Knobbe/Martens: Intellectual Property Law

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ARENDI S.A.R.L. v. GOOGLE LLC

February 21, 2018 Nicole R. Townes and Douglas B. Wentzel

Before Newman, Bryson, and Moore.  Appeal from the Patent Trial and Appeal Board.

Summary: Prosecution disclaimer occurred when an applicant explained why claims were amended and the Examiner confirmed the reasons for allowance.

 

AATRIX SOFTWARE, INC v. GREEN SHADES SOFTWARE, INC

February 14, 2018 Adam Powell and Diana E. Wade

Before Moore, Reyna, and Taranto. Appeal from the District Court for the Middle District of Florida.

Summary:  Allegations in the complaint about how the claimed invention solved problems in the prior art can present factual disputes sufficient to survive a Rule 12(b)(6) motion under §101.

 

Toyota Requests Adverse Judgment After University of Minnesota is Dismissed from IPR on the Basis of Sovereign Immunity

February 13, 2018 Peter Law and Kerry S. Taylor, Ph.D.

A closely watched case on sovereign immunity, Reactive Surfaces Ltd., LLP, v. Toyota Motor Corp., IPR2017-00572, has now been terminated by the patent owner’s request for adverse judgment.

 

ITC Reiterates the Importance of Quantitative Evidence to Establish a Domestic Industry

On January 12, 2018, Judge David P. Shaw issued an order denying Complainant Wirtgen America, Inc.’s (“Wirtgen America”) motion for summary determination on the economic prong of the domestic industry requirement in Certain Road Milling Machines and Components Thereof, Inv. No. 337-TA-1067.

Federal Circuit's Treatment of Alleged APA Violations at the PTAB

February 12, 2018 Kerry S. Taylor, Ph.D. and Scott R. Seeley

Attorneys Kerry S. Taylor, Ph.D. and Scott R. Seeley authored "Federal Circuit's Treatment of Alleged APA Violations at the PTAB" which was published in the January 31, 2018 edition of Westlaw Journal Intellectual Property.

Read the full article below.

In re: Hodges

February 12, 2018 Mark Kachner and Ashley C. Morales

Before Lourie, O’Malley, and Wallach.  Appeal from the Patent Trial and Appeal Board.

Summary:  The PTAB’s finding that an element in a prior art reference is “similar to” a claim limitation, without further explanation, is insufficient to support a finding of anticipation.

 

Federal Circuit Clarifies Scope of On-Sale Bar

February 12, 2018 Jonathan Bachand and Jeremiah S. Helm

            In Medicines Co. v. Hospira, Inc., 2014-1469; 2014-1504 (Dyk, Wallach, Hughes), the Federal Circuit affirmed the district court’s finding of non-infringement but reversed the district court’s determination that an agreement to distribute the Angiomax drug product did not constitute an offer for sale under 102(b).  The panel remanded for a determination of whether the agreement covered the patented invention.  This holding, and the prior en banc holding of the Court in Medicines Co. v. Hospira, Inc., 827 F.3d 1363 (Fed. Cir. 2016) (Medicines I), help clarify what may be an invalidating “offer for sale” or “sale” under 35 U.S.C. § 102(b).

 

POLARIS INDUSTRIES, INC. v. ARCTIC CAT, INC.

February 9, 2018 Karen M. Cassidy and Nathan D. Reeves

Before Lourie, O’Malley, and Hughes. Appeal from the Patent Trial and Appeal Board.

Summary: Evaluation of “teaching away” requires consideration of whether a reference “criticize[s], discredit[s], or otherwise discourage[s]” modifying the prior art in the manner claimed.

 

MERCK SHARP & DOHME CORP. v. AMNEAL PHARMACEUTICALS LLC

February 9, 2018 Karen M. Cassidy and Scott R. Seeley

Before Taranto, Clevenger, and Stoll. Appeal from the United States District Court for the District of Delaware. 

Summary: Proceeding to trial despite a party’s violation of a discovery order was not an abuse of discretion where the District Court took adequate steps to ensure the opposing party would not be prejudiced. 

 

BERKHEIMER V. HP INC.

February 9, 2018 Adam Powell and James Smith

Before Moore, Taranto, and Stoll.  Appeal from the United States District Court for the Northern District of Illinois.

Summary: (1) Terms of degree, including “minimal,” may render claims indefinite if the specification fails to provide “objective boundaries” for the term; and (2) while patent eligibility is ultimately a question of law, the underlying question of whether something is “well-understood, routine, and conventional” is a factual issue.

 

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