Patent Law Practice Center

Top 5 Patent Blog Posts of the Week

Today we continue our weekly installment highlighting the best of the patent blogosphere from the past week. If there are any patent blogs you think should be highlighted by our Top 5, please comment on this post and we’ll check them out.

1) CAFC Blog: Revisiting Therasense, CAFC Finds That An Inventor’s Subjective Belief That Submission of Documents Was Unnecessary May Not be Sufficient to Avoid a Showing Of Intent to Deceive – This post discusses Aventis Pharma S.A. and Sanofi-Aventis U.S. LLC v. Hospira Inc. and Apotex Inc. and shares how the CAFC  found that the patents were invalid over withheld references, and unenforceable for inequitable conduct.

2) IP Watchdog: Beware Twitter’s New Patent Agreement Scheme – This post highlights and critiques Twitter’s announcement that  later this year it will implement what they are calling the “Innovators Patent Agreement,” which they claim will ensure that patents are only used for defensive purposes.

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Chief Judge Rader to Speak at Patent Law Institute on All-Star Panel!

Patent law heavyweights will convene for what looks to be two very special days in New York City at PLI’s 6^th Annual Patent Law Institute on February 16-17^th.

 Chief Judge Randall Rader of the Federal Circuit will participate in an all-star dialogue panel between the bench and bar along with United States District Judge William Young and nationally-recognized expert practitioners Donald Dunner, Seth Waxman and Dean John Whealan of the George Washington University Law School.

Robert Stoll, who recently retired as Commissioner for Patents at the USPTO, is slated to open the program with a PTO keynote address. Commissioner Stoll is expected to report the latest developments regarding the PTO’s on-going implementation of the America Invents Act and other critical PTO developments.

Co-Chairs Scott M. Alter (Faegre Baker Daniels LLP), Douglas R. Nemec (Skadden, Arps, Slate, Meagher & Flom LLP) and John M. White (Berenato & White; Director of Patent Professional Development, Practising Law Institute) will navigate attendees through 6 exciting plenary sessions that discuss the practice impacts of recent Supreme Court and Federal Circuit decisions, AIA changes, current critical patent issues from the corporate counsel perspective, views from the District Court bench, the never-ending PTO changes and for good measure, an hour of legal ethics credit! (more…)

Scott McKeown on Which Comes 1st: The USPTO or the Court?

The hierarchy of the U.S. court system is well established, but recent patent law cases have challenged this hierarchy with the power of government agency – the USPTO to be exact. Scott McKeown, Partner at Oblon, Spivak, Practice Center Contributor and author of Patents Post Grant Blog, recently wrote two articles concerning the USPTO’s reexamination process and how its parallel nature to patent infringement cases resulted in conflict that’s occurred with the U.S. Court of Appeals of the Federal Circuit (CAFC) as well as with the U.S. District Court in the District of Connecticut. Scott explains the patent law issue:

Patent reexamination is often initiated in parallel with an ongoing infringement litigation. In the case of a parallel inter partes proceeding (IPX), the first of the proceedings to conclude (litigation or IPX) controls the outcome of the other by operation of statutory estoppel. As such, a final holding in the parallel court proceeding will end an ongoing IPX. Moreover, the losing party would be precluded from seeking IPX at a later date.

On the other hand, ex parte patent reexamination (EXP) has no such statutory “shut off valve.” Thus, even a party that was bound by IPX estoppel could file a request for ex parte patent reexamination. In this way, the infringer could attempt to “undo” the effect of the earlier, final, court judgement by invalidating the patent via the EXP filing. (more…)

Teva v. AstraZeneca – Does an Inventor Need to Understand How a Prior Invention Works in Order to Have that Prior Invention Defeat Another’s Patent?

Written by Gerald M. Murphy, Jr., Partner at Birch Stewart Kolasch & Birch, LLP 

On December 1, in Teva Pharmaceutical Ind. Ltd. v. AstraZeneca Pharmaceuticals LP, the Federal Circuit explained when a secret invention can be considered “made” (or conceived and reduced to practice) so that it can be used as prior art against a patent.  Briefly, the CAFC held that an invention can be considered “made” if the inventive entity “did not do so by accident and it knew what it had made.”  It is not necessary for the prior inventor to “know everything about how or why its invention worked.”

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HTC Claims Intervening Rights Against Apple In ITC Case

Scott Daniels, Partner at Westerman, Hattori, Daniels & Adrian and Practice Center Contributor, sent in this article discussing the pending ITC investigation of HTC’s mobile communication devices.  Daniels raises interesting questions regarding HTC’s latest motion asking the ITC  for a determination that it does not infringe one of Apple’s patents because it’s entitled to “absolute intervening rights” against Apple.

HTC might be making a comeback in the ITC’s investigation of mobile communication devices  (337-TA-710).  In July Administrative Law Judge Charneski issued an Initial Determination (ID) against HTC, finding that its accused communication devices infringe two data manipulation patents owned by Apple.  That determination, if affirmed by the full Commission, would likely result in exclusion from entry into the United States of HTC’s infringing devices.

But in September the full Commission announced that it was reviewing Judge Charneski’s ID against HTC.  And, in a step that will interest reexamination practitioners, HTC asked the ITC for a determination that it does not infringe one of the Apple patents – U.S. Patent No. 5,946,647 – because HTC is entitled to “absolute intervening rights” created in a co-pending reexamination of Apple’s ‘647 patent. (more…)