Posts filtered by tags: Federal Circuit[x]


More Monkey Business in IP Law

by Dennis Crouch In re: Infinity Headwear & Apparel, Docket No. 18-01998 (Fed. Cir. 2019). This case is fairly silly – The claims at issue cover a hooded blanket and stuffed toy combination — found invalid reexamination. On appeal, the patentee argued that the PTAB had conducted an improper claim construction that “equated a monkey with the claimed hood.” Unlike the present invention, however, Katz’s hooded jacket includes a stuffed monkey attached to, or forming, the back portion of the hood. ...
Tags: Law, Patent, Fed, Katz, Federal Circuit, Dennis Crouch, PTAB

United States: Federal Circuit Holds That ITC's Trademark Decisions Are Not Binding On District Courts, Creating A Potential Circuit Split - Ropes & Gray LLP

The U.S. International Trade Commission, a quasi-judicial independent agency based in Washington, D.C., is a common forum for patent, trademark, and trade secret disputes.
Tags: News, Washington, United States, Itc, Federal Circuit, U S International Trade Commission, Gray LLP

United States: Federal Circuit Affirms ITC's Non-Institution Decision, Offering Guidance For Future FDCA-Related Section 337 Claims - Ropes & Gray LLP

In its long-awaited decision in Amarin Pharma. v. ITC, the Federal Circuit provided guidance on the U.S. International Trade Commission's discretion to decline to institute an investigation under section 337 of the Tariff Act
Tags: News, United States, Itc, Federal Circuit, U S International Trade Commission, Gray LLP, Amarin Pharma, Federal Circuit Affirms ITC

Federal Circuit has No Opinion; Senju Asks the Supreme Court for Its

by Dennis Crouch Back in 2017, I published an article condemning Federal Circuit’s ramped-up practice of issuing R. 36 judgments in cases on appeal from the USPTO.  Rather than simply arguing about policy, I looked at the statute and concluded that Section 144 of the Patent Act requires the Federal Circuit to issue its opinion, not just judgments . Dennis Crouch, Wrongly Affirmed Without Opinion, 52 Wake Forest L. Rev. 561 (2017). Over the past two years many petitioners have raised this argume...
Tags: Supreme Court, Law, Court, Graham, Fda, Patent, U S Supreme Court, Federal Circuit, Ding, Patent Trial and Appeal Board, Patent and Trademark Office, Dennis Crouch, Akorn, Akorn Inc, Wake Forest L Rev, John Deere Co

United States: Supreme Court Denies Cert On Tribal Sovereign Immunity Question - Jones Day

On April 15, the Supreme Court denied a petition for certiorari filed by Saint Regis Mohawk Tribe, leaving intact the Federal Circuit's ruling that tribal sovereign immunity does not apply in inter partes reviews.
Tags: News, Supreme Court, United States, Federal Circuit, Saint Regis Mohawk Tribe

Peter v. NantKwest: Attorney Fees for Challenging PTO Decisions

Peter v. NantKwest, Inc., No. 18-801 (Supreme Court 2019) I believe there are many situations where it makes sense to award reasonable costs and attorney fees to the prevailing party.  It goes further to ensure that the injured party is ‘made whole’ and it also discourages folks to push forward with weak arguments. That said, I don’t like 35 U.S.C. 145. That provision awards the USPTO “all the expenses of the proceedings” regardless of whether the agency wins or loses.  The provision works to di...
Tags: Supreme Court, Law, Uspto, Francisco, Patent, Peter, PTO, Federal Circuit, United States Patent and Trademark Office, NantKwest, Iancu, NantKwest Inc, Noel Francisco, Irell, NantKwest However, Laura Peter

If you want it, Claim it

by Dennis Crouch Two prosecutions lessons from this case: (1) if you are concerned about obviousness, be careful of broadening statements in the specification; (2) if you want to claim a particular action, particularly claim it.   BTG Int’l. Ltd. v. Amneal Pharms. LLC (Fed. Cir. 2019) [BTG_Decision] This is a consolidated appeal from four different district court cases and five different inter partes review cases.  All the cases focus on BTG’s U.S. Patent No. 8,822,438 (hormone based chemotherap...
Tags: Law, BTG, Patent, District Court, PTO, Federal Circuit, Dennis Crouch, PTAB, BTG Int ' l Ltd, Amneal Pharms LLC Fed

Although Motivated to Try; No Reasonable Expectation of Success

by Dennis Crouch Novartis Pharm. v. West-Ward Pharm. (Fed. Cir. 2019) West-Ward (now known as Hikma) is seeking to make and sell a generic version of the Novartis chemotherapy drug everolimus (Afinitor).  After filing its Abbreviated New Drug Application (ANDA), Novartis sued, alleging infringement of its U.S. Patent 8,410,131. Following a bench trial, the district court sided with the patentee – finding the claims enforceable – not obvious. Novartis Pharm. Corp. v. West-Ward Pharm. Int’l Ltd.,...
Tags: Law, Novartis, Patent, Fed, Hikma, RCC, Pfizer Inc, Procter Gamble Co, Federal Circuit, Dennis Crouch, Apotex Inc, Teva Pharm USA Inc, PHOSITA, Novartis Pharm Corp, West Ward, West Ward Pharm Int ' l Ltd

Who needs Proof of Actual Confusion? Not a TM Plaintiff

by Dennis Crouch Swagway v Segway and ITC (Fed. Cir. 2019) The case caption suggests the cause of action – trademark infringement.  Segway complained to the ITC, and the ITC agreed that Swagway’s self-balancing hoverboard products infringe — although it found no infringement for Swagway’s use of SwagTron.  On appeal, the Federal Circuit has affirmed. The fundamental question in trademark infringement cases is whether “consumers would likely confuse the alleged infringer’s mark with the asserted...
Tags: Law, Commission, DuPont, Segway, Itc, Patent, Fed, Swagway, Federal Circuit, The Commission, Dennis Crouch Swagway, ITC Fed, See In re Guild Mortg Co

Federal Circuit: “The Doctrine of Equivalents Applies ONLY in Exceptional Cases”

Amgen Inc. v. Sandoz Inc. (Fed. Cir. 2019) Amgen sued Sandoz for infringing its U.S. Patents 6,162,427 and 8,940,878. Both patents relate to Amgen’s biologic products (filgrastim and pefilgrastim) used as treatments for neutropenia. The lawsuit here is unique because it was filed under Biologics Price Competition and Innovation Act (“BPCIA”).  As an add-on to Hatch-Waxman, the BPCIA defines submission of an FDA biosimilar application (aBLA) as a form of patent infringement.  See 35 U.S.C. § 271(...
Tags: Law, Fda, Patent, Fed, Amgen, Hatch Waxman, Federal Circuit, Amgen Inc, Sandoz, Sandoz Inc Fed, Duncan Parking Techs Inc, Filgrastim Pegfilgrastim, IPS Grp Inc

United States: Oracle v. Google - An Epic Software Battle - Oblon, McClelland, Maier & Neustadt, L.L.P

Google has petitioned the U.S. Supreme Court for certiorari in a copyright infringement suit brought by Oracle after the Federal Circuit twice ruled in favor of Oracle.
Tags: Google, News, United States, Oracle, U S Supreme Court, Federal Circuit, Oblon McClelland Maier, Neustadt L L P. Google

102(f), Where have you Gone?

Endo v. Actavis (Fed. Cir. 2019) Obviousness is a tough issue to appeal because its flexible fact-heavy analysis lends itself to giving deference to the fact-finder.  This is a case-in-point. Endo is the exclusive licensee of Mallinckrodt’s U.S. Patent 8,871,779 covering a form of the opioid oxymorphone.  Claim 1 is directed to a highly pure form of “oxymorphone” with “less than 0.001% of 14-hydroxymorphinone.” Actavis argued that the claims were invalid as obvious.  However, following a bench t...
Tags: Law, Fda, Delaware, AIA, Patent, Federal Circuit, Stoll, Wallach, Endo, Mallinckrodt, Clevenger, Actavis, Actavis Fed

United States: Communications With, And Criticism By, FDA In Analyzing Obviousness - Jones Day

The Federal Circuit rejected Neptune's argument.
Tags: News, United States, Fda, Neptune, Federal Circuit

United States: Federal Circuit Scrutinizes Written Description In Provisional Application - Foley & Lardner

Provisional applications tempt stakeholders with the possibility of securing a filing date on an expedited basis and limited budget,
Tags: News, United States, Foley, Federal Circuit, Lardner

United States: Federal Circuit Holds That Claims Directed To A Specific Method Of Treatment For Specific Patients Using A Specific Compound At Specific Doses To Achieve A Specific Outcome Satisfy 35 U.S.C. §101 - Khurana and Khurana

On March 28, 2019, the Court of Appeals for the Federal Circuit (CAFC) issued an opinion in Endo Pharmaceuticals Inc. v. Teva Pharmaceuticals USA, Inc., reversing a decision by the United States
Tags: News, United States, Federal Circuit, Teva Pharmaceuticals USA Inc, Endo Pharmaceuticals Inc, Court of Appeals for the Federal Circuit CAFC, Khurana

United States: Developing Optional Feature Did Not Disrupt "Diligent" Reduction To Practice - Finnegan, Henderson, Farabow, Garrett & Dunner, LLP

In ATI Technologies ULC v. Iancu, Nos. 2016-2222, -2406, -2608 (Fed. Cir. Apr. 19, 2019), the Federal Circuit reversed the Board's decision that certain claims of ATI Technologies'
Tags: News, United States, Board, Federal Circuit, Fed Cir, Finnegan Henderson Farabow Garrett, Dunner LLP, Iancu Nos, ATI Technologies ULC

Unfair Competition at the USITC

Amarin Pharma, Inc. v. International Trade Commission (Fed. Cir. 2019) In 2017, Amarin filed a Section 337 complaint at the ITC — alleging unfair competition against several dietary supplement importers.  Amarin sells a prescription drug containing a particular omega-3 fatty acid known as EPA (eicosapentaenoic acid). A number of supplement companies started importing synthetic omega-3 fatty acids and Amarin looked for a way to shut them down.  Although Amarin’s formulation is patented, the impo...
Tags: Law, United States, Fda, Epa, Itc, Patent, Fdca, Hughes, Federal Circuit, Coca Cola Co, Wallach, Prost, The Commission, USITC, Amarin, International Trade Commission Fed

United States: Understanding Antedating Of A Prior Art Reference For A Patent - Mintz

The Federal Circuit's decision in ATI Technologies ULC v. Iancu (April 11, 2019) highlights the proper standard to use in evaluating whether a claimed invention was reduced to practice before
Tags: News, United States, Federal Circuit, Mintz, Iancu, ATI Technologies ULC

United States: Omega Patents Showcases The Need To Specifically Identify Prior Art And The Bases Of Willful Infringement - Finnegan, Henderson, Farabow, Garrett & Dunner, LLP

In Omega Patents, LLC v. CalAmp Corporation, No. 2018-1309 (Fed. Cir. April 8, 2019), the Federal Circuit affirmed a finding that the asserted claims of four patents are not invalid,
Tags: News, United States, Federal Circuit, Fed Cir, Omega Patents LLC, Finnegan Henderson Farabow Garrett, Dunner LLP, CalAmp Corporation

United States: Forum Selection Clause May Preclude PTAB Proceedings - Jones Day

The Federal Circuit recently affirmed a preliminary injunction barring PTAB proceedings in view of a forum selection clause.
Tags: News, United States, Federal Circuit, PTAB

TTI v. IBG: Federal Circuit clarifies meaning of “technical solution to a technical problem”

Trading Technologies International, Inc. v. IBG LLC, Interactive Brokers, LLC (Fed. Cir. April 19, 2019).  Panel: Moore (author), Mayer, and Linn  Download TTI v IBG (April 18, 2019) Trading Technologies International, Inc. v. IBG LLC, Interactive Brokers, LLC (Fed. Cir. April 30, 2019), Panel: Moore (author), Clevenger and Wallach.  Download TTI v. IBG (April 30, 2019) This is a long post since it covers two opinions addressing Covered Business Method (CBM) review for business method claims, pl...
Tags: Apple, Law, Uspto, Patent, Sap, Alice, Fed, Board, Moore, Reyna, Mayer, Federal Circuit, Wallach, CBM, Clevenger, Linn

In re Morinville: Biz.Orgs. Not Patent Eligible

In re Paul Morinville (Fed. Cir. 2019) Morinville is an independent inventor and inventor-advocate.  In the photo to the right, see Morinville burning one of his patent documents. He is also a regular contributor to Gene Quinn’s IPWatchdog site. In this case, Morinville is attempting to patent a method of reorganizing a business hierarchy into a more centralized functional hierarchy.  Example: Move from Fig. 1 to Fig. 2. Operationally, the claims require association of “roles” with each position...
Tags: Law, Patent, Alice, Newman, PTO, Federal Circuit, Gene Quinn, PTAB, Morinville, Paul Morinville Fed

United States: PTAB: Federal Circuit's Click-To-Call Holding Applies To Statutory Bar Under 35 U.S.C. § 315(a) - Akin Gump Strauss Hauer & Feld LLP

The Patent Trial and Appeal Board (the "Board") vacated its institution decision and terminated an inter partes review (IPR) filed by Mylan Pharmaceuticals, Inc.
Tags: News, United States, Federal Circuit, IPR, Gump Strauss Hauer, Feld LLP, Appeal Board the Board

United States: Federal Circuit Holds That PTAB Applied "Too Rigid Standard" In Determining Whether Inventor Was Diligent In Reducing Invention To Practice - Akin Gump Strauss Hauer & Feld LLP

The Federal Circuit reversed an inter partes review (IPR) decision holding that the Patent Trial and Appeal Board (the "Board")
Tags: News, United States, Federal Circuit, IPR, Gump Strauss Hauer, Feld LLP

Eligibility Cannot be Raised in IPR Appeal

Neptune Generics v. Eli Lilly (Fed. Cir. 2019)Mylan Labs v. Eli Lilly (Fed. Cir. 2019) This appeal combines twelve different inter partes review (IPR) proceedings. In each case, the PTAB Board sided with the patentee — holding that the claims of Lilly’s U.S. Patent 7,772,209 were not proven invalid.  On appeal, the Federal Circuit has affirmed. Premetrexed disodium is a drug treatment for malignant mesothelioma that works as a folate antagonist — blocking cell usage of folic acid necessary for r...
Tags: Law, Court, Fda, Patent, Fed, Lilly, Federal Circuit, IPR, PTAB, Eli Lilly Fed, PTAB Board, Neptune Generics, Eli Lilly Fed Cir, Mylan Labs

United States: The Federal Circuit Deals Another Blow To Diagnostic Method Patents - BakerHostetler

In another setback for diagnostic method patents, the Federal Circuit rejected efforts by patent owner/appellant Cleveland Clinic.
Tags: News, United States, Federal Circuit

United States: Claims Reciting Specific Method For Treating Specific Patients Found Patent Eligible - Finnegan, Henderson, Farabow, Garrett & Dunner, LLP

In Endo Pharmaceuticals Inc. v. Teva Pharmaceuticals USA, Inc., No. 2017-1240 (Fed. Cir. Mar. 28, 2019), the Federal Circuit reversed a decision of invalidity under 35 U.S.C. § 101, holding instead that the method of treatment claims were patent eligible for claiming an application of a natural relationship and not the natural relationship itself.
Tags: News, United States, Federal Circuit, Teva Pharmaceuticals USA Inc, Endo Pharmaceuticals Inc, Fed Cir, Finnegan Henderson Farabow Garrett, Dunner LLP

United States: The Federal Circuit Addresses Who Has Standing To Challenge Commerce Scope Rulings - Akin Gump Strauss Hauer & Feld LLP

Let's say you import widgets that potentially fall within the scope of an antidumping or countervailing duty orde
Tags: News, United States, Federal Circuit, Gump Strauss Hauer, Feld LLP, Challenge Commerce Scope Rulings Akin

My new mark: “TRADEMARK 2.0”

by Dennis Crouch VersaTop v. Georgia Expo (Fed. Cir. 2019) First of all — holy decimal! VersaTop owns the registered trademark “2.0” as it relates to the company’s portable trade show display booths and stages. VersaTop sued its competitor Georgia Expo for its use of the “2.0” mark along with a longer version “PIPE & DRAPE 2.0.” These companies compete in the “pipe & drape” market, and so the only unique or distinctive part of the mark is the “2.0.”  In my mind, this is like claiming ownership ...
Tags: Law, Georgia, Patent, Federal Circuit, Dennis Crouch VersaTop, Georgia Expo Fed, VersaTop, Georgia Expo, VersaTop See Georgia Expo, Federal Circuit Georgia Expo