NEWS:
MAKING HEADLINES IN THE POST-GRANT WORLD

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.

November 09, 2016

Federal Circuit Holds That Failure To Provide Patentee Opportunity To Respond To Portion Of Prior Art Reference Not Disclosed In IPR Petition But Relied On By Board In An IPR Decision Can Be A Procedural Violation

Fitzpatrick Case Update November 9, 2016 The Federal Circuit today in In re NuVasive, Appeal Nos. 2015-1672 and 2015-1673, found that the Patent Trial and Appeal Board in an inter partes review (IPR) proceeding violated a patentee’s rights under the Administrative Procedure Act by canceling patent claims based on a portion of a prior art reference that was not specifically…

October 19, 2016

Salvaging a Patent After a Post-Grant Trial

Corporate Counsel October 19, 2016 When the Patent Trial and Appeal Board (PTAB) decides to institute a post-grant trial, the subject patent is in jeopardy. Statistics and analysis show that the PTAB, which is part of the U.S. Patent and Trademark Office (PTO), has canceled a large majority of the patent claims that it has reviewed in the more than…

September 27, 2016

There Are Restraints on the PTAB in Post-Grant Trials

Corporate Counsel There Are Restraints on the PTAB in Post-Grant Trials The Federal Circuit’s opinions in two cases indicate that there are restraints on how the PTAB may reach a final decision in a post-grant trail. By Donald Heckenberg September 27, 2016 In two recent cases, the Federal Circuit reversed parts of decisions by the Patent Trial and Appeal Board…

September 12, 2016

Fitzpatrick Partner Justin Oliver was quoted in Law 360

On September 12th, Justin Oliver was quoted in Law 360’s article “The AIA at 5: A New World of Patent Challenges.” The AIA At 5: A New World Of Patent Challenges By Ryan Davis Law360, New York (September 12, 2016, 2:25 PM EDT) — Five years ago this week, the America Invents Act became law, overhauling procedures for applying for…