Knobbe/Martens: Intellectual Property Law

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E.I. DUPONT DE NEMOURS & CO. V. SYNVINA C.V.

September 18, 2018 Mark Rubinshtein, Ph.D. and Nicole R. Townes

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

Summary: When the ranges identified in a claimed composition overlap with the ranges disclosed in the prior art, the burden shifts to the patentee to come forward with evidence of nonobviousness.  This burden-shifting framework is applicable both in the context of district court cases and inter partes review proceedings.

 

PARKERVISION, INC. v. QUALCOMM INCORPORATED

September 14, 2018 Josepher Li and Andrea Cheek

Before O’Malley, Reyna, and Taranto.  Appeal from the Patent Trial and Appeal Board.

Summary:  While obviousness of apparatus claims “capable of” a particular function may be shown by identifying a prior art reference that discloses an apparatus capable of performing the claimed function, obviousness of related method claims requires a motivation to actually use the prior art apparatus for the claimed function.

 

UC v. Broad Institute: No Interference-In-Fact in CRISPR Genome Editing Applications

On September 10, 2018, the Federal Circuit decided Regents of the University of California v. Broad Institute, Inc., affirming the Patent Trial and Appeal Board (PTAB)’s determination of no interference-in-fact between the University of California (UC)’s application and the claims of twelve patents and one application owned by the Broad Institute.

 

IXI IP, LLC v. SAMSUNG ELECTRONICS CO., LTD.

September 11, 2018 David J. Grant and Adam Powell

 

Before O’Malley, Mayer, and Reyna. Appeal from the Patent Trial and Appeal Board.

Summary: Claims may be rejected under 35 § U.S.C. 103 based on implicit disclosures of a prior art reference.

 

IN RE: DETROIT ATHLETIC CO.

September 11, 2018 Clayton R. Henson and Adam Powell

Before O’Malley, Reyna, and Hughes.  Appeal from the Trademark Trial and Appeal Board.

Summary: Courts should not give too much weight to evidence purporting to show a lack of actual confusion in an ex parte proceeding. 

 

ACORDA THERAPEUTICS, INC. v. ROXANE LABORATORIES, INC.

September 11, 2018 Casey D. Donahoe, Ph.D. and Mark Kachner

Before Newman, Dyk, and Taranto.  Appeal from the United States District Court for the District of Delaware.

Summary:  Pharmaceutical patents were obvious where the claims covered species of a genus taught by the prior art, the prior art taught achieving the claimed concentrations of the same compound but for a different indication, and a person of ordinary skill in the art would expect the claimed outcome.  Evidence of secondary considerations of nonobviousness such as long-felt need carried diminished weight because there was a blocking patent that may have deterred investment in the “blocked” invention.

 

OREXO AB, OREXO US INC., v. ACTAVIS ELIZABETH LLC

September 11, 2018 Albert J. Sueiras and Adam Powell

Before Newman, Hughes, and Stoll. Appeal from the United States District Court for the District of Delaware

Summary: Objective indicia of nonobviousness cannot be dismissed merely because all the ingredients in a formulation were generally known and nothing prevented a skilled artisan from combining them.    

 

WORLDS INC. V. BUNGIE, INC.

September 7, 2018 Daniel Kiang and Karen M. Cassidy

Before Prost, O’Malley, and Taranto.  Appeal from the Patent Trial and Appeal Board.

Summary: The PTAB may initially accept an IPR petitioner’s identification of real-parties-in-interest, but if and when a patent owner produces evidence disputing the identification, the burden is on the petitioner to demonstrate that the correct real-parties-in-interest were identified.

 

INTELLECTUAL VENTURES I LLC v. T-MOBILE USA, INC.

September 4, 2018 Kimberly A. Kennedy and Christie Matthaei

Before Prost, Moore, and Reyna.  Appeal from the District of Delaware.

Summary: Plain language claim construction will not be narrowed based on the prosecution history unless the patentee clearly and explicitly disclaims claim scope.

 

ZHENG CAI, DBA TAI CHI GREEN TEA INC., v. DIAMOND HONG, INC.

August 27, 2018 Mark E. Davis and Mark Kachner

Before Prost, Wallach, and Hughes.  Appeal from the Trademark Trial and Appeal Board.

Summary: TTAB did not abuse its discretion by (1) refusing to consider factual assertions made in a brief, where no evidence was introduced supporting the assertions, and (2) refusing to consider a procedurally improper reply brief.

 

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