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The Federal Circuit recently determined that it lacked jurisdiction to review the Patent Trial and Appeal Board’s determination that assignor estoppel has no affect in an inter partes review (“IPR”).  The majority’s decision in Husky Injection Molding Sys Ltd., v. Athena Automation Ltd., Nos. 2015-1726, 2015-1727 (Fed. Cir. Sep. 23, 2016) effectively allows former patent owners and inventors to use IPRs to challenge patents they have since assigned.

Continue Reading CAFC’s Husky Decision Makes Sledding Tougher for Patent Owners in PTAB Appeals

723px-US-CourtOfAppeals-FederalCircuit-Seal_svgOn remand from the Supreme Court’s decision in Halo Elecs., Inc. v. Pulse Elecs., Inc., 136 S. Ct. 1923 (2016), the Federal Circuit recently issued a revised decision in Stryker Corp. v. Zimmer, Inc., No. 2013-1668 (Fed. Cir. 2016).  The decision provides insight into the court’s interpretation of the Halo standard and enhanced damages.

In its en banc decision in In re Seagate Technology, 497 F.3d 1360 (Fed. Cir. 2007), the Federal Circuit held that a district court may increase damages under 35 U.S.C. § 284 only if a patent owner shows by clear and convincing evidence that the infringer acted “despite an objectively high likelihood that its actions constituted infringement,” and then also showed, again by clear and convincing evidence, that the risk of infringement “was either known or so obvious that it should have been known to the accused infringer.”

Continue Reading Federal Circuit Revisits Willfulness Post Halo

Fed-Circuit-300x99The Federal Circuit relied on Nautilus to preserve functional language of a method claim in a decision published last Friday.  In Cox Comm, Inc. v. Sprint, No. 2016-1013, the Federal Circuit held that the term “processing system” did not render the asserted claims indefinite.  The Federal Circuit relied on novel considerations to reach this conclusion.  The Federal Circuit stated that because the term “processing system” “play[ed] no discernable role in defining the scope of the claims,” it was difficult to find the claims indefinite.

Continue Reading “Processing System” Does Not Render Claims Indefinite

Supreme-Court-seal II. jpgThe U.S. Supreme Court announced today that it will review whether the U.S. Trademark Office can deny registration of offensive trademarks or whether such prohibition violates the First Amendment. The dispute affects the constitutionality of Section 2(a) of the Lanham Act, which prohibits registration of such marks. The case originated in 2013 following the Office’s refusal to register THE SLANTS as a mark for an Oregon rock band on grounds that it was a derogatory slang phrase for people of Asian descent.

To read the full blog post on our Copyright & Trademark Matters blog, please click here.

shutterstock_390454867Three attorneys from Mintz Levin’s IP and Employment practices are featured writers in the American Bar Association’s Business Law Today publication, explaining the ins-and-outs of the Defend Trade Secrets Act (DTSA).  For the first time, the DTSA gives American companies the opportunity to protect against and remedy misappropriation of important proprietary information in federal court.

Businesses should be aware of the salient provisions of the DTSA in order to adequately prepare to employ its protections.  This article discusses these provisions, which include:

  1. the impact of instituting a uniform statute to be applied nationwide in federal court, where previously, companies seeking redress for trade-secret misappropriation had no choice but to sue in state court
  2. the now uniform definitions for the critical terms “trade secret” and “misappropriation”, as provided by the DTSA
  3. the new civil seizure mechanism
  4. the whistle blower immunity provision

To read the full article, please click here.

Two years after the Central District of California invalidated two 3-D animation patents under Section 101, the Federal Circuit reversed that court’s decision, finding that the lower court oversimplified the claims of a computer-related invention.  McRO, Inc. v. Bandai Namco Games Am. Inc., Nos. 2015-1080, et al., 2016 U.S. App. LEXIS 16703 (Fed. Cir. Sep. 13, 2016) (opinion by Judge Reyna, joined by Judges Taranto and Stoll).  While this case has stimulated  discussion in the legal community, as being a ground-breaker for the patentability of software patents since the Supreme Court’s decision in Alice Corp. v. CLS Bank Int’l, 134 S. Ct. 2347, 2355 (2014), the Federal Circuit’s McRO decision conforms with existing principles in post-Alice Section 101 law.  While the Federal Circuit disagreed with the lower court in applying these principles to the facts of this case, the McRO  decision does not change the core principle that patent claims directed to specific improvements in computer technology are patent-eligible.

The patents at issue in McRo (U.S. Patent Nos. 6,307,576 and 6,611,278) involve 3-D computer animation.  Their specifications describe that in the relevant art, applying the appropriate data points for basic sound phonemes, e.g. ‘aah,’ ‘ee,’ or ‘oo,’ was usually done using a “keyframe” approach.  McRO, 2016 U.S. App. LEXIS 16703 at *7.  In a keyframe approach, an animator sets the morph weights at certain important times, between which a computer program “interpolates” (filling in the data points between those morph weights).  Id. at *8.  The patents state that this method requires the animator to manually set a tediously high number of keyframes, which is time consuming, and can be inaccurate. Id.

Continue Reading In McRO, Federal Circuit Provides Further Guidance on Section 101

The October 2016 issue of Financier Worldwide features our article discussing the ITC’s general exclusion order procedure and how it impacts fighting counterfeit goods.  Though the US International Trade Commission (ITC) is most often thought of in terms of high stakes patent litigation, the issuance of a general exclusion order (GEO) by the ITC has always been a powerful tool for intellectual property owners to fight counterfeits and knockoffs. Word of the benefits of obtaining a GEO seems to have spread as in recent years the numbers of these orders, and the parties seeking them, have been increasing rapidly.

Companies seeking to stop a tide of imported knockoffs often find themselves playing legal whack-a-mole – they spend a great deal of money and time filing repeated cases in the US district courts against the sellers they can identify, but after it all find that the orders they worked so hard to obtain are difficult to enforce against small overseas companies which simply cease their official operations then re-emerge having changed their names, locations or channel of importation.

To read the entire article, please click here.

On September 9, 2016, Apotex Inc. filed a petition for writ of certiorari in the U.S. Supreme Court seeking review of the Federal Circuit’s decision in Amgen Inc. v. Apotex Inc., Case No. 2016-1308.  This case involves Apotex’s proposed filgrastim product, which is a biosimilar version of Amgen’s Neulasta®. At issue is whether the 180-day “Notice of Commercial Marketing” period provided by 42 U.S.C. § 262(l)(8)(A) of the BPCIA is always mandatory, and whether the Federal Circuit’s decision improperly extended the 12-year exclusivity period for reference product sponsors from 12 to 12 ½ years by holding that a biosimilar applicant cannot give effective Notice of Commercial Marketing for its biosimilar product until after it receives FDA license approval.

As previously discussed on this blog, the Federal Circuit held in Amgen Inc. v. Apotex Inc. that even though Apotex participated in the “information exchange” (a.k.a. the “patent dance”) envisioned by § 262(l) of the BPCIA, the statute’s “requirement of 180 days’ post-licensure notice before commercial marketing … is a mandatory one enforceable by injunction.”

Continue Reading Apotex to Supreme Court: Review BPCIA 180-Day Notice Requirement

Several months ago, we were struck with the question of whether, as counsel for a patent owner at the ITC, our clients’ case would benefit from a Markman hearing.  Claim construction during an ITC investigation was routinely performed as part of the evidentiary hearing in an investigation, rather than as part of earlier Markman proceedings.  This has now changed.  Recently appointed ALJs at the ITC have been trending towards conducting Markman hearings rather than pushing claim construction to the final hearing.  This new trend has resulted in additional litigation strategy considerations at the ITC, regarding whether Markman hearings are beneficial, or detrimental, and what affect the increase in Markman hearings have on investigations.

Claim construction will occur at some point in any patent-based ITC investigation.  From a patent owner’s perspective, the question is whether having a Markman hearing at the ITC will be helpful.  A negative claim construction order, especially early in the investigation, may imperil the ability to reach the evidentiary hearing as an adverse ruling could result in summary determination.  In contrast, a favorable claim construction order could result in added pressure for settlement.

Continue Reading Markman at the ITC and Its Effect on an Investigation

On September 22, Mintz Levin will host in our Boston office “Mobile Medical Applications – Navigating Regulatory, Profitability and Patentability”, a joint Boston Patent Law Association and MassMEDIC panel discussion. The program is moderated by Lisa Adams of Mintz Levin’s IP practice, and David Lane of  DePuy Synthes Spine’s IP team. Panelists:

  • Dianne Johnson, J&J’s Sr. Director of North American Policy & Intelligence
  • Bethany Hills, member of Mintz Levin’s health practice focusing on FDA issues
  • John Anastasi, attorney at Lando & Anastasi

The panelists will analyze and discuss several case studies and address questions such as: What types of mobile medical applications are subject to FDA regulation? What business models work best? And how can you best understand patentability of these applications?

We hope you can join us in Boston on September 22 from 5:00 – 7:00pm.

Register to attend.