Jake B. Vallen
Subscribe to Jake B. Vallen's PostsJake Vallen focuses his practice on intellectual property litigation matters. Read Jake Vallen's full bio.
Specially Convened Rehearing Panel Vacates IPR Institution Denial
By Jake B. Vallen on Mar 21, 2024
Posted In Life Sciences, Patents
In a rehearing decision issued by a Delegated Rehearing Panel specially convened by the US Patent & Trademark Office (PTO) Director, the Patent Trial & Appeal Board vacated a prior panel decision denying institution, modified the claim construction to account for a “clear and unmistakable” prosecution history disclaimer, and remanded for further proceedings consistent with...
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Same Applicant, Similar Claims Support Obviousness-Type Double Patenting Rejection
By Jake B. Vallen on Jan 4, 2024
Posted In Patents
The US Court of Appeals for the Federal Circuit affirmed a Patent Trial & Appeal Board obviousness-type double patenting rejection, finding that an unexpected mechanism of action does not render the known use of a known compound nonobvious. In re: Institut Pasteur, Case No. 22-1896 (Fed. Cir. Dec. 13, 2023) (Taranto, Clevenger, Stoll, JJ.) (nonprecedential)....
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Store This Element: Lexicography Controls Claim Term Definition Over Plain and Ordinary Meaning
By Jake B. Vallen on Dec 21, 2023
Posted In Patents
The US Court of Appeals for the Federal Circuit affirmed a Patent Trial & Appeal Board obviousness finding, determining that the Board properly applied the patentee’s lexicography in construing a disputed claim term and properly treated arguments raised by the parties in the reply and sur-reply briefings. ParkerVision, Inc. v. Vidal, Case No. 22-1548 (Fed....
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Delay Is Okay: Final Written Decisions Can Be Issued After Statutory Deadline
By Jake B. Vallen on Nov 30, 2023
Posted In America Invents Act, Patents
In a matter of first impression, the US Court of Appeals for the Federal Circuit concluded that the Patent Trial & Appeal Board has the authority to issue a final written decision (FWD) in a post-grant review (PGR) proceeding after the statutory deadline has passed. Purdue Pharma L.P. v. Collegium Pharm., Inc., Case No. 22-1482...
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Standard Practice: The Public Has Right to Copyrighted Material Incorporated Into Law
By Jake B. Vallen on Sep 28, 2023
Posted In Copyrights
In a case that attracted a slew of amicus curiae participation and was the most recent in the series of American Society for Testing and Materials (ASTM) copyright cases, the US Court of Appeals for the District of Columbia Circuit affirmed the district court’s holding that the noncommercial dissemination of standards, as incorporated by reference...
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The End Is Not So Near: Patent Term Adjustments Count in Obviousness-Type Double Patenting Determinations
By Jake B. Vallen on Sep 7, 2023
Posted In Patents
Addressing for the first time how patent term adjustments (PTAs) interact with obviousness-type double patenting (ODP), the US Court of Appeals for the Federal Circuit concluded that when members of a patent family have different expiration dates due to PTAs, the earlier expiring family members can be used as a basis for an ODP invalidity...
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No Snipe Hunting: AIA Adherence Means No Interference (Proceedings)
By Jake B. Vallen on Jul 27, 2023
Posted In America Invents Act, Patents
The US Court of Appeals for the Federal Circuit concluded that patents and applications that have only ever contained claims with an effective filing date after March 16, 2013—i.e., pure America Invents Act (AIA) patents—may not be subjected to an interference proceeding by the US Patent & Trademark Office (PTO) Director. SNIPR Techs. Ltd. v....
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Double Jeopardy Doesn’t Attach to Venue and Vicinage Clause Violations
By Jake B. Vallen on Jun 29, 2023
Posted In Trade Secrets
The Supreme Court of the United States concluded that the Constitution’s Double Jeopardy Clause does not preclude retrial of a criminal defendant who was prosecuted in an improper venue and before a jury drawn from the wrong district. Smith v. United States, Case No. 21-1576 (Sup. Ct. June 15, 2023) (Alito, Justice.) Timothy Smith was...
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Strike 1: Priority. Strike 2 :Likelihood of Confusion. Strike 3: You’re Out under Section 2(d).
By Jake B. Vallen on Apr 27, 2023
Posted In Trademarks
The Trademark Trial & Appeal Board affirmed the rejection of three trademark applications, finding that the applied-for marks would cause confusion with a record-setting major league baseball player. Major League Baseball Players Ass’n v. Chisena, Opp. Nos. 91240180; 91242556; 91243244 (TTAB Apr. 12, 2023) (Cataldo, Heasley, Larkin, ATJ.) (precedential). Michael P. Chisena sought registration of...
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Disclaiming Claim Scope: Could the Patentee Have Anticipated This?
By Jake B. Vallen on Apr 6, 2023
Posted In Patents
In the most recent decision in the Apple/VirnetX saga, the US Court of Appeals for the Federal Circuit affirmed a remand ruling from the Patent Trial & Appeal Board finding the challenged claims of VirnetX’s patents unpatentable. VirnetX Inc. v. Mangrove Partners Master Fund, Ltd., Case No. 2020-2271 (Fed. Cir. Mar. 30, 2023) (Moore, C.J.;...
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