News

Federal Circuit Again Narrows Patent Venue

05.18.2018

The Federal Circuit recently narrowed the permissible venue choices for patent litigation. In re BigCommerce, No. 2018-120 (May 15, 2018), holds that a corporate defendant “resides” for the purpose of patent venue under 28 U.S.C. § 1400(b) in only one district within its state of incorporation (for states with multiple districts). That single district is…

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BE CAREFUL TO INCLUDE ALL INTERVENING APPLICATIONS IN PRIORITY CLAIMS

04.19.2018

In Droplets, Inc. v. E-Trade Bank, the patent applicant filed a continuation application that claimed priority to a pending parent application and an expired provisional application.  However, the priority claim did not include an intermediate continuation application filed between the parent application and the provisional application.  The Federal Circuit held that the patent-in-suit was only…

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Federal Circuit Finds Prosecution Disclaimer, No Help for Patent Owner

02.27.2018

In Arendi S.A.R.L. v. Google LLC, the Federal Circuit upheld a PTAB finding that Arendi’s claims at issue in an IPR were obvious, despite a narrow construction resulting from prosecution disclaimer.  Prosecution disclaimer traditionally arises when a patent applicant “clearly and unambiguously” surrenders claim scope during prosecution, usually by arguments and related claims amendments.  During prosecution,…

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Conley Rose Promotes Darlene Ghavimi to Principal

01.19.2018

Houston – January 2018 – Intellectual property law firm Conley Rose, PC is pleased to announce the promotion of Darlene F. Ghavimi to the position of Principal for 2018.  Ms. Ghavimi primarily represents clients in contentious and complex patent and trademark litigation.  She also has extensive experience in patent and trademark preparation and prosecution, infringement…

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Federal Preemption Bars State Law Unfair Competition Claim Premised on Violation of BPCIA

12.15.2017

In Amgen v. Sandoz, No. 2015-1499 (Dec. 14, 2017), the Federal Circuit held that 42 U.S.C. § 262 (the “BPCIA”) preempts state law claims for unfair competition.  The BPCIA provides for streamlined FDA approval of drugs that are “biosimilar” to previously approved drugs.  Similar to the Hatch-Waxman Act, a biosimilar application under the BPCIA also gives…

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Burden of Crafting Proper Hypothetical Claim Rests Solely with Patentee

11.03.2017

In Jang v. Boston Scientific (Sept. 29, 2017), the Federal Circuit rejected Dr. Jang’s attempt to prove infringement under the doctrine of equivalents.  Here, “ensnarement” limits the doctrine of equivalents whenever a hypothetical patent claim that literally covers the accused product would also ensnare the prior art.  When ensnarement is invoked to avoid infringement, the…

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CAFC Reverses PTAB, Reducing Burden for Corroborating Evidence for Conception and Reduction to Practice

09.26.2017

In NFC Technology v. Matal (September 2017), a panel of the Federal Circuit reversed the PTAB’s finding of obviousness based on the patent owner’s failure to antedate a prior art reference.  The PTAB held that a third party’s fabrication of a prototype did not inure to the benefit of the inventor for purposes of reduction to…

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CAFC Reverses PTAB and Cautions the PTO on Use of Inherency and Reasonable Expectation of Success

08.11.2017

In Honeywell v. Mexichem (August 2017), a panel of the Federal Circuit reversed the PTAB’s findings of obviousness from an inter partes reexamination.  Honeywell’s patent covered a refrigeration composition for air conditioning systems, including an unsaturated hydrofluorocarbon (HFC) refrigerant plus a polyalkylene glycol (PAG) lubricant.  The primary reference teaches the specific composition of HFC claimed…

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Potential Benefit of Means-Plus-Function Limitations

08.11.2017

Many US practitioners intentionally use means-plus-function limitations sparingly and in very limited situations. The recent Federal Circuit case IPCom v. HPC (July 2017) highlights one potential benefit of means-plus-function limitations. Specifically, the PTAB (via inter partes reexamination) treated the limitation “an arrangement for reactivating the link with the first base station if the handover is…

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More Clarity on AIA On-Sale Bar

08.11.2017

In a panel decision the US Court of Appeals for the Federal Circuit (CAFC) had its first opportunity to interpret the “or otherwise available to the public” clause included in 35 U.S.C. § 102 as revised under the AIA. Particularly, in this case, although the patentee entered into a publicly disclosed purchase agreement that covered the…

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PTAB Confirms Assignor Estoppel Not a Defense in IPR Proceedings

08.11.2017

Traditionally, the doctrine of assignor estoppel prevented a seller of a patent from challenging the validity of that patent. One situation where I have seen this arise is when an inventor assigns his/her rights in a patent to his/her employer in exchange for consideration, and subsequently, the inventor leaves that employer to start a competing business…

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