Early protection of intellectual property is a critical component in any business’s efforts to secure a competitive advantage in the marketplace. In the cannabis space, efforts to secure IP rights may be influenced by conflicting federal and state regulations.
Early protection of intellectual property is a critical component in any business’s efforts to secure a competitive advantage in the marketplace. In the cannabis space, efforts to secure IP rights may be influenced by conflicting federal and state regulations.
Before Reyna, Taranto, and Hughes. Appeal from the United States District Court for the Central District of California
Summary: An individual claiming sole inventorship of a patent has standing under 35 U.S.C. § 256 to establish ownership of the patent, unless he has entered into a contract in which he assigns, or promises to assign, the rights to the patent, or he was “hired-to-invent” such that his employer is entitled to claim his inventive work.
Before Lourie, O’Malley, and Wallach. Appeal from the United States District Court for the Northern District of Texas
Summary: When a case is dismissed with prejudice for lack of standing, the defendant is the prevailing party for purposes of fee-shifting under 35 U.S.C. § 285.
Before Moore, Linn, and Chen. Appeal from the Patent Trial and Appeal Board.
Summary: A party seeking to swear behind prior art using an inventor’s testimony must proffer corroborating evidence that does not depend solely on the inventor’s testimony itself.
Before Moore, Mayer, and Stoll. Appeal from the United States District Court for the District of New Jersey.
Summary: Plain claim language will not be narrowed based on a patent’s specification unless the patentee clearly and explicitly disclaims claim scope.
Before Prost, Lourie and Hughes. Appeal from the United States District Court for the District of Delaware.
Summary: When another patent for a drug issues after an ANDA is filed, there can still be jurisdiction for an infringement lawsuit and a finding of infringement of that patent even when the ANDA is not amended until after the lawsuit is filed.
In Solutran, Inc. v. U.S. Bancorp & Elavon, Inc., No. 13:cv-02637, 2018 WL 1276999 (D. Minn. Mar. 12, 2018), the court denied the plaintiff’s Motion in Limine and held that CBM estoppel does not apply to related applications where the reference provides new disclosures or features that could not have been argued from the parent.
The court in Koninklijke Philips N.V. v. Wangs All. Corp., No. 14:cv-12298, 2018 WL 283893 (D. Mass. Jan. 2, 2018) denied summary judgement of no invalidity, finding that the Federal Circuit’s holding in Shaw forecloses a broad reading of the estoppel provisions under 35 U.S.C. §315(e)(1) & (2).
On March 21, 2018, the PTAB designated two decisions as “informative” that denied institution for presenting prior art that had been previously presented during prosecution. Becton, Dickinson & Co. v. B. Braun Melsungen AG, IPR2017-01586 (PTAB Dec. 15, 2017) (Paper 8); and Kayak Software Corp. v. IBM Corp., CBM2016-00075 (PTAB Dec. 15, 2016) (Paper 16). These Informative Decisions are based on the AIA statutory provision of 35 U.S.C. § 325(d), which permits the PTAB to deny institution of petitions that present grounds of unpatentability based on prior art that had been previously presented to the Office.
