Patent Law

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The Federal Circuit’s recent decision last week in Inland Diamond Prods. Co. v. Cherry Optical Inc., offers an important reminder for patent litigators: a PTAB’s factual finding in an inter partes review (IPR) does not automatically bind a district court. The case underscores that issue preclusion has clear boundaries when different forums apply different standards of proof.

Patent eligibility under 35 U.S.C. § 101 should be a straightforward threshold question: any “new and useful process, machine, manufacture, or composition of matter” is eligible for protection. Yet over time, this once-clear principle has become anything but.

Although the statute itself has remained unchanged for two centuries, its interpretation has evolved dramatically through judicial decisions. And it is this common law precedent that has shaped the approach to the determination of patent subject matter eligibility.

For many patent cases, the United States District Court hearing your patent dispute can have a big impact on case strategy, budget and management, and even, to some extent, case outcomes. As we discussed earlier this year, how a patent owner approaches an alleged infringer can turn into a costly and inconvenient endeavor if forced to defend their patents in an unexpected jurisdiction. A recent case out of the District of Arizona illustrates the opposite scenario – where the activities of an accused infringer results in a suboptimal venue for that defendant.

The practice of serially filing continuation applications through a patent’s lifetime has come under increased pressure in recent years from newly implemented continuing application fees to expanded case law on non-statutory obviousness-type double patenting. A somewhat new interpretations of the doctrine of prosecution laches emerging from Sonos, Inc. v. Google…

Method-of-treatment (“MoT”) claims can be powerful tools for pharmaceutical companies seeking to extend market exclusivity for their products after the original composition-of-matter patents expire. However, the District of Delaware’s recent decision in Novo Nordisk v. Mylan is another reminder that the scope of method of treatment claims must be aligned with an FDA approved drug label. 

The Federal Circuit recently reversed a $4.7M verdict in a patent lawsuit involving two patents concerning next-generation sequencing methods—U.S. Patent Nos. 10,017,810 and 10,450,597. Both patents concern DNA preparation using different types of primers: “target-specific primers” that bind to regions of interest in the genome and other primers or adaptors…

In the past few months, the U.S. Patent and Trademark Office (“PTO”) Acting Director has made substantial changes to the process for, and factors considered in, exercising discretion to deny institution of an inter partes review (“IPR”) petition. We have discussed these changes and recent decisions in prior blogs. Now, the PTO is facing legal challenges stemming from these policy changes. In one pertinent example, SAP America, Inc. filed a Petition for Writ of Mandamus to the Federal Circuit resulting from the PTO’s discretionary denial of its IPR petition, challenging the PTO Acting Director’s authority to enforce these new policies.

On the heels of the U.S. Patent and Trademark Office Acting Director’s recent decision to deny institution of iRhythm Technologies’ inter partes review petition, the PTO has now issued additional decisions clarifying the role of parties’ “expectations” in IPR proceedings. Along with the Acting Director’s guidance regarding discretionary denials of institution, decisions on two recent petitions further illuminate the PTO’s view of which factors should be given weight in deciding whether to deny an IPR petition.

In a pivotal ruling for patent damages and standard-essential patent (SEP) litigation, the Federal Circuit vacated a $300 million award against Apple in a long-standing dispute with Optis Cellular Technology, LLC. See Optis Cellular Tech., LLC v. Apple Inc. (“Op.”). The Federal Circuit sided with Apple on multiple fronts—vacating the damages and infringement findings, reversing § 101 findings on the claims of one of Optis’s patents, and reversing a finding that another patent did not invoke 35 USC § 112 ¶6 (The patent at issue was issued pre-AIA so §112(f) is referred to as 112 ¶ 6 as in the original statute language). The Court also affirmed claim construction of certain terms and held the lower court abused its discretion under Federal Rules of Evidence 403 by admitting certain damages evidence and testimony from Optis.

The Federal Circuit’s decision in Eye Therapies, LLC v. Slayback Pharma, LLC  provides further insight into the tools available for patent claim construction. The Federal Circuit had previously held that a patent’s specification can evidence that the patentee intended for a term in the patent claims to have a different…