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Vincent Ferraro is an Associate based in our New York office. His practice focuses on patent litigation, and he has experience in cases involving telecommunications, cellphone technology, digital photography, image processing, electronic circuitry, LCD technology, financing, mechanical devices, medical devices and implants, consumer products, GPS technology, e-commerce, and Internet security.

DC_SupremeCourtIn keeping with recent erosion of patent rights, patent owners’ power to control the post-sale use and sale of their patented products was severely limited this week by the U.S. Supreme Court in the highly anticipated case regarding the patent exhaustion doctrine, Lexmark Int’l, Inc. v. Impression Prods., Inc., No. 15-1189.

As we reported earlier here and here, the Federal Circuit previously provided patent owners with some power to control their patented products—even after an authorized sale.  Specifically, the Federal Circuit held, in an en banc decision, that a patent owner’s patent rights are not exhausted if a patented product is sold with a clearly communicated restriction and that an authorized foreign sale of a product does not exhaust the patent owner’s U.S. patent rights to exclude associated with that product.

Continue Reading Supreme Court Overrules and Rewrites 25 Years of Federal Circuit Law on Patent Exhaustion

shutterstock_296971589Today, the Federal Circuit, vacated-in-part and remanded the Patent Trial and Appeal Board’s obviousness determination regarding a Securus Technologies patent directed to systems and methods for reviewing conversation data for certain events and bookmarking portions of the recording when something of interest is said, finding that the Board failed to provide any explanation for its decision with respect to certain challenged claims.

Continue Reading Federal Circuit to PTAB: No Short Cuts Allowed

Supreme-Court_95619505On Tuesday, the U.S. Supreme Court heard oral argument in the highly anticipated case regarding the patent exhaustion doctrine, Lexmark Int’l, Inc. v. Impression Prods., Inc., No. 15-1189.

As we reported earlier here, the Federal Circuit Court of Appeals, in an en banc decision, agreed with Lexmark and confirmed two important aspects of the patent exhaustion doctrine, namely that (1) a patentee can “sell[] a patented article subject to a single-use/no-resale restriction that is lawful and clearly communicated to the purchaser” without exhausting the patentee’s rights to that item, thereby permitting enforcement of the restrictions via an infringement suit; and (2) because foreign sales do not permit “the buyer to import the article and sell and use it in the United States,” an authorized foreign sale of a product does not exhaust a patentee’s U.S. patent rights to exclude associated with that product.  The Supreme Court subsequently granted Impression Product’s petition to review these two holdings.

Continue Reading The U.S. Supreme Court Hears Oral Argument in Much Anticipated Patent Exhaustion Case

On November 15, 2016, a split panel of the Federal Circuit, consisting of Judges Moore and O’Malley, ruled that the antedating standard demanded by the Patent Trial and Appeal Board, requiring a “continuous exercise of reasonable diligence,” was too exacting and in conflict with Federal Circuit precedent.  Slip Op. at 5-6 (emphasis in the original).

The appeal, Perfect Surgical Techniques, Inc. v. Olympus America, Inc. (Appeal No. 2015-2043), arose from the Board’s inter partes review (“IPR”) decision holding each claim at issue in U.S. Patent No. 6,030,384 (“’384 patent”) unpatentable as anticipated or obvious over Japanese Application Publication No. H10-33551 A (“JP ’551”).  In so finding, the Board determined that Perfect Surgical Techniques (“PST”) failed to antedate JP ’551 because it had not proven that the ’384 patent named inventor, Dr. Nezhat, was reasonably diligent in reducing his invention to practice.  The Board criticized PST for not showing “sufficiently specific … facts and dates” of Dr. Nezhat’s diligence during specific portions of the diligence period and ultimately concluded that PST failed to demonstrate Dr. Nezhat’s “continuous exercise of reasonable diligence for the entire critical period.”  Slip Op. at 6.

Continue Reading Federal Circuit Corrects the Board’s “Too Exacting” Diligence Standard

The Federal Circuit has ruled that the Patent Trial and Appeal Board cannot deny Patent Owner an opportunity to address portions of a prior art reference first discussed in Petitioner’s Reply, and then rely on those same portions to hold the claims unpatentable.

In re NuVasive (Appeal Nos. 2015-1672, -1673) involved the appeal of two separate inter partes review (“IPR”) proceedings initiated by Medtronic against U.S. Patent No. 8,187,334 directed to spinal implants.  Both petitions relied on the Michelson reference for teaching a single implant whose length is both greater than 40 mm and at least 2.5 times its width as recited in the ‘334 patent claims.  The petitions differed however in that one specifically discussed Michelson Figure 18 and the other did not.  Not until its reply in the latter IPR did Medtronic point to Figure 18 and argue that it disclosed the dimensional limitations.  Over NuVasive’s objection at the oral hearing and request to move to strike or file a sur-reply, the Board found that all challenged claims but one were obvious based, in large part, on Figure 18 of Michelson disclosing an implant with a length greater than 40 mm and at least 2.5 times its width.  Slip. Op at 6-7.

Continue Reading Failure to Let Patent Owner Address Unpatentability Arguments Relied on by the Board Violates Administrative Procedures

Business_CheckList2On April 22, 2016, a three judge panel of the United States Court of Appeals for the Federal Circuit, consisting of Judges Prost, Dyk and O’Malley, affirmed a district court’s decision to dismiss as moot a patent case involving only cancelled claims.

In Target Training Int’l, Ltd. v. Extended DISC North America, Inc., Case Nos. 2015-1873,  2015-1908, Plaintiff Target Training International, Ltd. (“TTI”) accused Extended DISC North America, Inc. (“EDNA”) of infringing U.S. Patent No. 7,249,372 (the “’372 Patent”) directed to  processing and distributing reports over a network in response to receiving input from a user.

After the lawsuit commenced, EDNA’s franchisor, Extended DISC International Oy Ltd (“EDI”) requested ex parte reexamination of all the claims (1-11) of the ’372 Patent.  The U.S. Patent and Trademark Office (“USPTO”) granted the request and the litigation was ultimately stayed pending the resolution of the reexamination.  Before the stay was entered, however, TTI had served its preliminary infringement contentions asserting claims 1, 2 and 5-11 of the ’372 Patent against EDNA.

Continue Reading Failure to Update Infringement Contentions with New Reexamination Claims Fatal for Patentee