Making Post Grant Extremely Expensive for Challengers

The America Invents Act (AIA) created three new ways to challenge the validity of claims in already-issued patents. The AIA was signed into law on September 16, 2011, but the new post grant proceedings did not become available until one year after the signing, on September 16, 2012. These three new post grant proceedings are post-grant review, inter partes review, and covered business method review (the latter a variety of post-grant review that is limited to business methods relating to the financial industry).

Inter partes review has been extraordinarily popular due to the fact that the rules are stacked in favor of the challenger. Indeed, recently, Scott McKeown (a partner at Oblon Spivak and co-chair of the Oblon post grant practice group) wrote on his blog that the Patent Trial and Appeals Board (PTAB) “offers unprecedented speed with none of the patentee safeguards of the district court.” The biggest safeguard that a patentee enjoys at the district court is a presumption of validity. The presumption of validity does not attach in a post grant administrative proceeding. That’s a significant benefit to the challenger.

Read the rest of this entry »

Federal Circuit Affirms Inequitable Conduct Against Apotex

Apotex Inc. and Apotex Corp. (collectively, “Apotex”) appealed the decision of the United States District Court for the Southern District of Florida finding that Apotex’s U.S. Patent No. 6,767,556 (“the ’556 patent”) is unenforceable due to inequitable conduct. Apotex likewise appealed the district court determination that the asserted claims were indefinite, that they disclaimed coverage of the accused products from the scope of the ’556 patent’s claims, and any recovery of pre-suit damages was barred by laches. In an opinion authored by Judge Reyna (with Judges Wallach and Hughes joining), the United States Court of Appeals for the Federal Circuit determined that the district court did not abuse its discretion in finding inequitable conduct, and on that basis alone, affirmed the district court’s judgment. See Apotex, Inc. v. UCB, Inc. (August 15, 2014).

The ’556 patent is generally directed to a process for manufacturing moexipril tablets. Moexipril is an angio-tensin-converting enzyme (“ACE”) inhibitor used to treat hypertension. To improve stability, the ’556 patent discloses a process of making moexipril tablets consisting mostly of moexipril magnesium obtained by reacting moexipril, or its acid-addition salts, with an alkaline magnesium compound.

Read the rest of this entry »

CAFC Reverses Summary Judgment for Lack of Adequate Written Description

In ScriptPro, LLC v. Innovation Associates, the Federal Circuit recently addressed the sufficiency of a disclosure vis-a-vis the patent claims issued.

The dispute arose when ScriptPro, LLC and ScriptPro USA, Inc. (collectively, “ScriptPro”) sued Innovation Associates, Inc, alleging infringement of claims 1, 2, 4, and 8 of U.S. Patent No. 6,910,601. The district court granted summary judgment for Innovation Associates, holding that the asserted claims were invalid under 35 U.S.C. § 112(a) because the specification describes a machine containing “sensors” and the claims at issue describe a machine that does not need to have “sensors.” ScriptPro appealed and the Federal Circuit, per Judge Taranto (with Judges Bryson and Hughes) reversed, finding summary judgement inappropriate.

Generally speaking, the ’601 patent describes as the invention a “collating unit,” which works with an “automatic dispensing system” that automatically fills and labels pill bottles or other prescription containers. The collating unit has a number of storage positions (e.g., slots) into which containers are placed as they emerge from the dispensing system. The claims at issue do not require “sensors,” although other claims of the ’601 patent do require the use of a “plurality of sensors.”

Read the rest of this entry »

Head-Mounted Wearable Tech

The field of wearable technology became somewhat “sexy” with the much-anticipated release of Google Glass, a lightweight pair of glasses that incorporates computer elements, sensors and other components, all for $1,500.  One goal of this system is to allow media capture of images, video and sound that replicate the Glass wearer’s point of view.

In February 2012, Google filed a patent application to protect a system of capturing pictures through a wearable device by analyzing a user’s gaze. A user looks through the viewfinder, which can detect the field of vision of a user based on the direction of that user’s gaze. This gaze information can be processed to determine the exact field of view for a user, and this data can be used to adjust the image being captured by the device. This patent application, U.S. Patent Application No. 20130222638, just recently received a non-final Office Action on August 12, 2014.

Read the rest of this entry »

08.13.14 | inventions, Patent Issues, posts | Gene Quinn

Judge Michel Sounds Off About Alice v. CLS Bank

Recently, I had the opportunity to sit down with Paul Michel, who we in the patent community know as the former Chief Judge of the United States Court of Appeals for the Federal Circuit. When Judge Michel stepped down as Chief Judge and retired several years ago, he told me that he decided to retire so he could say what needed to be said on behalf of the patent system, something he felt he couldn’t do while a member of the federal judiciary. Judge Michel has been true to his promise. He keeps an active schedule.

Judge Michel has been generous with his time over the past several years, and I have interviewed him on a number of topics. Most recently we discussed the Supreme Court’s patent decisions during the October 2013 term, spending most of our discussion on Alice v. CLS Bank.

Below are the highlights of my interview with Judge Michel. If you would like to read the entire interview, which lasted for approximately one hour and spans over 9,000 words, please see: Judge Michel says Alice Decision ‘will create total chaos’.

Read the rest of this entry »

PLI Recommends

  • Live Seminar
  • Featured Treatise
  • Live Seminar

     


PLI Discover PLUS

PLI Discover PLUS is an eBook library, which provides online access to all of PLI's publications.

Aaron Thompson, Andrew B. Grossman & Andrea Weiss Jeffries on Expert Direct/Cross-Examination . To purchase the complete program, click Here!

IPWatchdog





Blogroll

Recent Posts

Topics