The USPTO published a Notice of Proposed Rulemaking on May 9, 2018 seeking to change the claim construction standard for PTAB trials from the current broadest reasonable interpretation (BRI) to the claim construction standard applied in federal courts and ITC proceedings that follow Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). The proposed rule also requires the PTAB to consider prior claim construction determinations that are timely made of record from a civil action or ITC proceeding.
Before PROST, WALLACH, and TARANTO. On Petition for Writ of Mandamus to the U.S. District Court for the District of Delaware.
Summary: The patent venue statute, 28 U.S.C. § 1400(b), does not apply to foreign corporations, which may be sued in any district where they are subject to personal jurisdiction.
The United States Department of Justice announced in a press release that Alere Inc. and its subsidiary, Alere San Diego, reached a settlement agreement with the United States government for $33.2 million over allegations that Alere had violated the False Claims Act. According to Healthcare Finance, the settlement did not include any admission of actual liability on Alere’s part.
Before Wallach, Chen, and Hughes. Appeal from the Patent Trial and Appeal Board.
Summary: A party may not be time-barred from instituting an IPR despite having a business relationship with a defendant in an earlier filed infringement suit, where the party was not in privity with that defendant.
Before Moore, Hughes, and Stoll. Appeal from the United States District Court for the District of North Dakota.
Summary: A district court must articulate a reasonable basis for denying attorneys’ fees under § 285 if it found inequitable conduct.
Before Newman, Mayer, and Lourie. Appeal from the Patent Trial and Appeal Board.
Summary: An application is unpatentable under pre-AIA 35 U.S.C. § 102(f) when the application does not name the correct inventors.
The U.S. Patent and Trademark Office has issued new guidance to patent examiners in light of the Federal Circuit’s recent holdings in Berkheimer v. HP Inc., 881 F.3d 1360 (Fed. Cir. 2018) and Aatrix Software, Inc. v. Green Shades Software, Inc., 882 F.3d 1121 (Fed. Cir. 2018). The new guidance emphasizes that a patent examiner’s conclusion as to whether elements of a patent claim represent “well-understood, routine, conventional activity” must be based on a factual determination, and that the factual determination must be supported in writing if the Examiner rejects a claim on those grounds.
Before Reyna, Wallach, and Stoll. Appeal from the United States District Court for the Middle District of Georgia.
Summary: A complaint that attaches the asserted patents, specifically identifies the accused products by name and with photos, and alleges that the accused products meet each and every element of at least one claim of the asserted patents, is sufficient, for at least simple technologies, to survive a motion to dismiss under Iqbal/Twombly.
Discoveries regarding the role of the microbiome in human health and disease have been emerging with stunning frequency. While each new discovery builds upon the last, occasionally a point is reached at which, in the aggregate, researchers can begin to refocus their efforts, identifying distinct approaches to modulating and/or protecting our internal flora in order to preserve and enhance our own well-being.
Before Dyk, Bryson, and Taranto. Appeal from the United States District Court for the Eastern District of Texas.
Summary: A plaintiff has no 7th Amendment right to a jury trial for a claim for disgorgement of profits for trade secret misappropriation.
