On October 20, 2016, the Federal Circuit issued yet another opinion finding that the Patent Trial and Appeal Board’s decisions related to the institution of an inter partes review (IPR) are not subject to judicial review. This decision aligns with a series of cases in which the Federal Circuit has barred review of institution decisions under 35 U.S.C. § 314(d), which states that “[t]he determination by the Director whether to institute an inter partes review under this section shall be final and nonappealable.”
Wal-Mart Stores, Inc. asked the Trademark Trial and Appeal Board (TTAB) to reconsider its rejection of an application for the mark GEORGE in connection with watches, clocks, jewelry, and imitation jewelry in Class 14 (U.S. Serial No. 86/651975, “Wal-Mart’s mark”). The appeal by Wal-Mart wrestles with the issue of when goods can be considered “closely related.”
Less than a month after reversing the lower court’s determination of invalidity in McRO, Inc. v. Bandai Namco Games America, Inc., the Federal Circuit has now upheld the invalidity of claims in FairWarning IP, LLC v. Iatric Systems, Inc. that, like McRO, recite computer-implemented application of rules. The court’s rationale in distinguishing the claims of these two patents, resulting in the different outcomes, is instructive to both patentees and patent challengers.
Once a European patent application has been granted, all patentees must then choose to validate the granted application in one or more European countries. Such a decision may have long-term business and legal consequences. Upon payment of the grant fees to the European Patent Office, patentees will be awarded a European patent. The European patent is unenforceable until it becomes validated in the selected countries of the European Patent Convention.
A recent UK court held that Karen Millen, a fashion designer and co-founder of the Karen Millen brand, was prohibited from using her name, KM or K.Millen or any other confusingly similar names in connection with clothing and homeware.
Patent applicants whose applications have been assigned to the USPTO Technology Center 3600 have been particularly impacted by the Supreme Court’s June 2014 decision in Alice Corp. v. CLS Bank Int’l. However, overcoming 101 rejections for applications assigned to the TC 3600 is still achievable. A good example is U.S. Patent No. 9,444,932, issued in September, 2016.
The Supreme Court recently declined to hear several patent cases, thus leaving the decisions by the Federal Circuit intact. Issues that were not taken up by the Supreme Court include (1) whether performing patented methods for assessing the quality of pharmaceutical compositions is an act of patent infringement by virtue of constituting “making” a product using a patented method and whether practicing such methods is protected from being an act of infringement under the “safe harbor” provisions of the patent law (Amphastar), (2) the patent eligibility of methods developed based on the discovery of biological principles (Genetic Technologies), and (3) the appealability of the USPTO’s Patent Trial and Appeal Board’s decision to terminate inter partes review proceedings after such proceedings have been initiated (GEA Process).
The Federal Circuit recently decided a case concerning three patents owned by Intellectual Ventures I LLC (“IV”). Intellectual Ventures I LLC v. Symantec Corp., Case Nos. 2015-1769, 2015-1770, 2015-1771 (Fed. Cir. Sept. 30, 2016). The district court had invalidated U.S. Patent Nos. 6,460,050 (‘050) and 6,073,142 (‘142) and found that Claim 7 of U.S. Patent No. 5,987,610 (‘610) was patent eligible. The district court had also found that Symantec Corp. (“Symantec”) infringed Claim 7 of the ‘610 patent, leading to an $8 million judgment. On appeal, the Federal Circuit held that all three patents were patent-ineligible under 35 U.S.C. § 101.
The Federal Circuit recently decided two related cases concerning media content delivery patents1 owned by Affinity Labs of Texas, LLC. In both cases, the Federal Circuit held that the patents do not cover patent-eligible subject matter under 35 U.S.C. § 101.
On September 20, 2016, the U.S. Court of Appeals for the Federal Circuit issued an opinion affirming the summary judgement that Abbott’s U.S. Patent No. 5,344,915 (“the ’915 Patent”) was sufficiently supported by the written description of its priority application (“Priority App”) and thus entitled to the Priority App filing date. The ’915 Patent is directed to a protein, TBP-II, that binds to and neutralizes TNF-alpha. However, the Priority App discloses only a partial N-terminal sequence of the claimed protein (9 of 15 residues), along with other properties of the protein, including molecular weight, biological activity, and trypsin-degradation characteristics.
