Jonathan Roses was the lead author on behalf of the Boston Patent Law Association's (BPLA’s) Patent Office Practice and ad hoc Diversity & Inclusion Committees of a February 2021 Response to USPTO...
Overview On December 11, 2020, the PTAB issued a Final Written Decision in Illumina, Inc. v. Natera, Inc., IPR2019-01201, upholding the validity of Natera Inc.’s patent for determining genetic data fr...
Summary Agreeing with the district court’s decision to invalidate two drug patents for indefiniteness, the Federal Circuit reasoned that two terms (“target” versus “produce”) used in the alternative i...
An article written by Rob Sahr titled “Protecting Pharmaceutical Exclusivity: Avoiding the Hidden Dangers of Double Patenting” was published in Pharmaceutical Commerce. Read more.
Overview On August 3, 2020, the United States Court of Appeals for the Federal Circuit partially reversed a District Court’s decision for a permanent injunction against 10X Genomics. Bio-Rad Laborator...
Although judicial review of decisions during IPR typically occurs through appeal after the PTAB’s Final Written Decision, a growing number of cases are exploring other means of judicial review. Questi...
A series of Supreme Court cases has clarified that not all issues that arise in IPR are appealable. Thus, in addition to considering the issue of standing, which we previously discussed, a party consi...
In the time since the America Invents Act (AIA) created the Patent Trial and Appeal Board (PTAB), inter partes review (IPR) and other PTAB proceedings for challenging patents’ validity have proven to ...
Seeking judicial review of an IPR decision can be a trap for the unwary. Section 319 permits a “dissatisfied” party to appeal. And while the language may seem simple, it can lead parties astray. This ...
Recently, the United States District Court for the District of Massachusetts held a webinar in which several judges discussed their experiences from the first few criminal jury trials that the Distric...
An article written by Jonathan Roses and Alexander Lee, associate at Hoffmann Eitle, titled "Doctrine of Equivalents in US and European Patent Law" was published in The Pharma Letter. Read more (subsc...
An article written by Jonathan Roses and Matthew Birkett, partner at Hoffmann Eitle, titled "Salt and Solid Form Issues in US and European Patents" was published in The Pharma Letter. Read more (subsc...
An article written by Mike Pomianek and Jason Balich titled “Manufacturing Abroad to Avoid Infringing a Method Patent” was published in the fall 2020 edition of Today’s General Counsel. Read more.
Scores of lawyers and stakeholders in the biologics industry had been eagerly awaiting guidance from a federal district court in the In re Humira (Adalimumab) Antitrust Litigation, which was filed in ...
An article written by Jonathan Roses and Matthew Birkett, partner at Hoffmann Eitle, titled "Double Patenting in the USA and Europe" was published in The Pharma Letter. Read more (subscription require...
Overview On July 6, 2020, the Federal Circuit affirmed denial of Genentech’s motions to enjoin Amgen from marketing MVASI™ (bevacizumab-awwb), a biosimilar version of Genentech’s AVASTIN® (bevacizumab...
As any involved party can confirm, patent litigation is often not the most economical method of resolving a dispute. Typically, the “American Rule” is that each party must pay for its own litigation c...
Per the express language of 35 U.S.C. § 311, a petitioner in an IPR may request cancellation of a claim “only on a ground that could be raised under section 102 or 103.” In other words, an issued clai...
Overview On August 27, 2020, the Federal Circuit vacated the district court’s determination that Genentech’s Hemlibra® (emicizumab-kxwh) product for treating hemophilia did not infringe Baxalta’s US P...
A summary written by Libbie DiMarco on Mayborn Group, Ltd. v. Int’l Trade Comm’n, No. 2019-2077 (Fed. Cir. July 16, 2020) titled "Federal Circuit Rules that the Commission Cannot Adjudicate an Invalid...
As the COVID-19 pandemic continues, courts across the country are responding by modifying their standard procedures in the hopes of mitigating the spread of the virus. While some judges are issuing or...
UPDATE: THE FOLLOWING CONTENT WAS ADDED AUGUST 5, 2020
An article written by Greg Corbett and Libbie DiMarco titled "Cross-Roads of Patent Litigation and IPR Practice" was published in IP Litigator. Read more.
Overview Cell-free fetal DNA technology was again the centerpiece of a dispute between plaintiffs Illumina and Verinata Health (referred together as Illumina), and defendants Ariosa Diagnostics and Ro...
Overview The Federal Circuit upheld the US District Court for the District of Delaware’s decision that generic Slayback Pharma did not infringe Eagle Pharmaceutical’s patents covering its anti-cancer ...
Even when certain elements in a claimed method are not expressly disclosed in the prior art, the claim can still be held obvious if the missing elements are supplied in the form of an inherent propert...
There is always a danger in raising an argument for the first time on appeal. The Federal Circuit’s recent decision in Boston Scientific Neuromodulation v. Nevro (No. 2019-1584) provides yet another e...
An article written by Amanda Slade and John Strand titled "Supreme Court’s Booking.com Ruling Signals Uptick in Registration of ‘Generic.com’ Marks" was published in IPWatchdog. Read more.
An article written by Greg Corbett and Marie McKiernan titled "Impact and 'Unintended Benefits' of the Federal Circuit's Suspension of In-Person Oral Arguments" was published in Law.com. Read more (su...
An article written by Jonathan Roses and Toby Simpson, partner at Hoffmann Eitle, titled “The intersection of regulatory and patent exclusivities for the life sciences industry: a comparative overview...
In spite of social distancing requirements established by the COVID-19 pandemic, courts are now more likely to expect that litigants have been diligently keeping up with various pretrial tasks. While ...
A stay is an important mechanism for many defendants to consider when filing an IPR. Due to the ongoing pandemic, courts have had to shift resources to address COVID-19-related concerns. In some insta...
UPDATE: THE FOLLOWING CONTENT WAS ADDED JUNE 1, 2020 On May 27, 2020, the Honorable Colleen McMahon issued trial procedures in Ferring Pharmaceuticals Inc., et al. v. Serenity Pharmaceuticals, LLC, et...
An article co-authored by Hunter Keeton titled “Divided Infringements Still Dividing Courts? New Cases Provide More Insights” was published by Westlaw Journal. Read more.
Recent orders by the Honorable Rodney Gilstrap in the Eastern District of Texas demonstrate the potential impact of foreign discovery during the pandemic. In Canon, Inc. v. TCL Electronics Holdings Lt...
Invalidity grounds in IPR that are not based on patents must be based on printed publications. But the nature of the evidence required at the time of institution to show that a non-patent reference is...
The following presentation discusses the impact COVID-19 has had on patent procedures. Topics covered include:
Appearing before the Patent Trial and Appeal Board (PTAB) looks different as a result of COVID-19. The PTAB recently held a “Boardside Chat” to talk about how PTAB practice has changed. Here are some ...
The United States Patent and Trademark Office (USPTO) announced a new program designed to prioritize examination of patents geared towards the prevention or treatment of COVID-19. Claims must cover “a...
Last week, the Supreme Court released its opinion in Thryv, Inc. v. Click-to-Call. This case, as we previously reviewed, concerns whether the PTAB’s application of the one-year statutory time bar for ...
All lawsuits in federal district court start with the filing of a complaint. But that complaint, amongst other documents, must eventually reach the defendant for a lawsuit to truly begin—this is a nec...
As COVID-19 continues to impact people around the world, many organizations and institutions are shifting gears to focus their efforts on ways in which they can help. Some are working to combat corona...
Overview On March 17, 2020, the Federal Circuit reversed the district court’s finding that two patents relating to diagnostic methods involving cell-free fetal DNA were invalid for lacking subject mat...
Due to the current COVID-19 pandemic, effectively all hearings and oral arguments must be cancelled, rescheduled or conducted remotely. Because it remains unclear when it will be safe—and responsible—...
The March 2019 decision from the PTAB’s Precedential Opinion Panel (“POP”) in Proppant Express Investments v. Oren Technologies held that petitioners can in some situations join issues to their pendin...
With rapid developments in substantive and procedural law, as well as technical advances in artificial intelligence resources, this article examines what trends may lie ahead at the US International T...
Prosecution history can be a minefield in patent cases, and IPR is no different. In the context of construing patent claims, much of the focus is often on whether the patent owner disclaimed particula...
The Federal Circuit’s recent decision in Hospira v. Fresenius Kabi USA is the latest to show how the court handles allegations of inherency in life sciences patent litigation. Jonathan Roses dissects ...
An article by Jonathan Roses titled "Lessons on inherency challenges after Hospira v. Fresenius Kabi USA" was published by Westlaw Journal. Read more.
Overview On January 15, 2020, Hospira, Inc. filed a petition for rehearing en banc of the Federal Circuit’s December 16, 2019 panel decision in Amgen, Inc. v. Hospira, Inc., Nos. 2019-1067, 2019-1102 ...
Patent claims that could be indefinite have long raised tricky issues for parties in IPR. Should petitioners challenge in IPR claims they think are indefinite? What should the PTAB do if it concludes ...
The 2020 Annual Review of U.S. Trademark Cases, co-authored by John L. Welch and titled “The Seventy-Second Year of Administration of the Lanham Act of 1946," appeared in the January-February issue of...
Earlier this week, the FDA announced that it has made enhancements to the Purple Book. These changes improve how information related to biological and biosimilar products is accessed through the use o...
Today, companies are developing artificial intelligence (AI) systems to meaningfully analyze the deluge of biomedical data. A substantial investment in building and deploying machine learning (ML) tec...
That is the gist of a recent decision by the court, which permitted an IPR Petitioner to use “general knowledge” to fill in missing claim limitations in certain circumstances, but also constrained the...
An article written by Greg Corbett and Libbie DiMarco titled "Latest Developments and Emerging Trends at the ITC" was published in IP Litigator. Read more.
Overview On January 29, 2020, the Federal Circuit reversed and remanded an August 21, 2019 decision (Galderma v. Teva, 390 F.Supp.3d 582 (2019)) handed down by the United States District Court for the...
When can a prior art reference that discloses a protein purification step at room temperature render invalid a patent claim with a temperature range from about 10°C to about 18°C? Answer: When that pr...
An article written by Libbie DiMarco and Nathan Speed titled "Litigating Invalidity After IPR Resolution" was published in the Chicago-Kent Journal of Intellectual Property. Read more.
The Supreme Court heard oral arguments in Thryv v. Click-to-Call Technologies last month. As we previously discussed, the case concerns whether the PTAB’s finding that a petition for IPR was timely fi...
Too often some challenger in IPR declines to use non-patent literature (or “NPL”), such as academic and trade journal articles, because of the effort and risk associated with establishing that the NPL...
In the past, moving to amend the challenged claims during IPR was largely futile. The PTAB denied nearly all motions to amend, and many patent owners that might have benefited from amendment chose not...
Challengers in post-grant proceedings like IPR may not reassert invalidity arguments in court that they “raised or reasonably could have raised” before the PTAB. Several recent cases illustrate that w...
(as published by DesignNews) At the core of every patent application are its inventors. For both large and small companies, differing opinions on input into the invention and internal politics frequen...
The statute that created inter partes review (IPR) defines certain situations when IPR is not available. For example, IPR is not available if the petitioner was served with a complaint alleging infrin...
Judicial estoppel is an equitable doctrine that precludes a party from taking a position in one proceeding that is inconsistent with a position the party took in a previous proceeding. It can be used ...
Jonathan Roses was the lead author on behalf of the Boston Patent Law Association's (BPLA’s) Patent Office Practice Committee of a November 2019 Response to USPTO Request for Comments on patenting art...
(as published by ITC TLA) In the Matter of CERTAIN CARBURETORS AND PRODUCTS CONTAINING SUCH CARBURETORS, Inv. No. 337-TA-1123, Initial Determination Granting Summary Determination Before Chief ALJ Bul...
An article written by Michele Moresco titled "Understanding Foreign Filing License Requirements" was published by Industry Today. Read more.
An article written by John Welch, titled "US law inches towards protecting trademark reputation without use" was published by World Trademark Review. Read more (subscription required).
(as published by Law360) In part one of this two-part series, we discussed the latest U.S. International Trade Commission developments involving Patent Trial and Appeal Board proceedings, the public i...
(as published by Law360) Despite a brief hiatus stemming from the government shutdown, 2019 has already been a very busy year in Section 337 practice at the U.S. International Trade Commission. Two ad...
Under the estoppel provisions of 35 U.S.C. § 315(e), if an IPR results in a final written decision, the petitioner is barred from raising invalidity arguments in court or the ITC based on any grounds ...
(as published by Bloomberg Law) Determining whether a party can be sued in a particular venue is crucial for both patent owners looking to file suit and accused infringers seeking to avoid a given ven...
The Federal Circuit recently declined to consider whether a successful IPR petitioner is estopped from making its winning invalidity arguments in district court. If a winning petitioner does face esto...
An article authored by Dan Rudoy titled “Strategies for Patenting AI Innovations In Life Sciences” appeared in the July/August issue of Life Science Leader. Read more.
(as published by the New York Law Journal) Patent owners asserting their patents in litigation will often seek broad claim constructions to cover accused products and forestall defendants’ non-infring...
(As published by Bloomberg) OVERVIEW: The U.S. Supreme Court struck down the Lanham Act’s bar on registering immoral or scandalous marks on June 24, allowing federal trademark protection for “immoral ...
An article by John Strand and Ethan Marks titled “Supreme Court: Licensee may use trademark after bankruptcy rejection, subject to license” was published in Thomson Reuters Westlaw Journal. Read more.
An article co-authored by Hunter Keeton titled “What Is the Key to Unlocking the Federal Circuit’s Divided Infringement Test?” was published in the May/June 2019 issue of IP Litigator. Read more.
An IPR follow-on petitioner may find it particularly challenging to select the best prior art references and arguments to submit to the PTAB. To make matters worse, the PTAB may decide to invoke its d...
(as published by ITC TLA) In the Matter of CERTAIN MOBILE ELECTRONIC DEVICES AND RADIO FREQUENCY AND PROCESSING COMPONENTS THEREOF (II), Inv. No. 337-TA-1093, Initial Determination and Recommended Rem...
For months, panels at the PTAB have debated the relevance of parallel district court litigation on the PTAB’s discretion under 35 U.S.C. § 314(a) to institute or deny a petition for IPR. On May 7, 201...
(as published here by Startup Nation) Startups thrive on innovation and disruption, finding new ways to tackle challenges and devise solutions. However, many new businesses don’t have a strong underst...
A critical and early determinant in any procedural review is an examination of the permissibility of individual pieces of evidence. In matters of intellectual property, and particularly in IPRs, the p...
While a line of argument in an IPR may seem promising to a patent owner addressing one particular ground of rejection, it is critical for the patent owner to analyze how the argument may impact other ...
John L. Welch's article titled "Are snack bars related to energy drink powders and bicycles?" was published by World Trademark Review Daily. Read more (subscription required).