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Posts Tagged ‘America Invents Act’

Five Important Case Rulings You Should Familiarize Yourself With

April 17th, 2017 Alexander No comments

1. Phigenix Inc. v. ImmunoGen Inc.

Those considering challenging a patent may have to think twice.

In January, the Federal Circuit ruled that a party unsatisfied with a Patent Trial and Appeal Board (PTAB) verdict may appeal; however, the party is still obligated to satisfy the constitutional requirements for instituting a proceeding in an Article III court.

Approximately 80 percent of PTAB cases are regarding infringement litigation. Although the parties challenging patents may bring cases to the board, the ruling essentially implies that the parties may not be able to appeal if they lose.

In addition, this ruling means that it is extremely imperative to obtain evidence of any contention among the parties on the record at the beginning of the case at the PTAB in order to safeguard the right to appeal the board’s verdict.

2. In re: Van Os

In this case, the Federal Circuit held that a pronouncement that a patent is invalid as obvious necessitates additional detail. It is not sufficient to state that it would be sound sense to combine prior art to arrive at a claimed invention. The Court stated that “such a conclusory assertion with no explanation is inadequate to support a finding that there would have been a motivation to combine.”

3. Secure Axcess LLC v. PNC Bank NA

In February, the Federal Circuit’s ruling in this case further restricted the amount of patents subject to review under the AIA’s covered business method (CBM) patent review program. Only patents containing a financial component in the claims are subject to review. The Court held that the Secure Axcess patent on web page authentication contains no financial components in tis claims, and thus the invention can be utilized by any company. It is irrelevant that the patent was generally asserted in opposition to banks. The patent should not have been administered under CBM review and then invalidated by the PTAB.

4. Mentor Graphics Corp. v. EVE_USA Inc.

In March, the Federal Circuit affirmed a $36 million award against Synopsys. This case was brought by Mentor Graphics regarding computer emulator technology. The Court ruled that after the Panduit analysis is done, the ensuing damages does not need to be allocated so that they only include the patented invention.

5. Personal Web Technologies LLC v. Apple Inc.

The Federal Circuit’s ruling in this case disapproved of the PTAB’s actions for insufficient justifications and remanded for further proceedings. The Court stated that subject to the Administrative Procedure Act, government entities must still produce “logical and rational” explanations for its verdicts so that courts can review them.

For more information, see Law360.



Expert Testimony Has Little Impact on AIA Review

March 26th, 2017 Alexander No comments

Nearly one year has gone by since the new rules permitting patent owners to offer expert testimony in their responses to American Invents Act (AIA) review petitions have passed.  With the prior rules, petitioners were able to present expert testimony in their petition for review, but patent owners were not allowed to do the same.  Following complaints from patent owners, the USPTO passed the new rules permitting patent owners to offer expert testimony alongside their preliminary responses.

However, the new rules appear to have minimal effect on the result of the Patent Trial and Appeal Board determinations about whether to conduct reviews.  The statistics from RPX Corp. demonstrate that the PTAB has conducted reviews of challenged claims at virtually an identical rate in cases regardless of whether patents owners choose to include expert testimony along with their responses.  Regarding cases in which expert testimony was submitted alongside the response, review of the challenged claims occurred approximately 50 percent of the time.  Yet, review of some claims occurred in 13 percent of these cases.  With cases in which the patent owner did not submit expert testimony along with the initial response, review of challenged claims occurred 50 percent of the time, while review of some claims followed in 12 percent of these cases.

Because these rules are fairly new to patent owners, it is likely that they are still attempting to figure out how to use expert testimony to their advantage.  However, attorneys have said that patent owners can find holes in the petitioner’s case and then utilize expert testimony to elucidate the gap.

Considering that the changes are fairly new, we still have yet to see the effect of expert testimony on the overall outcome.

For more information, see Law360.

Categories: Uncategorized


Patent Cases To Watch In 2015

January 6th, 2015 Alexander No comments

The U.S. Supreme Court will decide three patent cases involving claim construction, induced infringement and patent royalties in 2015, while the Federal Circuit grapples with the fallout from the high court’s recent patent-eligibility rulings and the standards for America Invents Act reviews.

Here are the patent cases attorneys will be watching in 2015:

Teva Pharmaceuticals USA Inc. v. Sandoz Inc.

The high court heard arguments in this case challenging the Federal Circuit’s rule that district court claim construction rulings must be reviewed afresh on appeal. If the justices discard that rule, it would mark a profound shift in patent law.

Teva is appealing a Federal Circuit decision invalidating its patents on the multiple sclerosis drug Copaxone after a district court found them valid. The company argues that claim construction, which is often dispositive in patent cases, involves factual findings that should be reviewed with deference on appeal.

The Federal Circuit has long held that claim construction is a question of law that must be reviewed de novo. As a result, it frequently reverses decisions by trial judges, and a Supreme Court decision requiring deference “could be a big, big change.”

Commil USA LLC v. Cisco Systems Inc.

The justices agreed to review a Federal Circuit decision that a defendant’s good faith belief that a patent is invalid can serve as a defense to induced patent infringement, in a case with significant implications for how difficult it is to prove inducement.

The ruling, which wiped out a $74 million damages award after a jury found that Cisco infringed a Commil wireless networking patent, created a defense to induced infringement that had never existed before.

The defense does not appear to have been used much since it was created, but that could change if it gets the high court’s blessing. It is easier for accused infringers to craft a defense that they believed a patent was invalid than to argue that they didn’t infringe. Permitting the defense would give another defense to inducement and make inducement harder to prove.

Kimble v. Marvel Enterprises Inc.

Also, the high court took on a case, in which it will review its own 50-year-old rule that royalty agreements cannot extend beyond the expiration of a patent, potentially opening the door to much longer licensing agreements.

The high court will consider an appeal by the inventor of a Spider-Man toy whose bid to collect royalties from Marvel Enterprises Inc. after his patent expired was denied by the Ninth Circuit.If the justices overrule that decision and end the ban on royalties for expired patents, “it will definitely make negotiations a bit more complicated and more interesting” by adding an entirely new aspect to licensing talks.

A win for the inventor may mean that licensees could conceivably end up paying royalties on patents in perpetuity, for a lower rate than they would currently pay during the limited life of the patent.

The case involves “a policy decision at the crossroads of antitrust and patent law,” DeVito said. “Antitrust cases have actually moved away from per se unenforceable rules, particularly in arms-length agreements where the parties have exercised their freedom to contract. This is a very important decision.”

Fallout from Alice and Myriad

While the justices busy themselves with new areas of patent law, the Federal Circuit, the Patent Trial and Appeal Board and the district courts will deal with the impact of the high court’s recent Alice and Myriad decisions on patent eligibility.

Many courts have cited those decisions to invalidate patents they say claim nothing more than abstract ideas or natural material.

“I call it the aftermath of Hurricane Alice,” Bart Showalter of Baker Botts LLP said. “Folks are very concerned about the scope of Alice. It’s a pretty fundamental case, and there is a concern among many companies that Alice has devastated a portion of their patent portfolio.”

In re: Cuozzo Speed Technologies LLC

By December, the Patent Trial and Appeal Board had issued just over 200 final written decisions in challenges to patents filed under America Invents Act proceedings. Although many have been appealed to the Federal Circuit, no appeals have yet been decided, and attorneys will be keeping tabs on how the court handles them and how often it upholds the board’s findings.

The court heard its arguments in an AIA case in November, and the decision in that appeal by Cuozzo could set important precedent on a key issue. Cuozzo argues that the board uses the wrong claim construction standard in reviews and should instead use the same standard as district courts, which makes it more difficult to invalidate patents.

If the court backs Cuozzo, the board would likely have to change the standard it issues in all future reviews. However the court rules, resolving the proper claim construction standard will make the system more stable.

“Clarity will be useful on either side,” he said. “It will make it more reliable for patentees and accused infringers.”