Knobbe/Martens: Intellectual Property Law

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MOMENTA PHARMACEUTICALS, INC. v. BRISTOL-MYERS SQUIBB COMPANY

February 7, 2019 Jacob R. Rosenbaum and Jeremy Anapol

Before Newman, Dyk, and Chen.  Appeal from the Patent Trial and Appeal Board.

Summary: An injury-in-fact is required to establish Article III standing for judicial review of agency action, even if a statute permits such review.

 

MYLAN PHARMACEUTICALS INC. v. RESEARCH CORPORATION TECH.

February 4, 2019 David J. Grant and Adam Powell

Before Lourie, Bryson, and Wallach.  Appeal from the Patent Trial and Appeal Board.

Summary: A party joined to an inter partes review has the right to appeal the Board’s final written decision even if the initial petitioner does not appeal.

 

DUNCAN PARKING TECHNOLOGIES v. IPS GROUP, INC.

February 1, 2019 Mark E. Davis and Karen M. Cassidy

Before Lourie, Dyk and Taranto. Consolidated Appeals from the Patent Trial and Appeal Board and the Southern District of California.

Summary: A person is a joint inventor of the anticipating portions of a reference for the purposes of 35 U.S.C. § 102(e) when the person’s contributions to that anticipating portion are significant in view of the invention as a whole.

 

Perhaps Assignor Estoppel Survives at the PTAB…via the District Court

January 22, 2019 Scott R. Seeley and Benjamin Anger

A preliminary decision in the District Court of Delaware introduces the possibility that a patentee’s victory on assignor estoppel in the district court could quash a co-pending IPR proceeding at the PTAB.  Assignor estoppel is applied to prevent a patent assignor (e.g., inventor) from challenging the validity of his or her own patent.  Recently, the Federal Circuit in Arista Networks, Inc. v. Cisco Sys., Inc., 908 F.3d 792, 793 (Fed. Cir. 2018) blessed the PTAB’s refusal to apply this doctrine, allowing inventors to pursue an IPR against his or her own patent in an IPR.  In contrast, inventors are often barred in district court cases from challenging the validity of their own patent under assignor estoppel.  Yet, recently in AgroFresh Inc. v. MirTech, Inc., CV 16-662-MN-SRF, the magistrate judge granted AgroFresh’s request to file an early motion for summary judgment asserting assignor estoppel that would prevent the PTAB from issuing a Final Written Decision, thus representing a potential end-run around the PTAB’s refusal to consider the doctrine.

 

AMERIGEN PHARMACEUTICALS v. UCB PHARMA GMBH

January 14, 2019 Bita Kianian and Nicole R. Townes

Before Lourie, Chen, and Stoll. Appeal from the Patent Trial and Appeal Board.

Summary: A generic pharmaceutical company had standing to appeal the Board’s decision in an IPR that claims of a patent were not obvious even though it may be incapable of maintaining a parallel Hatch-Waxman suit because it demonstrated a controversy traceable to the patent and redressable by the Court.  

 

REALTIME DATA, LLC. V. IANCU

January 10, 2019 Suyoung Jang and Andrea Cheek

Before Dyk, Taranto, Stoll. Appeal from the Patent Trial and Appeal Board.

Summary: The PTAB is not required to make any finding regarding a motivation to combine two references when it concludes that a claim is invalid under § 103 in view of a single prior art reference.

 

IN RE: MARCO GULDENAAR HOLDINGS B.V.

December 28, 2018 Samuel I. Cockriel and Mark Kachner

Before Chen, Mayer, and Bryson.  Appeal from the Patent Trial and Appeal Board.

Summary: Claims directed to the abstract idea of rules for playing a dice game are not transformed into patent eligible subject matter by the addition of printed matter.

VIRNETX INC., v. APPLE, INC.

December 10, 2018 Alexander D. Zeng and Christie Matthaei

Before Newman, O’Malley, and Chen.  Appeal from the PTAB.

Summary: Patent Owner Vertnetx Inc. (“Virnetx”) was collaterally estopped from arguing that a reference was not a printed publication because the Federal Circuit had already determined the reference was a printed publication in a Rule 36 judgement in a separate but related appeal.

 

ENPLAS DISPLAY DEVICE CORP. v. SEOUL SEMICONDUCTOR CO.

November 19, 2018 Aaron S. Johnson and Mark Kachner

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

Summary: Reasonable royalty patent damages cannot include a royalty for sales of non-accused products.

 

HAMILTON BEACH BRANDS, INC. v. F'REAL FOODS, LLC

November 19, 2018 David C. Kellogg and Karen M. Cassidy

Before Reyna, Wallach, and Taranto.  Appeal from the Patent Trial and Appeal Board

Summary:  A party must file a cross-appeal when their argument requires modification of a decision. Under the APA, the final claim construction need not be identical to the proposed claim construction, so long as it is similar enough that the parties had reasonable notice and an opportunity to be heard.

 

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