Gibbons Law Alert

Gibbons Law Alert

Tagged: Patent

PTAB Tackles Patentability Issues After New Guidelines

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Posted in Patent

On March 4, 2019

Recently, the United States Patent and Trade Office (USPTO) enacted new guidelines to “clarify” the patentability standard and analyses. The USPTO stated that it had undertaken this clarification because many court decisions on the issue of patentability of method type patents in the computer arena had become very difficult for examiners to understand and apply in a predictive manner. As such, there were concerns that the examining corp was not reaching consistent examination and prosecution results. Following the enactment of the new guidelines, a Patent Trial and Appeal Board (PTAB) panel reviewed four patents relating to methods of electronically storing financial documents. The patents involved were US Patents 6,963,866, 7,552,118, 7,836,067 and 9,141,612 belonging to Mirror Imaging LLC (Mirror). Those patents were challenged by Fidelity Information Services LLC (Fidelity) because Fidelity asserted that only abstract ideas were involved, thereby being unpatentable subject matter under section 101. In fact, in a previous PTAB challenge on the same four patents, the PTAB actually opined that the Mirror patents were likely invalid. At the hearing, the questioning by the administrative patent judges centered around whether the abstract ideas are “integrated into a practical application.” Answers to the question of the practical application revolved around the elimination of manually arranging and documenting financial information, as well as the improvement...

Stronger Patents Act Introduced in House of Representatives

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Posted in Biotech / Patent / Pharmaceuticals

On April 30, 2018

On April 3, 2018, Representatives Steve Stivers and Bill Foster introduced H.R. 5340, entitled Support Technology and Research for Our Nation’s Growth and Economic Resilience (STRONGER) Patents Act implementation. This legislation parallels legislation introduced by Senators Chris Coons and Tom Cotton last year. This bill was introduced because its sponsors believe that the U.S. has driven innovation away with issues that particularly relate to the America Invents Act (AIA). The bill has the following portions in Section 102: Section A – Requires the Patent Trial and Appeal Board (PTAB) to use the same standard as District Courts when deciding what inventions the patent covers – claim construction. Currently, the PTAB uses the broadest reasonable interpretation standard and does not consider all of the evidence of a valid patent claim. Section B – Requires the PTAB to use the same burden of proof – clear and convincing evidence – that is used by District Courts. Right now, the PTAB uses the preponderance of the evidence standard. Section C – Ensures that a petitioner has a business or financial reason to bring the case before the PTAB. This is in direct response to the stockholder suits that have been brought in the PTAB against certain companies. Section D – Authorizes the United States Patent and Trademark Office...

Recent Federal Circuit Decision Illustrates Challenges in Proving Obviousness

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Posted in Patent / USPTO

On January 11, 2018

This non-precedential decision is of interest not for any new exposition of patent law but merely as a convenient marker to demonstrate how far the pendulum has swung away from the recent loose standards allowing disparate references to be combined to support an obvious rejection of a patent claim. In the district court below, a bench trial on a Hatch-Waxman infringement suit brought against defendants Dr. Reddy’s and Teva by Genzyme and Sanofi resulted in a decision for the plaintiffs. The court held that the defendants had failed to prove that the sole claim in issue (claim 19) was invalid for obviousness and as infringement was not disputed the verdict of infringement was entered. The technology in the case related to a method for mobilizing and harvesting stem cells in a subject by first treating the subject with G-CSF and then with plerixafor thereby increasing the number of stem cells available for harvesting from the blood for use in treating leukemia by transplantation. The defendants had relied on a combination of references to effectuate an obviousness defense. In a first combination, a paper by Hendrix et al. was cited to show that plerixafor produced increased white blood cells (WBCs) in the circulation. The authors suggested that the action of this agent may cause “release of...

Constitutionality of IPRs and PGPs

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Posted in Biotech / Patent / Pharmaceuticals / USPTO

On September 5, 2017

Recently, the Supreme Court granted certiorari in Oil States Energy Services v. Green’s Energy Group, Case 16-712 that may have implications on the constitutionality of America Invents Act (AIA) patent review proceedings such as Inter Partes Review (IPRs) and Post Grant Proceedings (PGPs). The case being reviewed involved a fracking patent granted to Oil States. Green’s Energy petitioned to have the Oil States patent reviewed in an IPR (6,179,053). The IPR resulted in the Oil States patent claims being held unpatentable. But, upon review at the Federal Circuit, Oil States challenged the decision and added that IPRs were not allowed under Article III and the Seventh Amendment of the Constitution. In particular, the Oil States argument advanced that the patents must be tried before a jury because invalidity of patent claims traditionally have been a jury issue before a court of competent jurisdiction. The Oil States argument then indicated that Congress could not delegate that right to an administrative agency. The Federal Circuit affirmed the USPTO’s IPR decision of invalidity, without the issuance of an opinion. Following that decision, Oil States petitioned for certiorari to the Supreme Court regarding three issues. The one issue was whether IPR was in violation of the Constitution’s Article III provision since there was no jury trial adjudication of the...

The United States Patent Trial and Appeal Board Determines That a Civil Action Dismissed Without Prejudice Does Not Bar a Petition for Inter Partes Review Under 35 U.S.C. § 315 (a)(1)

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Posted in Patent

On February 10, 2014

We previously reported on February 6, 2014, that the United States Patent Trial and Appeal Board (“PTAB”) determined that a “complaint alleging infringement of the patent” does not include arbitration proceedings for purposes of triggering the time bar under 35 U.S.C. § 315(b). This week, the PTAB also determined what constitutes a bar to filing an inter partes review petition under 35 U.S.C. § 315 (a)(1); specifically whether a civil action filed before a petition for an inter partes review that is subsequently dismissed without prejudice is a bar to the petition under 35 U.S.C. § 315 (a)(1). The PTAB held that it is not.

Complaint Means Complaint For Purposes of Triggering the Time Bar Under 35 U.S.C. § 315(b)

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Posted in Patent

On February 6, 2014

The United States Patent Trial and Appeal Board (“PTAB”) recently interpreted what constitutes a “trigger” under 35 U.S.C. § 315(b). The PTAB concluded that under the statute, a “complaint alleging infringement of the patent” does not include arbitration proceedings. Amkor Tech., Inc. (“Amkor”) and Tessera, Inc. (“Tessera”) executed a license agreement in 1996 (“Agreement”) under which Amkor had rights to use Tessera technology covered by U.S. Patent No. 6,046,076 (“the ‘076 patent”) in exchange for the payment of royalties. In 2009, a dispute arose regarding the payment of royalties under the Agreement. Amkor availed itself to the arbitration provision in the Agreement and initiated an arbitration proceeding seeking declaratory relief that it was fully compliant with the terms of the Agreement. In its answer to Amkor’s arbitration request, Tessera included counterclaims for patent infringement. In July 2012, the arbitration tribunal found that Amkor did fail to pay royalties on certain products covered by claims of the ‘076 patent.

Federal Circuit Fires Shot Across Congress’s Bow: Redefines Standard for Finding an Exceptional Case and Awarding Attorneys’ Fees

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Posted in Patent

On January 17, 2014

In Kilopass Tech., Inc. v. Sidense, Corp., No. 13-1193, 2013 U.S. App. LEXIS 25671 (Fed. Circ., Dec. 26, 2013), the Court of Appeals for the Federal Circuit recently relaxed the standard for finding “an exceptional case” to justify attorneys’ fees in patent infringement actions. For IP practitioners, this case highlights the current state of the law regarding the necessary showing of bad faith to justify an award of attorneys’ fees in a patent infringement suit.

IP Practitioners — Are You Ready For 2014?

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Posted in Licensing

On December 31, 2013

Like 2013, 2014 promises to be an exciting year for intellectual property law. The United States Supreme Court has at least two noteworthy intellectual property cases slated for the new year. The United States Supreme Court has at least two noteworthy intellectual property cases slated for the new year. As we reported, on December 6, 2013, the Supreme Court granted certiorari in Alice Corp. Pty. Ltd. v. CLS Bank Int’l. et al., 13-298. The Alice case concerns the patentability of a computer software program used to facilitate financial transactions. Sitting en banc, the Federal Circuit split 5-5 to affirm the district court’s decision and found Alice’s patents ineligible for protection under 35 U.S.C. § 101, a fractured opinion that left lawyers and their clients uncertain about which types of software patents are patentable.

Slicing and Dicing the Patent Damages Royalty Base

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Posted in Patent

On December 23, 2013

Two recent District Court decisions provide IP practitioners with guidance about royalty base in patent damages calculations. Last week, in Inventio AG v. Thyssenkrupp Elevator Americas Corp., et. al., 1-08-cv-00874 (D. Del. Dec. 13, 2013), Judge Andrews denied defendants’ motion for summary judgment and motion to strike that plaintiff improperly calculated damages. The defendants argued that plaintiff’s expert incorrectly included revenue from defendants’ service contracts in the damages calculation. However, the court determined that the expert relied on the service contracts to increase the royalty rate not the base. Thus, the court denied the motion. This case provides support that revenue generated outside of the royalty base can still be used to increase the royalty rate, thus potentially achieving higher damages.

Momentum Builds on Patent Litigation Reform…Goodlatte Bill Passes House

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Posted in Patent

On December 13, 2013

As we previously reported, House Judiciary Committee Chairman Bob Goodlatte (R-VA) recently introduced H.R. 3309, entitled “Innovation Act,” (hereafter, “the Goodlatte Bill”). After varying support and challenges to the bill, as well as a competing Senate version, on December 5, 2013, the House passed an amended version of the Goodlatte Bill with a bi-partisan vote of 325-91.

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