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With Notice and Opportunity to Respond, PTAB May Raise New Patentability Issues Based on Art of Record

by McDermott Will & Emery | Apr 23, 2020 | America Invents Act, Patents

In an opinion concerning the notice provisions of the Administrative Procedure Act (APA), the US Court of Appeals for the Federal Circuit held that the Patent Trial and Appeal Board (PTAB) may identify a new patentability issue regarding proposed substitute claims based on prior art of record—but must first notify the parties and provide an opportunity to respond. Nike, Inc. v. Adidas AG, Case No. 20-1262 (Fed. Cir. Apr. 9, 2020) (Stoll, J.).

The decision is part of a long-running battle between Nike and Adidas that began in 2012, when Adidas filed a petition for inter partes review (IPR) of a patent owned by Nike. Nike subsequently filed a motion to cancel the existing claims and substitute new claims. Particularly relevant is a new claim that recites a knit textile upper element of a shoe containing “apertures” that can be used to receive laces and that are “formed by omitting stitches” in the knit textile.

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Bad Faith Required to Prevent Speech Regarding Potential Patent Infringement

by Lisa P. Rumin | Apr 15, 2020 | Patents

The US Court of Appeals for the Federal Circuit found that a district court abused its discretion in granting a preliminary injunction enjoining a patent holder from making claims of patent infringement without finding that those infringement claims were made in bad faith. The Federal Circuit reversed, vacated and remanded the district court’s decision. Myco Indus., Inc. v. BlephEx, LLC, Case No. 2019-2374 (Fed. Cir. Apr. 3, 2020) (O’Malley, J.).

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Trade Secret Claim Premised on Patent Inventorship Assertion Did Not Warrant Removal to Federal Court

by Alexander P. Ott | Apr 15, 2020 | Trade Secrets

Addressing a decision by California district court denying a motion to remand a trade secret case back to the California state court where it was originally filed, the US Court of Appeals for the Federal Circuit held that the removal to federal court was improper and vacated the district court’s decision. Intellisoft Ltd. v. Acer America Corp., Case No. 19-1522 (Fed. Cir. Apr. 3, 2020) (Dyk, J.).

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“Method of Preparation” Claims Found Patent-Eligible Under §101

by Mandy H. Kim | Apr 9, 2020 | Patents

Addressing the issue of patent eligibility under §101, the US Court of Appeals for the Federal Circuit reversed a district court, explaining that the method of preparation claims at issue are not directed to a patent-ineligible natural phenomenon. Illumina, Inc. v. Ariosa Diagnostics, Inc., Case No. 19-1419 (Fed. Cir. Mar. 17, 2020) (Lourie, J.) (Reyna, J., dissenting).

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Administrative Patent Judges – You’re Fired (At Will and Without Cause)

by McDermott Will & Emery | Apr 2, 2020 | Patents

The en banc US Court of Appeals for the Federal Circuit declined to review its October 2019 panel decision holding the appointment of administrative patent judges (APJs) at the US Patent and Trademark Office (PTO) unconstitutional because APJs are appointed as if they are “inferior officers” but vested with authority that is reserved for Senate-confirmed “principal officers” under the Constitution’s Appointments Clause. Arthrex, Inc. v. Smith & Nephew, Inc., Case No. 18-2140 (Fed. Cir. Mar. 23, 2020) (per curiam) (Moore, J., joined by O’Malley, Reyna and Chen, JJ., concurring) (Dyk, J., joined by Newman, Wallach and Hughes, JJ., dissenting).

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USPTO Clarifies Practice for Reviving Unintentionally Abandoned Patent Applications and Patents

by Amol Parikh | Mar 25, 2020 | Patents

The US Patent and Trademark Office (USPTO) issued a Notice clarifying its practice as to situations that will require additional information about whether a delay in seeking the revival of an abandoned application, acceptance of a delayed maintenance fee payment, or acceptance of a delayed priority or benefit claim was unintentional. 85 FED. REG. 12222 (Mar. 2, 2020).

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Choosing Advocacy over Candor Renders Patent Unenforceable

by Paul Devinsky | Mar 19, 2020 | Patents

The US Court of Appeals for the Federal Circuit upheld the district court’s finding that the patents-in-suit were unenforceable due to inequitable conduct because of a failure to disclose information related to an offer for sale of the claimed invention made more than one year prior to the critical date. GS Cleantech Corp v Adkins Energy LLC, Case Nos. 16-2231, 17-1838; GS Cleantech Corp. et al. v. Big River Resources Galva, LLC et al., Case No. 17-1832 (Fed Cir. March 2, 2020) (Wallach, J.)

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Patent-Eligible Improvements to Computer Functionality Must Be Directed to an Improvement of the Computer or Network Platform

by McDermott Will & Emery | Mar 19, 2020 | America Invents Act, Patents

Applying the US Supreme Court’s Alice v. CLS framework, the US Court of Appeals for the Federal Circuit upheld a Patent Trial and Appeal Board (PTAB) finding patent claims directed to data management and processing systems for merely storing advertising data were not patent eligible under 35 U.S.C. §101. Customedia Techs., LLC v. Dish Network Corp., Case No.18-2239 (Fed. Cir. Mar. 6, 2020) (Moore, J.)

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Antitrust Liability Risk When Listing Patents in Orange Book

by Noah Feldman Greene | Mar 5, 2020 | Antitrust, Patents

The US Court of Appeals for the First Circuit held that pharmaceutical companies that wrongly list patents in FDA’s Orange Book must prove they acted in good faith to avoid antitrust liability. In re Lantus Direct Purchaser Antitrust Litigation, Case No. 18-2086 (1st Cir. Feb. 13, 2020) (Kayatta, J).

In applying for FDA approval to market new drugs, drug manufacturers must list all patents that “claim” the drug or the method of using the drug in FDA’s “Orange Book.” Listing a patent in the “Orange Book” allows the drug manufacture to trigger an automatic 30-month stay of FDA approval of any application for a competing drug product.

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All in the Family: Prior Patent License Implicitly Grants License to Asserted Patent

by Amol Parikh | Feb 20, 2020 | Patents

The US Court of Appeals for the Federal Circuit affirmed a district court dismissal, finding that a patent license implicitly licensed all parents and continuations that disclosed the same invention as the explicitly licensed patent. Cheetah Omni LLC v. AT&T Services, Inc., Case No. 19-1264 (Fed. Cir. Feb. 6, 2020) (Lourie, J).

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