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MAKING HEADLINES IN THE POST-GRANT WORLD

October 10, 2017

In re Aqua Products: In a Divided Decision, En Banc Federal Circuit Holds That Petitioner Must Prove All Propositions of Unpatentability, Including for Amended Claims

Fitzpatrick Case Update On October 4, 2017, a divided en banc Federal Circuit issued several opinions addressing the burden of proof pertaining to a motion to amend claims in inter partes review (“IPR”) proceedings.  While none of the opinions garnered a full majority in all respects, the leading opinion authored by Judge O’Malley held that “in the absence of any…

September 21, 2017

Federal Circuit Clarifies Requirements For Determining “Regular And Established Place Of Business” Under Patent Venue Statute

Fitzpatrick Case Update September 21, 2017 On September 21, 2017, a Federal Circuit panel rejected an Eastern District of Texas judge’s proposed four-factor test for determining whether venue is proper over a defendant in a patent infringement action under the “regular and established place of business” prong of the United States patent venue statute.  In place of the Eastern District…

August 15, 2017

Federal Circuit Holds That Memory System Patent Is Directed To Patent-Eligible “Improvement To Computer Functionality”

Fitzpatrick Case Update August 15, 2017 On August 15, 2017, the Federal Circuit, in a 2-1 decision in Visual Memory LLC v. NVIDIA Corporation, Appeal No. 16-2254, reversed a district court’s determination that Visual Memory’s U.S. Patent No. 5,953,740 was invalid because it was directed to a patent-ineligible abstract idea.  The Federal Circuit majority instead concluded that the ’740 patent…

June 12, 2017

Fitzpatrick Research Reveals Certain Drug Patents Survive IPR Proceedings At A Higher Rate than Patents for Other Technologies

Contact: Linda Ficano Fitzpatrick, Cella, Harper & Scinto (212) 218-2284 lficano@fchs.com Fitzpatrick Research Reveals Certain Drug Patents Survive IPR Proceedings At A Higher Rate than Patents for Other Technologies New York, NY—June 12, 2017—Fitzpatrick, Cella, Harper & Scinto, one of the world’s leading intellectual property law firms, today released original research revealing that certain pharmaceutical patents survive challenges at the…

Drug Patents May Fare Better Than Other Technologies In IPR Proceedings

BiologicsHQ Article June 12, 2017 On March 31, 2017, the United States Patent Trial and Appeal Board (“PTAB”) released updated statistics showing the fate of resolved inter partes review (“IPR”) proceedings. These statistics show that a total of 4,563 IPR petitions were resolved as of March 31, 2017 including 1,577 final written decisions. In 81% of these final written decisions…

May 10, 2017

Covered Business Method Gamesmanship After Secure Axcess v. PNC Bank

Westlaw Journal Intellectual Property May 10, 2017 Earlier this year, the U.S. Court of Appeals for the Federal Circuit issued its opinion in Secure Axcess LLC v. PNC Bank, 848 F.3d 1370 (Fed. Cir. 2017). This decision fundamentally changed the requirements for the institution of a review for covered business method patents.

February 01, 2017

Federal Circuit Pushes Back on Procedural Issues

Intellectual Property Magazine February 2017 While often affirming the Patent Trial and Appeal Board’s (PTAB) substantive decisions on patentability in inter partes review (IPR) proceedings, the Court of Appeals for the Federal Circuit has not hesitated to push back on important procedural issues. Most notably, the Federal Circuit has admonished failures to provide adequate notice to parties concerning the ultimate…

January 31, 2017

Fitzpatrick Sponsors AIPLA’s 2017 Mid-Winter Meeting

American Intellectual Property Law Association February 1-4, 2017 Fitzpatrick is sponsoring the Women in IP Law Breakfast at the AIPLA 2017 Mid-Winter Meeting being held at the Ft. Lauderdale Marriott Harbor Beach Resort & Spa in Florida on February 1-4. Anthony Zupcic is speaking on a panel entitled “Critical Career Considerations: A New Recipe for Success.”

January 19, 2017

Supreme Court Hears Oral Argument in Lee v. Tam

Fitzpatrick Case Update January 19, 2017 On January 18, 2017, the United States Supreme Court heard oral argument in Michelle K. Lee, Director, United States Patent and Trademark Office v. Simon Shiao Tam, No. 15-1293.  The decision in this case will address whether Section 2(a) of the Lanham Act, which permits the United States Patent and Trademark Office (USPTO) to…

January 12, 2017

Federal Circuit Affirms Finding That Teva And Other Drug Makers Would Induce Infringement Of Eli Lilly Method Patent Where Drug Makers’ Product Labels Instruct Doctors To Perform Certain Steps Of Patented Method And Patients To Perform Remaining Steps

Fitzpatrick Case Update January 12, 2017 On January 12, 2017, the Federal Circuit in Eli Lilly v. Teva Parenteral Medicines affirmed a finding that Teva and other drug makers would induce infringement of Eli Lilly’s method-of-treatment patent, U.S. Patent No. 7,772,209, where those drug makers had sought FDA approval for product labels that instructed doctors to perform certain steps of…

January 09, 2017

Federal Circuit Dismisses Appeal By IPR Petitioner For Lack Of Article III Standing Due To Insufficient Evidence Of Injury To Petitioner Arising From Challenged Patent

Fitzpatrick Case Update January 9, 2017 The Court of Appeals for the Federal Circuit today held that, in order to appeal a final decision from an inter partes review (IPR) proceeding, an IPR petitioner must prove Article III standing, including an injury in fact—and moreover must do so by a burden of proof equal to that required for a summary…

December 05, 2016

Videos as a Printed Publication in Inter Partes Review

IPWatchdog December 5, 2016 Of the several varieties of post-grant challenges created by the Leahy-Smith Americas Invent Act (AIA), challenges under inter partes review (IPR) are characterized by the requirement that they be based only on patents and printed publications. See 35 U.S.C. § 311(b). By contrast, in other proceedings such as post grant reviews, the challenge may rely on…

December 02, 2016

Copyright Notices As Prima Facie Evidence Of Public Accessibility

Managing Intellectual Property Blog December 2, 2016 Validity challenges under the AIA increasingly rely on non-traditional publications such as web-based publications and product brochures. Michael O’Neill of Fitzpatrick Cella Harper & Scinto discusses the extent to which the publication’s copyright notice, which often is the only evidence submitted to prove the date of publication, is adequate for the task.

November 21, 2016

Federal Circuit Rejects PTAB’s Definition Of Covered Business Method Patents As Patents “Incidental” Or “Complementary” To Financial Activity

Fitzpatrick Case Update November 21, 2016 November 21, 2016 – The Federal Circuit today in Unwired Planet, LLC v. Google Inc., Appeal No. 2015-1812, rejected a broad definition of covered business method (CBM) patents adopted by the Patent Trial and Appeal Board (PTAB) in a CBM review between Google and Unwired Planet over Unwired Planet’s U.S. Patent No. 7,203,752.