The Federal Circuit recently clarified in LifeNet Health v. LifeCell Corporation, No. 2015-1549 (Fed. Cir. Sept. 16, 2016) that a negative functional claim limitation can be used to describe a capability or structural element of an apparatus. The Court affirmed a judgment of direct infringement against a manufacturer where the limitation was found to be satisfied from the moment the apparatus was manufactured,… More
So Kyle Bass and his Coalition for Affordable Drugs have been handed a defeat in their first PTAB final written decision. See Coalition for Affordable Drugs II LLC v. Cosmo Techs Ltd. (IPR2015-00988, Paper 55). The merits of the case aside, the biggest question in my mind is: can the Coalition appeal?
On the face of things, the answer appears to be yes. … More
In McRO, Inc. v. Bandai , the Federal Circuit provided important guidance for determining patent eligibility under 35 U.S.C. § 101 for software and related technology patents, particularly involving computer software processed by general-purpose computers. In a reversal of the decision at the Central District of California, the Federal Circuit concluded that a patent for automated lip-synchronization in computer animation recited “the ordered combination of claimed steps,… More
The Central Reexamination Unit (CRU) at the USPTO handles a number of post grant proceedings by examiners selected for expert technical and advanced patent legal knowledge. Ex parte reexamination remains a comparatively low cost proceeding to challenge the validity of a patent. The CRU has recently taken on reissue applications and supplemental examination. At a recent Quarterly Meeting of the Patent Public Advisory Committee (PPAC) held on May 5,… More
Have you ever tried a Pre-Appeal Brief Request for Review? Ever wish you could sit in on the Examiner’s conference? Well now you can, under a new pilot program launched today, July 11, 2016. It’s called P3 (“Post-Prosecution Pilot Program”) and combines some aspects of after-final practice with an expanded role for the applicant in a pre-appeal review.
On June 23, 2016, the citizens of the United Kingdom voted in favor of leaving the European Union. This is a monumental step which historians will analyze in order to understand why and how it became possible. In the meantime, lawyers will have to figure out the consequences, including how to untangle this 60 year-old relationship.
Rather than resist preliminary-stage discovery, Petitioners instead should say “Bring it on!”
As I suggested in an earlier post, Patent Owners’ ability to introduce new declaration evidence with a preliminary response is unlikely to help them avoid trial. I doubt the Board will deny a Petitioner the relief requested on the untested evidence of a Patent Owner witness, however persuasive that evidence may appear.… More
Although the focus of IPR and other PTAB trials is on the validity of patents, parties cannot reflexively rely on the safeguards of FRE 408 for licensing and settlement negotiations that apply in Federal Court. In Palo Alto Networks, Inc. v. FinJan, Inc., (Cases IPR2016-00149 and IPR2016-00150, Paper 12), the Board denied a motion to seal, stressing that “[t]here is a presumption that the record of our proceedings,… More
The PTABloggers are pleased to join the USPTO and the AIPLA in inviting you to attend the PTAB’s second annual Bench and Bar Conference (flyer). It is set for Wednesday, June 15th 2016 at the USPTO Headquarters in Alexandria from 1 to 5 pm, followed by a reception. Attendees should register in advance with the AIPLA.
The agenda this year splits time between AIA trials and ex parte appeals.… More
A district court litigation has lots of moving parts all by itself. But add in an IPR and then an ITC Section 337 investigation, and it may become more than the parties can handle. But will the parties agree to stay any of the proceedings? And even if they agree, would any of the tribunals oblige?
The answer, it seems, is that when the parties don’t agree,… More