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05/24/2022

Patent litigation funding panel at Patent Litigation Masters™ 2022 now discussing judgment preservation policies. Absolutely fascinating. Insurance policies setting a floor value for a judgment and the insurance policy then becomes the asset that can be collateralized, not the judgment, which changes the cost of money.

05/23/2022

“For 200 years, the world was getting along just fine without a policy statement on SEPs,” said Andrei Iancu discussing Biden Administration attempts to revisit the 2019 neutrality policy entered into between USPTO, NIST and DOJ. “Standard essential patents are patents too… the regular rule of law should apply.”

05/21/2022

IP Practice Vlogs: Claiming Foreign Priority - An Overview of Patent Cooperation Treaty, Paris Convention and Patent Prosecution Highway Practice

There are several ways to claim foreign priority for a patent application. The first option is filing an international application under the Patent Cooperation Treaty (PCT). In order to utilize this option, at least one of the applicants has to be a national or a resident of a country that is a PCT Contracting State. Upon filing, the applicant picks a receiving office, which is a national patent office designated for receiving the PCT application. A competent receiving office belongs to a location in which one of the PCT applicants is entitled to file a PCT application. Each PCT member state has a competent receiving office for its residents and nationals. The International Bureau of the World Intellectual Property Organization (WIPO) also acts as a receiving office in which all applicants are entitled to file PCT applications. In that case, the applicant can file directly with WIPO. Thirty to 31 months after initial filing, the application then enters the national stage and the applicant can select the countries in which it would like to file....

https://www.ipwatchdog.com/2022/05/21/ip-practice-vlogs-claiming-foreign-priority-overview-patent-cooperation-treaty-paris-convention-patent-prosecution-highway-practice/id=149177/

There are several ways to claim foreign priority for a patent application. The first option is filing an international application under the Patent Cooperation Treaty (PCT).

05/20/2022

What the PTAB’s CRISPR-Cas9 Decision for Broad Institute Means for Gene Editing Patent Landscape

“The PTAB decision means that a number of U.C.’s patents that are directed to using the CRISPR-Cas9 system in eukaryotic cells, could be rendered invalid…. In the event [they are found] invalid, U.C. could potentially lose significant licensing revenue.”

https://www.ipwatchdog.com/2022/05/20/ptabs-crispr-cas9-decision-broad-institute-means-gene-editing-patent-landscape/id=149141/

As previously reported here, on February 28, 2022 the Patent Trial and Appeal Board issued a decision in which it awarded inventive priority to the Broad Institute over the University of California on an invention covering applications of the CRISPR-Cas9 gene editing system in eukaryotic cells.

05/19/2022

Patent Filings Roundup: Hillman Group Petitions on Key Dupe Patents Denied Under Fintiv; Taxidermy Patent Filings Stuffed

It was a slow week at the Patent Trial and Appeal Board (PTAB) and a fast one in the district court, with 82 new patent complaints and 85 terminations, but just 18 patent filings at the PTAB. Those few filings were mostly a battery company challenging Maxell patents, a few bigger NPE cases, and Apple and Samsung filing against assertor Smart Mobile Technologies from the middle of last year. Askeladden had a petition denied on the merits, Microchip Technology had a petition denied on General Plastics, and The Hillman Group got four inter partes reviews (IPRs) denied under Fintiv, guaranteeing they will head to trial in the Eastern District of Texas; more below....

https://www.ipwatchdog.com/2022/05/19/patent-filings-roundup-hillman-group-petitions-key-dupe-patents-denied-fintiv-taxidermy-patent-filings-stuffed/id=149158/

It was a slow week at the Patent Trial and Appeal Board (PTAB) and a fast one in the district court, with 82 new patent complaints and 85 terminations, but just 18 patent filings at the PTAB.

05/18/2022

Patent Litigation Masters™ 2022 - IPWatchdog.com | Patents & Patent Law

Join us May 23-24 for Patent Litigation Masters 2022. We have an All-Star line-up of panelists and speakers. At the Hyatt Regency Dulles, just 5 minutes from Dulles International Airport (IAD).

Join us for the second annual Patent Litigation Masters™ 2022 program, presented by IPWatchdog®. Co-chaired by Gene Quinn (IPWatchdog), Meredith Addy (AddyHart) and David Henry (Gray Reed), this program will focus on patent litigation in the United States. We will explore litigation in the most a...

05/12/2022

Mailer’s Remorse: Notice Letters and Personal Jurisdiction for Declaratory Judgment Lawsuits

There are many reasons why patent holders might want to put potential infringers on notice of their rights. Such communications can serve the salutary goal of encouraging settlement of disputes without resort to lawsuits. And under some circumstances, notice may be legally necessary under 35 U.S.C. § 287 to enable a patent holder to recover damages for infringement. But a patent holder might be reluctant to do this if providing such notice can subject it to personal jurisdiction for a declaratory judgment suit in a remote and inconvenient forum....

https://www.ipwatchdog.com/2022/05/12/mailers-remorse-notice-letters-and-personal-jurisdiction-for-declaratory-judgment-lawsuits/id=148958/

There are many reasons why patent holders might want to put potential infringers on notice of their rights. Such communications can serve the salutary goal of encouraging settlement of disputes without resort to lawsuits.

05/07/2022

IP Practice Vlogs: Examining When Statements of Intended Use can Limit the Scope of a Patent Claim

Did you know that your claim preamble is more likely to be limiting when you’re dealing with a method claim versus an apparatus claim? In Cochlear Bone Anchored v. Oticon Medical AB, Cochlear’s claim recited a hearing aid apparatus “for rehabilitation of unilateral hearing loss” in the preamble. Cochlear was challenged at inter partes review (IPR) where Patent Trial and Appeal Board (PTAB) found the preamble term “for rehabilitation of unilateral hearing loss” did not limit the scope of the claims. The U.S. Court of Appeals for the Federal Circuit upheld the Board’s ruling, expressly finding that the statement of intended use is not limiting because the preamble did not furnish additional structure that was recited in the body of the claims, and provided no antecedent basis for any of the limitations in the body of the claim....

https://www.ipwatchdog.com/2022/05/07/ip-practice-vlogs-examining-statements-intended-use-can-limit-scope-patent-claim/id=148896/

Did you know that your claim preamble is more likely to be limiting when you’re dealing with a method claim versus an apparatus claim?

05/05/2022

Patent Filings Roundup: Third VLSI Trial on Fintiv-Denied Patents Postponed Over COVID Outbreak; Funded Single-Patent Semiconductor Campaign Files in ITC, District Courts; 225 Anonymous Platform Defendants Sued on Single Patent

My 40th birthday this week brought another litigation explosion (I assume no causation), with 120 new suits, double the average, though a spike is common at the ends of months and quarters; the new filings are dominated by filings by IP Edge, DynaIP, IP Valuation, and to a far lesser extent, Leigh Rothschild’s subsidiaries. There were a typical 30 inter partes reviews (IPRs) and no discretionary denials last week, coupled with an average 79 terminations in district court. A new abbreviated new drug application (ANDA) Paragraph IV suit was launched—GE Healthcare challenging the three remaining patents over their ANDA application to bring a generic Lexiscan® drug to market, against brand Astellas and Gilead. New funded semiconductor litigation and further trial postponements in VLSI rounded out this week....

https://www.ipwatchdog.com/2022/05/05/patent-filings-third-vlsi-trial-fintiv-denied-patents-postponed-covid-outbreak-funded-single-patent-semiconductor-campaign-files-itc-district-courts-225-anonymous-platform-defendants-sued-single-pat/id=148856/

My 40th birthday this week brought another litigation explosion (I assume no causation), with 120 new suits, double the average, though a spike is common at the ends of months and quarters.