Insights
BSKB’s intellectual property attorneys write articles on important and timely topics in intellectual property law across a variety of industries. You’ll find the latest articles and industry insights here.
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November 29, 2016
Halo: A Fresh Approach to Enhanced Damages
World Intellectual Property Review
A US Supreme Court ruling has changed the landscape for determining damages in cases of wilful patent infringement, as explained in the first edition of a two-part article series.
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June 15, 2016
Halo Returns Law of Enhanced Damages to Pre-Seagate Standard
BSKB
On Monday, June 13, 2016, in Halo Electronics, Inc. v. Pulse Electronics, Inc., 579 U.S. _____; No. 14-1513, the Supreme Court turned back the clock on increased damages under 35 U.S.C. § 284, ruling that the test adopted in In re Seagate Technology, L.L.C., 497 F. 3d 1360 (Fed. Cir. 2007) “unduly confines the ability of the district courts to exercise the discretion conferred to them.”
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June 6, 2016
Breathing Life into Patents
Life Sciences Intellectual Property Review
Applicants wishing to extend their patents’ term of protection do not have to necessarily match up the wording of the claims and the label of the relevant drug for there to be infringement by an ANDA.
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May 2, 2016
Discovery In Post-Grant Review vs. Inter Partes Review
Law360
There are many factors that affect which type of post-grant proceeding to file, including timing for filing, estoppel, possible arguments for unpatentability, and available evidence. This article will focus on discovery in post-grant review versus inter partes review and evaluate whether or not additional discovery issues should be a factor in the decision of which proceeding to file. Currently, 10 post-grant reviews have been instituted and the number of patents eligible for post-grant review is growing as more and more America Invents Act patents are issued. For those patents that are eligible for post-grant review, would-be petitioners should evaluate whether a PGR or an IPR is the best option for arguing claims are unpatentable. Based on the limited data available, it appears that even though the number of possible issues in a PGR are broader and the standard for additional discovery is slightly more lenient, it is difficult to obtain additional discovery in a PGR. The ability to seek additional discovery in a PGR is much closer to that of an IPR as opposed to a district court proceeding.
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March 2, 2016
What We Know About Sanctions at the PTAB
Law360
In inter partes review, covered business method and post-grant review proceedings, the Patent Trial and Appeal Board can impose sanctions “against a party for misconduct,” which may include failure to comply with rules and orders; misleading or frivolous arguments or requests; factual misrepresentations; dilatory tactics; abusing discovery or “process;” and a catch-all “improper use of the proceeding.”[1] Possible sanctions include expunging filings; excluding evidence; precluding submission of papers, arguments or issues; awarding attorneys’ fees and “compensatory expenses”; requiring terminal disclaimers; and entering judgment or dismissing a petition.
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January 28, 2016
Amending Patent Claims During Inter Partes Review
Corporate Counsel
The dramatic shift of U.S. patent validity “litigation” from federal district court to the Patent Trial and Appeal Board (PTAB) of the U.S. Patent and Trademark Office (PTO)) has created a dilemma for patent owners. Construing claims based on their “broadest reasonable interpretation” (BRI), and applying a relatively low standard of proof at trial, PTAB final decisions have overwhelmingly sided against patent owners. Faced with this new reality, a patent owner involved in a fast-moving America Invents Act (AIA) post-grant proceeding, such as an Inter Partes Review (IPR), must understand all options available for preserving its valuable U.S. patent rights. This article explores one such option – motions to amend – and explains the procedural hurdles, pitfalls and consequences associated with amending claims during an IPR trial.
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January 27, 2016
Estoppel Arising From PTAB Trials
Corporate Counsel
More than two years has passed since the first final written decision in an inter partes review (IPR) in Garmin v. Cuozzo Speed Tech. While the process and rules for post-grant proceedings, such as IPRs, have been clarified by the numerous Patent and Trial Appeal Board (PTAB) decisions and reviews by the U.S. Court of Appeals for the Federal Circuit, one area that still has not been fully tested or developed is the application of estoppel arising from PTAB post-grant proceedings. There is little guidance from district courts as to how the “reasonably could have raised” standard for estoppel of petitioners will be applied. There is also little to no guidance regarding possible patent owner estoppel from either the district courts or the U.S. Patent and Trademark Office (PTO), and such guidance may not be available until enough time has passed for applications related to patents subject to post-grant proceedings are issued by the PTO and tested by district courts.
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January 26, 2016
Evidentiary Considerations in PTAB Trials
Corporate Counsel
Evidence submitted in a trial before the Patent Trial and Appeal Board (PTAB) varies considerably from that submitted in district court litigation in terms of form, substance and method and timing of presentation. A major factor to consider when selecting evidence to present in a PTAB trial is the audience receiving the evidence, which in the case of a PTAB trial is a panel of administrative patent judges (APJs) with formal scientific education and training and years of experience in patent law. Numerous orders regarding motions to exclude have noted the PTAB’s disfavor for such motions, usually noting the strong public policy for making all information filed in a non-jury, quasi-judicial administrative proceeding available to the public, especially in the determination of patentability of claims of an issued patent. This article will explore various issues, from the perspective of the petitioner and the patent owner, that must be considered when selecting evidence to be submitted in a PTAB trial.
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January 25, 2016
Attacking a Patent at the PTO: Beware the Real Party in Interest
Corporate Counsel
Patents are critical to the success of many companies, where having a good patent portfolio can protect commercial products, keep competitors out of the market and force licensing negotiations. Given the amount of patent litigation, with the latest patent reform laws of 2011, Congress has created new ways to attack and defend patents at the Patent Trial and Appeal Board (PTAB) of the U.S. Patent & Trademark Office (PTO) instead of district court or the International Trade Commission. The idea was to create an alternative forum for contesting patent validity and to reduce the amount of patent litigation. However, around 80 percent of PTAB procedures have concurrent litigation, though sometimes a stay in the litigation is possible. These PTO procedures are called post-grant review (PGR), inter partes review (IPR) and a PGR solely for business method patents (CBM), with IPR being by far the most popular.
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November 25, 2015
Getting The Last Word In PTAB Trials
Law360
Trials before the Patent Trial and Appeal Board are governed by specific rules that provide limited opportunities to make arguments and present evidence. The last substantive filing that is allowed as a matter of right depends on whether or not a patent owner files a motion to amend,[1] and will generally either be the petitioner’s reply or the patent owner’s reply in support of its motion to amend. Nevertheless, procedures are available after the last reply, whereby the other party can possibly have the last word in a PTAB trial. Examples of these procedures include seeking leave to file a sur-reply, to file observations on cross-examination, to file arguments based on the observations on cross-examination, or to seek a waiver of a rule if a party perceives that rule prevents it from having the due process rights to which it is entitled.
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October 1, 2015
Post Therasense: Why Supplemental Examination is Less Attractive
World Intellectual Property Review
It is likely that Therasense is the main reason that supplemental examination filings are so low and may not ramp up any time in the near future.
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September 29, 2015
Supplementing the Record in PTAB Trials by Filing Supplemental Information
Bloomberg BNA’s Patent, Trademark, & Copyright Journal
This article discusses how a party can supplement its case during an inter partes review (IPR) trial, primarily by asking for permission to file ‘‘Supplemental Information.’’ During preparation of this article, over 25 orders from the PTAB were reviewed.
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September 15, 2015
IP Update, Vol. 13, No. 7
BSKB
On August 13, 2015, Court of Appeals for the Federal Circuit (CAFC) issued their per curiam decision regarding liability for divided infringement under §271(a). Akamai Technologies, Inc. v. Limelight Networks, Inc. CAFC Case Nos. 2009-1372, 2009-1380, 2009-1416, 2009-1417. Previously, on May 13, 2015, the CAFC handed down their decision in the Limelight remand from the Supreme Court of the United States (SCOTUS). CAFC Case No. 2009-1372. In the remanded decision of May 13, 2015, the court found that Limelight was not guilty of direct infringement because Limelight and its customers were not acting as a single entity, nor was there a contractual relationship between Limelight and its customers. The CAFC then reconsidered the May 13, 2015 decision with an en banc panel.
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August 4, 2015
IP Update, Vol. 13, No. 6
BSKB
The July 30, 2015 Federal Register issued a statement that after receiving over sixty (60) comments from the public on on the 2014 Interim Patent Eligibility Guidance, the USPTO has produced a July 2015 Update: Subject Matter Eligibility.
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July 21, 2015
CAFC Decides Limelight Remand from U.S. Supreme Court
IP Frontline
On May 13, 2015, the CAFC handed down their decision in the Limelight remand. CAFC Case No. 2009-1372. The court found that Limelight was not guilty of direct infringement because Limelight and its customers were not acting as a single entity, nor was there a contractual relationship between Limelight and its customers. A full understanding of the CAFC decision in Limelight requires a review of the procedural history of the case.
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July 10, 2015
In re Cuozzo and the Broadest Reasonable Interpretation Standard – Should the Ability to Amend Be Relevant or Is It a Convenient Excuse?
BSKB
On July 8, in In re Cuozzo, the CAFC denied en banc review of a prior panel decision that confirms the PTAB can use a different standard for interpreting claims than a district court.
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July 1, 2015
IP Update, Vol. 13, No. 5
BSKB
On May 13, 2015, the CAFC handed down their decision in the Limelight remand. CAFC Case No. 2009-1372. The court found that Limelight was not guilty of direct infringement because Limelight and its customers were not acting as a single entity, nor was there a contractual relationship between Limelight and its customers. A full understanding of the CAFC decision in Limelight requires a review of the procedural history of the case.
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June 1, 2015
Method Patents: Questions of Diagnosis
Life Sciences Intellectual Property Review
Current US law makes it challenging for companies to establish infringement liability for third parties selling assays to be used in patented diagnostic methods or for third parties performing the critical (but not all) steps of a patented diagnostic method.
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May 31, 2015
New Claim Construction in IPR and PGR
World Intellectual Property Review
While the rate of filings for a postgrant review (PGR) trial has been slow, the rate of petitions filed to request an inter partes review (IPR) or a PGR specifically for a covered business method (CBM) patent trial have exceeded expectations. The rate of granting PGRs is around 70% for the fiscal year 2015, although it was higher in previous fiscal years. Once instituted, the petitioner has succeeded in canceling patent claims in more than 70% of cases.
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May 6, 2015
IP Update, Vol. 13, No. 5
BSKB
As mentioned in the IP Update from April 2, 2015, the Final Rules to the Hague Agreement concerning International Registration of Industrial Designs were issued in the Federal Register.