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Genus Claims: Foiled again by Written Description

September 16, 2021 | Blog | By Rithika Kulathila, Thomas Wintner

In late August of 2021, the Federal Circuit reversed a jury verdict of $1.2 billion in favor of Juno Therapeutics and Sloan Kettering Institute because the jury’s finding that four of the asserted patent claims did not lack adequate written description under 35 U.S.C. § 112 was not supported by substantial evidence.
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US Open for FRAND Business: The Fifth Circuit Vindicates Ericsson, Finding that Ericsson’s Offers were FRAND

September 3, 2021 | Blog | By Michael Renaud, Daniel Weinger, Meena Seralathan

The United States FRAND jurisprudence had a recent watershed moment in a decision that is sure to reverberate through the standard essential patent (SEP) world, and specifically SEP litigation in the United States. Earlier this week, a Fifth Circuit panel affirmed a jury verdict that found licensing offers made by Ericsson to HTC for Ericsson’s 4G SEPs complied with Ericsson’s FRAND obligations, the first jury verdict of its kind in the United States.
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After an inter partes review (“IPR”) is instituted, a patent owner may move to amend challenged claims to overcome the prior art. Here we provide some further information for patent owners considering ways to amend claims that are challenged in IPR by filing a reissue application or requesting reexamination.
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Nonobviousness of Commercially Successful Designs: Mmm, Mmm, Not So Fast

August 31, 2021 | Blog | By Adam Samansky, Peter Cuomo, Serge Subach

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Here are four tips for improving your chances of convincing PTAB to grant a motion to amend your claims.
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PTAB statistics show interesting trends for Orange Book and biologic patents in AIA proceedings

August 24, 2021 | Blog | By Peter Cuomo, Joe Rutkowski, Nana Liu

The PTAB recently published the first update to its 2019 study of AIA trials involving petitions challenging Orange Book-listed patents and biologic patents through June 2021. Highlights of these pharmaceutical patent challenge statistics include, e.g., the number of these petitions filed, the number of instituted trials, and the trial outcomes since fiscal year 2013.
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See the guidelines on the procedural aspects of filing a motion to amend claims.
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We look to those circumstances when a patent owner should think twice about amending, including when significant past damages exist, the current claims possess strong infringement reads and claim scope, petitioners are highly-motivated to fight and patent owner is cost sensitive.
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AI in Biotech and Synthetic Biology: What Can Be Protected? What Should Be Kept Secret?

August 11, 2021 | Blog | By Joshua Berk, Lily Zhang, Terri Shieh-Newton

Machine learning (ML), bioinformatics, artificial intelligence (AI), and other computational tools have become ubiquitous in the biotech and synthetic biology industries because such technology allows for rapid processing of a large amount of complex data to produce advancements in therapeutics and diagnostics. As the landscape becomes increasingly more competitive, it is important for companies, particularly in the aforementioned industries, to obtain patent protection for their AI-related technology.
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Patent Owner Tip #13 for Surviving an Instituted IPR: When to Amend Claims in an IPR

August 6, 2021 | Blog | By Monique Winters Macek, Michael Newman

After an inter partes review (“IPR”) is instituted, a patent owner has an opportunity to file a motion to amend the claims and thereby propose a reasonable number of substitute claims. Here we provide some instances where a motion to amend may be a favorable option for a patent owner to consider. 
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Federal Circuit Reminds the PTAB that the APA Process Still Matters

August 3, 2021 | Blog | By Daniel Weinger, Laura Petrasky

The Federal Circuit recently found that the Patent Trial and Appeal Board (“Board”) violates a patent owner’s procedural rights under the Administrative Procedure Act (“APA”) when construing a disputed claim term by omitting an uncontested requirement in its construction.
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In inter partes review (IPR) proceedings, the PTAB will often uphold the validity of dependent claims despite finding the independent claim invalid.  Dependent claims recite additional limitations that must be separately accounted for in the prior art references in the Petitioner’s asserted grounds.
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It is no question that Artificial Intelligence (“AI”) technologies have popped up in all aspects of society such as online shopping, music streaming, and social networking. The U.S. Patent and Trademark Office (“USPTO”) has even reported that patents which incorporate AI has increased from under 5% in 1980 to over 20% in 2018. Among those organizations that utilize AI is the USPTO itself.
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PATENT 101: Key Considerations and Activities for Establishing a Patent Program (Part 1 of 3)

July 7, 2021 | Blog | By Michael Van Loy, Kevin Amendt, Nicholas Eadie

Tasked with starting an innovation protection and patent development program at your company but do not know where to begin? This three part series describes the key components to a patent development program for any company, small or large.
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Supreme Court Hammers Final Nail in the IP Bridge v. TCL Coffin

July 2, 2021 | Blog | By Michael Renaud, Daniel Weinger, Kara E. Grogan

On Monday, the Supreme Court denied TCL Communication’s certiorari petition, without comment, appealing the Federal Circuit’s ruling that the essentiality of a patent claim is a question for the jury rather than judges to resolve during claim construction.  The denial of cert by the Supreme Court cements the Federal Circuit ruling which made proving infringement of standard essential patents easier by allowing reliance on the standard to show such infringement. 
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Patent Owner Tip #11 for Surviving an Instituted IPR: Use It or Lose It (in the POR)

July 1, 2021 | Blog | By William Meunier, Rithika Kulathila

When faced with an instituted IPR, the Patent Owner should include all arguments it wishes to preserve for appeal in its Patent Owner Response (“POR”), including arguments that the Patent Owner believes are unlikely to succeed before the Board but may be attractive to the Federal Circuit.  Otherwise, the argument will be deemed waived and unavailable in any subsequent appeal.
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Arthrex SCOTUS Ruling: The IPR Show Must Go On, Just with (a Bit) More Oversight

June 24, 2021 | Blog | By William Meunier, Brad M Scheller, Andrew DeVoogd, Rithika Kulathila

On Monday, in a highly-anticipated decision, a fractured Supreme Court issued its opinion in Arthrex v. Smith & Nephew, striking a portion of the America Invents Act (AIA) as unconstitutional—but providing an effectively toothless remedy.
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When confronted with instituted IPRs, Patent Owners should identify and exploit issues that the Petition glossed over and bring those to the attention of the Board.  This will highlight for the Board important issues that the Petition failed to sufficiently address and can lead to victory for the Patent Owner. 
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Amid the continuing threat to U.S. intellectual property rights posed by foreign actors, the International Trade Commission (ITC) is poised to become the latest federal agency to bolster protections for U.S. IP owners. The ITC’s broad power to exclude the importation into the U.S. of products that infringe American intellectual property now has the potential to be made even more robust through a new bill introduced by Senators John Cornyn (R-Tex.), Christopher Coons (D-Del.), and Todd Young (R-Ind.) on June 15, 2021, that would provide expedited relief for trade secret theft victims.
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