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Prevailing at the PTAB Can Mean Prevailing Party Attorneys’ Fees

by Jodi Benassi | May 7, 2020 | Patents

Addressing whether attorneys’ fees may be awarded in a patent infringement lawsuit where an accused infringer successfully invalidates claims in an inter partes review (IPR) proceeding, the US Court of Appeals for the Federal Circuit found that the accused infringer is considered the “prevailing party” for purposes of 35 U.S.C. § 285, but remanded for consideration on whether fees incurred in IPR proceedings can be awarded. Dragon Intellectual Property, LLC v. DISH Network LLC, et al., Case No. 19-1283 (Fed. Cir. Apr. 22, 2020) (Moore, J.).

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CBD Products in the Time of COVID-19: Best Practices for Making Your (Trade)mark

by Sarah Bro | May 4, 2020 | Trademarks

In the midst of an unprecedented and unsettling global pandemic, one constant remains: certain entrepreneurial-minded folks will not miss the opportunity to file trademark applications for new “brands” that align with the latest news cycle. COVID-19 is no different. The United States Patent and Trademark Office (USPTO) has experienced a swell of new US trademark applications for COVID-related trademarks, with many of the marks using descriptive terms or phrases that have become commonplace in a shelter-in-place, #wfh and social distancing world.

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Defendant Not “Prevailing Party” for Purposes of Attorneys’ Fees After Voluntary Dismissal Without Prejudice

by Paul Devinsky | Apr 30, 2020 | Patents

The US Court of Appeals for the Federal Circuit affirmed a district court’s denial of attorneys’ fees under § 285, finding that a defendant is not a “prevailing party” for purposes of collecting attorneys’ fees where the plaintiff voluntarily dismissed its case without prejudice and there was no final court decision designating either litigant as the prevailing party. O.F. Mossberg & Sons, Inc. v. Timney Triggers, LLC, Case No. 19-1134 (Fed. Cir. Apr. 13, 2020) (Hughes, J.).

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Neither AIA Proceeding nor Government Infringement Constitute Fifth Amendment Taking

by Paul Devinsky | Apr 30, 2020 | America Invents Act, Patents

The US Court of Appeals for the Federal Circuit upheld a US Court of Federal Claims dismissal, rejecting arguments that patent infringement is a taking under the Fifth Amendment. Golden v. United States, Case No. 19-2134 (Fed. Cir. Apr. 10, 2020) (O’Malley, J.).

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Can’t Have Layered Architecture Cake and Eat It Too: No Importing Limitations from Specification in § 101 Analysis

by Thomas DaMario | Apr 30, 2020 | Patents

Addressing both the availability of appeal in the absence of a Rule 50(b) motion and the appropriateness of importing limitations from the specification in a 35 USC § 101 analysis, the US Court of Appeals for the Federal Circuit reversed a district court’s ruling that a patent was not invalid under § 101. Ericsson Inc. v. TCL Commc’n Tech. Holdings Ltd., Case No. 18-2003 (Fed. Cir. Apr. 14, 2020) (Prost, CJ.) (Newman, J., dissenting).

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Stratus Update: Federal Circuit Affirms TTAB Refusal to Register Telecoms Mark

by McDermott Will & Schulte | Apr 30, 2020 | Trademarks

The US Court of Appeals for the Federal Circuit affirmed a US Patent & Trademark Office (PTO) Trademark Trial and Appeal Board (TTAB) refusal to register the mark STRATUS over the existing registration for STRATA, finding a likelihood of confusion between the two marks. Stratus Networks, Inc. v. UBTA-UBET Communications, Inc., Case No. 19-1351 (Fed. Cir. Apr. 14, 2020) (Reyna, J.).

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Emmy Award to the Rescue – Secondary Considerations Overcome Prior Art

by McDermott Will & Schulte | Apr 30, 2020 | America Invents Act

The Patent Trial and Appeal Board (Board), in a decision designated as precedential, found that a Patent Owner’s substitute claims were patentable in view of evidence of secondary considerations even though the prior art weighed in favor of obviousness. Lectronics, Inc. v. Zaxcom, Inc., Case No. IPR2018-01129 (PTAB Jan. 24, 2020) (Deshpande, APJ.) (designated precedential on Apr. 14, 2020).

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Claims Need Only Inform a Skilled Artisan of the Metes and Bounds with Reasonable Certainty

by McDermott Will & Schulte | Apr 23, 2020 | Patents

In a case involving claims with functional language and means-plus-function limitations, the US Court of Appeals for the Federal Circuit found that the district court erred in its determination that three claim terms were indefinite, but agreed with the district court that a fourth term was not indefinite. Nevro Corp. v. Boston Sci. Corp., Case Nos. 18-2220; -2349 (Fed. Cir. Apr. 9, 2020) (Moore, J.).

Nevro owns patents for improved technologies for high-frequency spinal cord stimulation therapy to alleviate pain, while avoiding side effects associated with conventional stimulation therapies. Several of the asserted claims recite systems and devices in which the stimulation therapy signals are “paresthesia-free,” meaning they do not cause a tingling, pins-and-needles sensation. The district court found the claimed “paresthesia-free” systems and devices to be indefinite because infringement of the claim depends on the effect of the system on the patient, so a skilled person cannot understand the metes and bounds of the claim with reasonable certainty. Nevro appealed.

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Prima Facie Obviousness Established Where Claimed pH Range Overlaps with Prior Art Range for Similar Compounds

by Mandy H. Kim | Apr 23, 2020 | Patents

The US Court of Appeals for the Federal Circuit reversed a district court’s summary judgment that found a patent was not obvious because the claimed pH range would not have been obvious-to-try despite overlapping ranges between the claimed pH range and the pH range for similar prior art compounds. Valeant Pharms. Intl. v. Mylan Pharms. Inc., Case No. 18-2097 (Fed. Cir. Apr. 8, 2020) (Lourie, J.).

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Claimed Process Not Anticipated by Third-Party’s Prior Secret Use

by James M. Oehler | Apr 23, 2020 | Patents

Declining to extend the public-use bar to third-party commercial uses of secret processes, the US Court of Appeals for the Federal Circuit reversed a summary judgment ruling that found a patent invalid under the “known or used by others,” “on-sale” and “public-use” bars of 35 U.S.C. § 102. BASF Corp. v. SNF Holding Co. et al., Case No. 19-1243 (Fed. Cir. Apr. 8, 2020) (Lourie, J.).

BASF owns a patent on a process for preparing certain polymers. The claimed polymerization process allows easy removal of “sticky” polymers from walls of the tubular reaction vessel by including a conical taper with specific dimensions at the bottom of the vessel. BASF filed a patent infringement suit against SNF, who in turn alleged that the prior art “Sanwet” process invalidated the patent. The Sanwet process was developed in Japan by Sanyo and licensed to third-party Celanese for use in the US prior to the patent’s critical date. Sanyo provided substantial technical support to help Celanese with the process. Celanese was required to keep the Sanwet process confidential and could only disclose information to employees on a need-to-know basis. Employees were also required to sign confidentiality agreements.

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