Recently, the PTO issued a Notice providing guidance on how the Board treats reissue and reexamination proceedings while an AIA trial on the same patent is co-pending. The guidance comes in response to public comments and questions seeking to understand the interplay, particularly with respect to claim amendments, between the PTO’s long-established reissue and reexamination proceedings, and the PTO’s relatively new AIA trials (inter partes review, post-grant review, and cover business methods). Questions concerning a patent owner’s potential use of reissue or reexamination as an alternative route to amending claims in an AIA trial are not surprising given the PTO’s low rate of granting Motions to Amend in AIA trials, on the order of just10% through the end of fiscal year 2018. Even though the Notice is “only meant to summarize existing practice,” several important lessons can be drawn from it.
A Delaware jury awarded automated milkshake maker, f’real Foods, approximately $3.2 million in damages based on Hamilton Beach’s and Hershey Creamery’s infringement of patents related to milkshake blending machines.
A Delaware jury awarded Hologic $4.2 million in lost profit patent damages and more than half a million dollars in reasonable royalty patent damages, based on Minerva Surgical’s infringement of patents related to detecting uterine perforations during uterine ablation.
On April 1, 2019, the Federal Circuit issued a non-precedential decision in Cleveland Clinic Foundation, Cleveland HeartLab, Inc. v. True Health Diagnostics LLC (“Cleveland Clinic II”), affirming the district court’s holding that claim 1 of U.S. Patent No. 9,575,065 (the “ ’065 patent”) and claims 1 and 2 of U.S. Patent No. 9,581,597 (the “’597 patent”) were invalid under 35 U.S.C. § 101 as being directed to a patent-ineligible law of nature. In its decision, the Federal Circuit held that the courts are not bound by United States Patent and Trademark Office (USPTO) guidance, and concluded that a portion of the USPTO’s guidance on subject matter eligibility was inconsistent with controlling judicial precedent.
ENDO PHARM, INC., v. ACTAVIS LLC
Before Wallach, Clevenger, and Stoll. Appeal from the United States District Court for the District of Delaware.
Summary: Regulatory guidelines addressing drug product impurities may serve as a market force in motivating a PHOSITA to modify prior art references. However, if the guidelines lack a solution overcoming the impurity issues, they cannot provide a PHOSITA with a reasonable expectation of success to achieve the claimed purity levels.
TRADING TECHNOLOGIES INTL v. IBG LLC
Before Moore, Clevenger, and Wallach. Appeal from the Patent Trial and Appeal Board.
Summary: Claims directed to providing additional trading information on a prior art display, without more, are patent-ineligible under 35 U.S.C. § 101.
Before Moore, Wallach, and Hughes. Appeal from the Patent Trial and Appeal Board
Summary: Industry skepticism is a question of fact that weighs in favor of non-obviousness and can range on a scale, with the most weight afforded to skepticism that the subject matter is technically infeasible, unworkable, or impossible.
Before Moore, Wallach, and Hughes. Appeal from the Patent Trial and Appeal Board
Summary: Industry skepticism is a question of fact that weighs in favor of non-obviousness and can range on a scale, with the most weight afforded to skepticism that the subject matter is technically infeasible, unworkable, or impossible.
Supreme, the popular New York-based American streetwear brand, known by its iconic logo, was created by founder/CEO James Jebbia.
On April 18, 2019, the Federal Circuit issued a non-precedential opinion that is making stakeholders in the patent licensing community sit up and take note. The case was Dodocase VR, Inc. v. MerchSource, LLC, holding that a boilerplate forum selection clause in a licensing agreement can prevent a validity challenge at the U.S. Patent and Trademark Office Patent Trial and Appeal Board (PTAB), even though the clause makes no mention of PTAB proceedings.
