Gibbons Law Alert

Gibbons Law Alert

Tagged: Patent

Hoping to Understand the Troll: the FTC Seeks Public Comment on its Proposed Information Requests

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Posted in Patent

On October 7, 2013

On September 27, the Federal Trade Commission (“FTC”), announced that it had unanimously voted to seek public comments on its proposed requests for information from selected Patent Assertion Entities (“PAEs”), typically referred to as “patent trolls.” The FTC’s proposed 6(b) order seeks information from approximately 25 yet-to-be-named PAEs in the wireless communications sector regarding among other things, their “patent acquisition, litigation, and licensing practices.”

ANDA Product Controls Infringement Analysis In Hatch-Waxman Framework

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Posted in Patent

On October 3, 2013

Last week, the Federal Circuit, in Sunovion Pharm. v. Teva Pharm. USA, et al., addressed the appropriate infringement analysis in the context of Hatch-Waxman (aka “ANDA”) litigation. It held: Although no traditional patent infringement [occurs] until a patented product is made, used, or sold, under the Hatch-Waxman framework, the filing of an ANDA itself constitutes a technical infringement for jurisdictional purposes. But the ultimate infringement question is determined by traditional patent law principles and, if a product that an ANDA applicant is asking the FDA to approve for sale falls within the scope of an issued patent, a judgment of infringement must necessarily ensue.

GAO Report Fails to Make it “Open Season” on Trolls

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Posted in Patent

On September 4, 2013

We have reported frequently in the past on IP law developments relating to so-called Nonpracticing Entities, or NPEs, including the Leahy-Smith America Invents Act’s mandate that the Government Accounting Office (“GAO”) conduct a study on the consequences of patent litigation by NPEs. On August 22, the GAO issued its 54-page Report, “Intellectual Property: Assessing Factors That Affect Patent Infringement Litigation Could Help Improve Patent Quality” (hereafter, “Report”). In view of the GAO’s mandate, some of the Report’s findings are surprising.

Cancellation of Claims by USPTO During Reexam is Binding in Pending District Court Infringement Litigation

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Posted in Patent

On August 26, 2013

Last month, the Federal Circuit addressed the question of “whether, under the reexamination statute, the cancellation of claims by the PTO is binding in pending district court infringement litigation.” Fresenius USA, Inc. v. Baxter Int’l, Inc., 2013 U.S. App. LEXIS 13484, at *13 (Fed. Cir. July 2, 2013). The Federal Circuit interpreted the reexamination statute to have a binding effect on concurrent litigation, and thus terminated a pending litigation where the same patent claims were cancelled during reexamination. Id. at *43. Accordingly here, the Federal Circuit held that the PTO’s invalidity decisions trump the prior district court ruling.

The Texas Two Step, A Tale of Two Texas District Courts’ Differing Views Concerning Stay Requests Pending Inter Partes Review

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Posted in Patent

On August 16, 2013

The District Courts for the Southern and Western Districts of Texas appear to have taken different positions with regard to estoppel in an inter partes review (“IPR”) context, in e-Watch v. FLIR Systems, Case No. 4-13-00638 (S.D. Texas) and e-Watch v. ACTi Corp., Case No. 5-12-cv-00695, (W.D. Texas), respectively. The apparent split arose when the courts were confronted with motions to stay their respective patent infringement lawsuits pending disposition of a petition for IPR brought by another defendant in a related patent lawsuit, e-Watch v. Mobotix Corp., Case No. 5-12-cv-00492, (W.D. Texas). Interestingly, the petition for IPR has not yet been decided by the Patent Trial and Appeal Board (PTAB) of the U.S. Patent & Trademark Office.

Resuscitating Therasense? CD Cal Court Finds Inequitable Conduct by Patentee

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Posted in Patent

On August 14, 2013

IP practitioners have witnessed the dearth of inequitable conduct findings in the wake of Therasense, Inc. v. Becton, Dickinson & Co., 649 F.3d 1276 (Fed. Cir. 2011). There, the Federal Circuit reiterated en banc that to establish unenforceability for inequitable conduct before the United States Patent and Trademark Office (“PTO”), a party must prove by clear and convincing evidence that (1) information material to patentability was withheld from the PTO, or material misinformation was provided to the PTO, and that such act was done (2) with the intent to deceive or mislead. A few months ago, we reported on a case that continued to signal the death knell of this formerly ubiquitous defense, and thus begging the present question: is inequitable conduct even alive anymore? Of course it is.

Third Circuit District Courts Take Aim at Non-Patent Eligible Patents Under § 101

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Posted in Patent

On August 8, 2013

In a pair of recent decisions issued just days apart, the District of Delaware and the District of New Jersey have found patents relating to online transaction guaranties and financial services to be non-patent eligible pursuant to 35 U.S.C. § 101. Practitioners may wish to take heed …. In buySafe, Inc. v. Google, Inc., C.A. No. 11-1282-LPS, Dkt. 69 (D. Del. July 29, 2013) (Stark, J.), buySafe asserted its online transaction guaranty patent, and Google moved for judgment on the pleadings pursuant to Rule 12(c). Ultimately, Judge Stark of the Delaware District Court granted defendant’s motion on the grounds that the patent-in-suit was invalid under 35 U.S.C. § 101 because it is directed to non-patent-eligible subject matter. In so ruling, the Court noted that on the face of the patent, it described that the entire inventive process could be performed by a human.

CAFC Council Rescinds Model Order ….

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Posted in Patent

On August 6, 2013

We previously reported that the Federal Circuit Advisory Council (“the CAFC Council”) recently approved a “Model Order Limiting Excess Patent Claims and Prior Art” that set default numerical limits on the number of asserted patent claims and prior art references. Prior to this, we reported in October 2011, that Chief Judge Randall Rader of the Federal Circuit had announced that the CAFC Council had adopted a Model Order to streamline and reduce e-discovery costs.

Negative Claim Leads to “Udder” Failure

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Posted in Patent

On July 30, 2013

Judge Rich gave us the adage, “the name of the game is the claim.” Given the number of cases issued by the Federal Circuit on written description, perhaps the adage should be revised as “the name of the game is the claim – supported by the specification.” In In Re Bimeda Research & Development Ltd., the Federal Circuit issued another decision requiring the entire scope of the claims to be supported by the disclosure. While this is nothing new in patent law, the claim at issue is a negative claim that expressly excluded an element. The original claim was directed to a prophylactic method to treat infections in cow mammary glands by providing a physical barrier to the teat canal.

Federal Circuit Advisory Council Gives Nod to Limited Claims and Prior Art in Patent Suits

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Posted in Patent

On July 23, 2013

IP practitioners on both sides of the “v.” should take heed that the Federal Circuit Advisory Council (“the CAFC Council”) has unanimously approved a “Model Order Limiting Excess Patent Claims and Prior Art.” Citing a “[l]ack of discipline” by the asserting party, the CAFC Council recounted that the resulting “superfluous claims and prior art” have contributed to increasing the expense and burden of patent litigation. And rather than dealing with the number of claims and prior art references on an ad hoc basis, as is presently done, the aspirational Model Order sets default numerical limits on the number of asserted patent claims and prior art references.

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