Alexander Piala, PhD
Subscribe to Alexander Piala, PhD's PostsAlexander Piala, PhD, advises on a broad range of intellectual property matters, including patent litigation, patent prosecution and transaction due diligence. He has extensive experience in the biotechnology and pharmaceutical sectors. His scientific background spans organic chemistry, biochemistry and protein structure/function relationships. Read Alexander Piala's full bio.
Whisk-y Business: Notice Alone Is Sufficient for Preliminary Injunction
By Alexander Piala, PhD on Sep 7, 2023
Posted In Trademarks
The US Court of Appeals for the Fifth Circuit concluded that only notice of a preliminary injunction (PI) motion, and not perfected formal service, is needed to assert jurisdiction to issue an injunction. Whirlpool Corp. v. Shenzhen Sanlida Elec. Tech. Co., Ltd., Case No. 22-40376 (5th Cir. Aug. 25, 2023) (Barksdale, Southwick, Higginson, JJ.) Shenzhen...
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Amending a Range? Better Enable It
By Alexander Piala, PhD on Jul 13, 2023
Posted In Patents
In a post-grant review appeal, the US Court of Appeals for the Federal Circuit explained that patent claims reciting a range must enable the full scope of that range and, under the Administrative Procedure Act (APA), the Patent Trial & Appeal Board is not bound to decisions rendered in a Preliminary Guidance. Medytox, Inc. v....
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CEO Punches Ticket and Avoids Sanctions Based on Receiving Confidential Documents
By Alexander Piala, PhD on Jun 29, 2023
Posted In Patents
Addressing protective order violations, the US Court of Appeals for the Fifth Circuit largely vacated a district court’s sanctions order. The Court explained that sanctions must comply with due process, barring parties from future litigation should be treated as a “death-penalty” sanction and damages calculations require specific factfinding. CEATS, Inc. v. TicketNetwork, Inc., Case No....
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Same Old Story: Copyright Discovery Rule Still Applies
By Alexander Piala, PhD on Apr 27, 2023
Posted In Copyrights
The US Court of Appeals for the Fifth Circuit affirmed a district court’s infringement determination, finding that the copyright owner’s claims were timely since they were brought within three years of discovering the infringement. Martinelli v. Hearst Newspapers LLC, Case No. 22-20333 (5th Cir. Apr. 13, 2023) (Barksdale, Southwick, Higginson, JJ.) In 2015, Sotheby’s International...
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Preliminary Injunction, Meet Irreparable Harm
By Alexander Piala, PhD on Apr 13, 2023
Posted In Trade Secrets
The US Court of Appeals for the Fifth Circuit, in a case where an ex-employer sought preliminary injunctive relief based on an alleged breach of non-disclosure and non-compete agreements and alleged misappropriation of confidential business information, ruled that the Texas presumption of irreparable harm for breach of non-compete clauses does not always apply and that...
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Compelling Clarity: PTO Director Explains Compelling Merits Test
By Alexander Piala, PhD on Mar 9, 2023
Posted In Patents
US Patent & Trademark Office (PTO) Director Katherine K. Vidal issued a precedential opinion clarifying the standard under which the Patent Trial & Appeal Board (Board) can institute on an inter partes review (IPR) petition despite the Fintiv factors militating toward denial. CommScope Techs. LLC v. Dali Wireless, Inc., IPR2022-01242 (PTO Feb. 27, 2023) (Vidal,...
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Patenting a Nice Cool Glass of Nicotinamide Riboside? Claims Covering Milk Invalid under § 101
By Alexander Piala, PhD on Feb 23, 2023
Posted In Patents
The US Court of Appeals for the Federal Circuit found that claims covering a naturally occurring composition were not patent eligible under 35 U.S.C. § 101 merely because one component of the composition had been “isolated.” ChromaDex, Inc. v. Elysium Health, Inc., Case No. 2022-1116 (Fed. Cir. Feb. 13, 2023) (Chen, Prost, Stoll, JJ.) ChromaDex sued...
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2023 IP Outlook: What to Watch in Patent, Trademark and Copyright Law
By Sarah Bro, Douglas Carsten, Syed K. Fareed, Mandy H. Kim, Charles Larsen, Christina (Tina) L. Martini, Jennifer M. Mikulina, Amol Parikh, Eleanor B. Atkins, Cecilia Choy, Ph.D., Anisa Noorassa, Alexander Piala, PhD, Joshua Revilla, Christian Tatum and Diana Pisani on Feb 7, 2023
Posted In Copyrights, EU Update, Life Sciences, Patents, Technology, Trademarks
Coming out of 2022, developments around the globe are shaping the intellectual property (IP) landscape in the new year. We are seeing cases at the intersection of IP law and NFTs, the opening of the Unified Patent Court in Europe, and decisions from the Supreme Court of the United States and the Court of Appeals...
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Cloudy Skies: PTO Director Finds Abuse and Sanctionable Conduct
By Alexander Piala, PhD on Oct 13, 2022
Posted In Patents
The US Patent & Trademark Office (PTO) Director issued a precedential opinion finding that filing an inter partes review (IPR) solely to extract payment in a settlement—without the intent to prosecute the IPR to completion—is a sanctionable abuse of process. OpenSky Indus., LLC v. VLSI Tech. LLC, IPR2021-01064 (Oct. 4, 2022) (Vidal, Dir.) In 2019,...
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Bayou Jambalaya: Sanction Motions, Motions to Vacate and Trade Dress Injunctions
By Alexander Piala, PhD on Sep 8, 2022
Posted In Trademarks
The US Court of Appeals for the Fifth Circuit issued a three-part ruling that affirmed the district court’s denial of a motion to vacate as void the judgment based on Rooker-Feldman doctrine because the earlier state and district court decisions were not “inextricably intertwined,” affirmed the district court’s permanent injunction because the district court based...
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