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Mealey's Patents

  • December 13, 2019

    United States Counsels Against Certiorari In Schizophrenia Treatment Patent Suit

    WASHINGTON, D.C. — Although the U.S. government acknowledges that ambiguity exists as to the patentability of method-of-treatment patterns under Section 101 of the Patent Act, in a Dec. 6 amicus curiae brief the government suggests that the U.S. Supreme Court deny a petition for certiorari by the maker of a generic schizophrenia drug, stating that the present case did not provide an optimal vehicle to consider the matter because the Federal Circuit U.S. Court of Appeals reached the correct decision in the underlying patent dispute despite the existing confusion (Hikma Pharmaceuticals USA Inc., et al. v. Vanda Pharmaceuticals USA Inc., No. 18-817, U.S. Sup.).

  • December 12, 2019

    Appellee Defends Patent Board Obviousness Findings In Brief

    WASHINGTON, D.C. — In a Nov. 20 redacted appellee brief, a petitioner for inter partes review (IPR) defended a determination by the Patent Trial and Appeal Board that three patents relating to oil transport are obvious (LiquidPower Specialty Products Inc. v. Baker Hughes, No. 19-1838, Fed. Cir.).

  • December 12, 2019

    Panel Affirms Rejection Of Patent Application Under Section 101

    WASHINGTON, D.C. — In a Dec. 10 ruling, the Federal Circuit U.S. Court of Appeals upheld a determination by the Patent Trial and Appeal Board that a claimed computer-conducted method of identifying tax entitlement is ineligible for patenting (In re:  Mark Alfred Greenstein, No. 19-1520, Fed. Cir., 2019 U.S. App. LEXIS 36494).

  • December 12, 2019

    United States Intervenes To Defend Inter Partes Review Of Pre-AIA Patents

    WASHINGTON, D.C. — In a Dec. 9 intervenor brief, the U.S. government tells the Federal Circuit U.S. Court of Appeals that inter partes review (IPR) of a patent issued prior to passage of the Leahy-Smith America Invents Act (AIA) is not a retroactive application of the law but that even if it were, it would not violate due process (Sound View Innovations LLC v. Hulu LLC, et al., Nos. 19-1865, -1866, -1867, Fed. Cir.).

  • December 11, 2019

    Video Storage Database, Search Query Patent Singled Out For Review

    ALEXANDRIA, Va. — In a Dec. 9 petition for inter partes review (IPR) by the Patent Trial and Appeal Board, a petitioner alleges that a claimed database for video storage would have been obvious to a person of skill in the art (POSA) at the time it was patented (Free Stream Media Corp. v. Gracenote Inc., No. IPR2020-00219, PTAB).

  • December 11, 2019

    In Blow To Government, High Court Says PTO Cannot Recoup Fees

    WASHINGTON, D.C. — The U.S. Supreme Court ruled Dec. 11 that the plain text of Section 145 of the Patent Act “does not overcome” the presumption against fee shifting established by the “American Rule,” a “bedrock principle” that litigants pay their own fees absent authorization by a statute or contract (Laura Peter v. NantKwest Inc., No. 18-801, U.S. Sup.).

  • December 10, 2019

    Volkswagen:  Engine Output Patent Would Have Been Obvious

    ALEXANDRIA, Va. — In a Dec. 9 petition for inter partes review (IPR), Volkswagen Group of America Inc. tells the Patent Trial and Appeal Board that a patented technique for controlling vehicle engine output claims “basic operations” and recites “well-known methods” (Volkswagen Group of America Inc. v. Michigan Motor Technologies LLC, No. IPR2020-00169, PTAB).

  • December 09, 2019

    Appealability Of Patent Board Time-Bar Rulings Debated At Supreme Court

    WASHINGTON, D.C. — The U.S. government on Dec. 9 told the U.S. Supreme Court that a determination of timeliness by the U.S. Patent and Trademark Office (PTO)’s Patent Trial and Appeal Board (PTAB) in an inter partes review (IPR) is not judicially reviewable (Thryv Inc. v. Click-To-Call Technologies L.P., et al., No. 18-916, U.S. Sup.).

  • December 09, 2019

    Illinois Federal Judge: Collateral Estoppel Bars Patent Action

    CHICAGO — In a Dec. 5 holding a federal judge in Illinois agreed with two defendants that two patents disclosing a device designed to secure portable electronic devices are invalid for the same reasons articulated by the Patent Trial and Appeal Board (PTAB) in its invalidation of two related patents owned by the plaintiff (Think Products Inc. v. ACCO Brands Corporation, et al., No. 18-7506, N.D. Ill., 2019 U.S. Dist. LEXIS 209426).

  • December 06, 2019

    Federal Circuit: Jury Trial Required In FRAND Rate Row

    WASHINGTON, D.C. — A California federal judge erred in denying a patent owner a jury trial on the calculation of a release payment based upon retrospective “fair, reasonable and non-discriminatory” (FRAND) rates for past unlicensed sales by appellees, the Federal Circuit U.S. Court of Appeals ruled Dec. 4 (TCL Communication Technology Holdings Ltd., et al. v. Ericsson Inc., et al., Nos. 2018-1363, -1732, Fed. Cir., 2019 U.S. App. LEXIS 36090).

  • December 05, 2019

    Facebook Persuades Board To Review Blackberry Info Pushing Patent

    ALEXANDRIA, Va. — A Blackberry Ltd. patent claiming a system and method for pushing information to a handheld device will be subject to upcoming inter partes review (IPR) by the Patent Trial and Appeal Board, the board announced Dec. 4 (Facebook Inc., et al. v. Blackberry Ltd., No. IPR2019-00941, PTAB).

  • December 05, 2019

    En Banc Rehearing Request Turned Away By Federal Circuit

    WASHINGTON, D.C. — In a Dec. 4 order, the full Federal Circuit U.S. Court of Appeals rejected an Enzo Life Sciences Inc. petition for en banc rehearing of an August holding that retroactive application of inter partes review to patents issued before the Leahy-Smith America Invents Act (AIA) is not unconstitutional (Enzo Life Sciences Inc. v. Becton, Dickinson & Company, et al., Nos. 2018-1232, -1233, Fed. Cir.).

  • December 04, 2019

    Board Institutes Review Of Golf Club Shaft, Head Connector Patent

    ALEXANDRIA, Va. — In a Dec. 3 ruling, the Patent Trial and Appeal Board found that a petitioner for inter partes review (IPR) demonstrated a reasonable likelihood that it will prevail with regard to allegations that at least one claim of a patented method for connecting a golf club shaft with a golf club head is obvious (Club Champion LLC v. True Spec Golf LLC, No. IPR2019-01148, PTAB).

  • December 04, 2019

    Divided Federal Circuit Upholds Federal Judge’s Noninfringement Finding

    WASHINGTON, D.C. — A grant of summary judgment by a federal judge in Delaware that an accused product does not infringe a patented method of manufacturing plastic fuel tanks was affirmed Nov. 21 in a sealed decision by a Federal Circuit U.S. Court of Appeals panel majority and was unsealed Dec. 3 (Plastic Omnium Advanced Innovation and Research v. Donghee America Inc., No. 18-2087, Fed. Cir., 2019 U.S. App. LEXIS 35823).

  • December 03, 2019

    Vaccine Stabilization Patent Could Be Obvious, Federal Circuit Says

    WASHINGTON, D.C. — In a Nov. 26 ruling, the Federal Circuit U.S. Court of Appeals vacated and remanded findings by the Patent Trial and Appeal Board that one claim of a Wyeth LLC patent directed to formulations for stabilizing polysaccharide-protein conjugate vaccines is not obvious (Merck Sharp & Dohme Corp. v. Wyeth LLC, No. 18-2133, Fed. Cir., 2019 U.S. App. LEXIS 35352).

  • December 02, 2019

    Federal Circuit Agrees: Post-Settlement, Appellant Lacks Standing

    WASHINGTON, D.C. — In a Nov. 27 per curiam, unsigned order, the Federal Circuit U.S. Court of Appeals agreed with an appellee that its global settlement with an appellant of allegations that a patented sleep apnea breathing mask is infringed deprived the court of authority to consider the merits of a decision of patentability by the Patent Trial and Appeal Board (Fisher & Paykel Healthcare Ltd. v. ResMed Limited, No. 18-2262, Fed. Cir.).

  • November 27, 2019

    Parties Brief High Court On Whether Inter Partes Review Time Bar Is Appealable

    WASHINGTON, D.C. — With Dec. 9 oral arguments in the U.S. Supreme Court approaching, the petitioner, respondent and the United States have all filed merits briefs addressing whether a decision by the Patent Trial and Appeal Board (PTAB) to institute inter partes review of a patent is reviewable by a court under provisions of the American Invents Act (AIA) (Thryv Inc. v. Click-To-Call Technologies L.P., et al., No. 18-916, U.S. Sup.).

  • November 26, 2019

    Judge Orders ‘Closed’ Response To Interrogatory In Patent, Trade Secret Dispute

    AKRON, Ohio — A federal judge in Ohio on Nov. 21 ruled that a company that develops self-inflating tire technology is required to supply a “closed” response to an interrogatory filed by defendants in a patent inventorship and trade secret misappropriation lawsuit describing in sufficient detail what trade secrets were alleged orally disclosed to the defendants in two 2009 meetings set up to discuss the parties’ potential partnership in the commercialization of the plaintiff’s technology (CODA Development s.r.o., et al. v. Goodyear Tire & Rubber Company, et al., No. 15-1572, N.D. Ohio, 2019 U.S. Dist. LEXIS 202114).

  • November 26, 2019

    Intellectual Ventures Responds To Rehearing Request In Patent Row

    WASHINGTON, D.C. — In a Nov. 21 response to a petition for panel rehearing or rehearing en banc, patent owners defend as proper the Federal Circuit U.S. Court of Appeals’ Sept. 10, 2019, affirmance of a Maryland federal judge’s dismissal on collateral estoppel grounds of antitrust counterclaims raised in an infringement action (Intellectual Ventures I LLC, et al. v. Capital One Financial Corporation, et al., No. 18-1367, Fed. Cir.).

  • November 26, 2019

    Patent Owner Tells Board To Reject Petition By Apple

    ALEXANDRIA, Va. — In a Nov. 25 response, a Korean company tells the Patent Trial and Appeal Board that it should confirm as patentable various challenged claims of a patent that discloses an “elegant solution to the problem of incorporating new functionalities, such as fingerprint authentication, into mobile devices while maintaining simplicity” (Apple Inc. v. Firstface Co. Ltd., No. IPR2019-00614, PTAB).