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.
Optimizing Obviousness: Routine Optimization Can Fill in Prior Art Gaps
By Alexander Piala, PhD on Mar 14, 2024
Posted In Life Sciences, Patents
In an appeal from a Patent Trial & Appeal Board finding of invalidity, the US Court of Appeals for the Federal Circuit held that the result-effective variable doctrine can apply even when there is no overlap between a claimed range and a prior art range. The Court also held that before denying a motion to...
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Distinguishing Drinkware—Provisional Priority Determined Differently in Pre- and Post-AIA Patents
By Alexander Piala, PhD on Nov 30, 2023
Posted In America Invents Act, Patents
In a precedential final written decision, the Patent Trial & Appeal Board concluded that a patent does not need to contain a claim supported by a provisional application’s disclosure to draw priority to that provisional for prior art purposes post America Invents Act (AIA). Penumbra, Inc. v. RapidPulse, Inc., IPR2021-01466, paper 34 (PTAB Mar. 10,...
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No Fifth Chances: Ignoring Court’s Warning Leads to Terminal Sanctions
By Alexander Piala, PhD on Nov 9, 2023
Posted In Trade Secrets
In an appeal from litigation-ending sanctions, the US Court of Appeals for the Fifth Circuit held that misconduct in the face of judicial warnings supports the use of litigation-ending sanctions and that evidence a party forgot about does not count as “new” evidence when remembered for the purpose of a motion for reconsideration. Calsep A/S...
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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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