Patent Litigation

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Exceptional Cases & The PTAB

As discussed last month, as PTAB proceedings conclude at the Federal Circuit and return to the district courts, courts are finding themselves faced with new questions on estoppel. Another question that has been recently posed for successful PTAB challenges is whether, and to what extent, a prevailing party in an “exceptional” case (35 U.S.C. § 285) can obtain fees for work done at the PTAB?

Once again, the answer may depend on the particular district court.
Continue Reading Recoverability of PTAB Fees in Exceptional Cases

“Known or Used” Not a Side-Step to PTAB Estoppel

Keeping with yesterday’s discussion of Patent Trial & Appeal Board (PTAB) estoppel in the district courts, a decision from earlier this year on yet another aspect of this estoppel has been recalibrated. Back in January, the Central District of California explained in The California Institute of Technology v. Broadcom Limited, et al., that IPR estoppel (35 U.S.C. § 315(e)(2)) applies where the same IPR reference is later raised in court under the “known or used” prong of pre-AIA 35 U.S.C. § 102(a) instead of as a “patent or printed publication” as done in the IPR.

Upon Motion for reconsideration, the Court has agreed that it’s earlier Order required further clarification.
Continue Reading Courts Continue to Explore Reach of PTAB Estoppel & Standards for Assessing Exceptions

User Manuals & Corresponding Product Estoppel under 315(e)(2)

District courts continue to grapple with whether or not physical products described by prior art publications of an earlier Patent Trial & Appeal Board (PTAB) trial are subject to estoppel. That is, by virtue of utilizing product manuals in the earlier PTAB proceeding, whether the actual products described “were raised, or reasonably could have been raised” under 35 U.S.C. § 315(e)(2).

The view of some districts has been that it does not, unless the Patent Owner (estoppel proponent) demonstrates that the product described in the previously examined manual is technically superior to the manual teachings. Yet, other districts are adopting an absolute prohibition..
Continue Reading Physical Counterparts of PTAB Utilized Product Manuals Estopped in Some Districts

Dodocase May Encourage New NDA Strategies

As discussed a few weeks back, licensors have begun to seek cover from the PTAB via forum selection clauses in their licensing agreements. In a recent district court opinion, this strategy was explored as language of a non-disclosure agreement (NDA) between parties pre-litigation.

Left unchecked, the holding in Dodocase could have a chilling effect on pre-suit negotiations as well.
Continue Reading Licensors Attempt to Leverage NDAs to Avert PTAB Review

Term Act Seeks to Add New Bio/Pharma Litigation Hurdle

It was easy to miss last week’s introduction of a new patent reform bill on the House side entitled: “Terminating the Extension of Rights Misappropriated Act of 2019” with so much focus on the Senate’s patent subject matter eligibility hearings.  The “Term Act of 2019” is described as addressing “the rising cost of prescription drugs by significantly limiting the process known as “evergreening,” whereby pharmaceutical companies make minor changes to a drug and file for a new patent on those trivial changes in order to extend their exclusivity and maintain high prices.”

Under the heading “Prevention of Double Patenting” the bill seeks to add a special presumption for Orange Book patents directed to a same drug/biological product.
Continue Reading Bio/Pharma to Face Second Double Patenting Hurdle?

Legislation & Continued Judicial Feedback

There have been a number of developments in the courts, at the USPTO, and on the legislative side over the past few months. These developments, some of which have been discussed here at length — such as the 101 legislative effort — will continue to drive new patent strategies and…

Interactions During Preliminary Proceeding Can Doom PTAB Filing

Since last summer’s decisions in Applications in Internet Time, LLC v. RPX Corp., and Worlds Inc. v. Bungie, Inc., the Patent Trial & Appeal Board (PTAB) has seen RPI/privity disputes spring back to the fore. The renewed scrutiny presents challenges for petitioners participating in joint defense groups or those obligated under indemnification agreements.

A precedential decision issued today by the Federal Circuit highlights the danger of new RPI and privy interactions post-petition filing. 
Continue Reading Post-filing Conduct Impacts PTAB RPI/Privity Determinations

PatentsPostGrant.com June Webinar

June 19 marks the 5th anniversary of the Supreme Court’s impactful decision in Alice Corp. v. CLS Bank, which dramatically changed the analysis of patentable subject matter in both patent prosecution and patent litigation.

Currently, a bipartisan group of Congressional members introduced what could be the first revisions to Section 101…

Plan Ahead for 101 Change

With the Senate conducting marathon hearings on the subject of patentable subject matter this week (i.e., 35 U.S.C. § 101), and with significant effort to date to move legislation forward, it appears that 101 change is coming — and soon.

Given the imminent legislative reset, what should you do if your patent is invalidated by the Court’s under the current 101 regime?
Continue Reading Preparing for 101 Change: Preserving Future Arguments