Patent Litigation – IP Law Watch

Upcoming Patent and Design Fee Changes, Including Important Excess Claim Fee Modifications: Australia

Sep 04 2024

IP Australia has updated its practice for the calculation and processing of excess claim fees. Currently, excess claim fees are charged at acceptance, on the basis of the final claim set as accepted, regardless of the number of claims examined during examination. Therefore, the applicant can often have a large claim set examined but avoid excess claim fees by amending to reduce the claim set prior to acceptance.

Federal Circuit Clarifies Scope of Estoppel Provision and Provides Guidance on “Patentably Distinct” Claims

Jul 30 2024

On 26 July 2024, the Federal Circuit entered its decision in SoftView LLC, v. Apple Inc.¹ holding that patent owner estoppel² applies to newly presented and amended claims, but does not apply to issued claims. The Federal Circuit also confirmed that patent owner estoppel prevents a patent applicant from later obtaining a patent claim that is “not patentably distinct” from a finally refused or cancelled claim, but that patent owner estoppel does not apply to defending issued, unamended claims.

Federal Circuit Finds Declaratory Judgment Jurisdiction Over Patent Owner Through Amazon APEX Agreement

May 03 2024

On 2 May 2024, the US Court of Appeals for the Federal Circuit (the Federal Circuit) entered its decision in SnapRays, dba SnapPower v. Lighting Defense Group,¹ holding the submission of an Amazon Patent Evaluation Express (APEX) Agreement against infringing third-party product listings is a “purposefully directed extra-judicial patent enforcement activit[y]” subjecting the patent owner to personal jurisdiction in the alleged infringer’s home state.²

Full Court Parks Trial Judge’s Decision in Carpark Patent Fight

Mar 14 2024

In a recent update to a lengthy battle over car parking technology used by the City of Melbourne, SARB Management Group Pty Ltd (SARB) has scored a partial win over rival company Vehicle Monitoring Systems (VMS) on appeal in Full Court of the Federal Court of Australia.

Are Medical Diagnostic Methods Patent Ineligible by Convention?: CareDx, Inc. v. Natera, Inc. and Eurofins Viracor, Inc.

Jan 30 2023

In CareDx, Inc. v. Natera, Inc., the U.S. Court of Appeals for the Federal Circuit held that CareDx’s patent claims to methods of detecting organ transplant rejection were invalid as patent ineligible under 35 U.S.C. § 101.¹ Affirming the district court, the Federal Circuit determined that CareDx’s claims “are directed to a natural law together with conventional steps to detect or quantify the manifestation of that law,”² relying on “admissions” in the patents themselves that the claims recited only “conventional” techniques.’

Federal Circuit Rules AAPA in Challenged Patent Does Not Qualify as Prior Art Under 35 U.S.C § 311(b) but Signals AAPA Can Play Role in §103 Analysis

Feb 03 2022

On 1 February 2022, the Federal Circuit released its decision in Qualcomm v. Apple¹ providing guidance on the treatment of Applicant Admitted Prior Art (AAPA) under 35 U.S.C § 311(b) in Inter Partes Review (IPR) proceedings. In doing so, the Federal Circuit vacated two IPR decisions² of the Patent Trial and Appeal Board (PTAB) where the PTAB had found several claims of U.S. Patent No. 8,063,674 (“the ’674 patent”) unpatentable under 35 U.S.C. § 103. In doing so, the Federal Circuit remanded the case to allow the PTAB to address the specific issue of whether the AAPA cited by Apple improperly formed the “basis” of Apple’s § 103 challenge or was simply ancillary.

Substance Over Form: The Importance of Substantive Grounds in Parallel District-Court Litigation and Prior Petition IPR Denials in OpenSky Indus., LLC v. VLSI Tech. LLC

Jan 09 2022

On 23 December 2021, the Patent Trial and Appeal Board (“the Board”) instituted inter partes review (IPR) of U.S. Patent No. 7,725,759 B2 (“the ’759 patent”). See OpenSky Indus., LLC v. VLSI Tech. LLC IPR2021-01064, Paper 17 (Dec. 23, 2021). Petitioner OpenSky Industries, LLC (“OpenSky”) relied on expert declarations of Dr. Sylvia D. Hall-Ellis and Dr. Bruce Jacob originally filed by Intel Corporation in two other IPR proceedings (“Intel IPRs”).¹ Indeed, the declaration included the same coversheet that accompanied the declaration in the Intel IPR. The Board analyzed OpenSky’s Petition under §314(d) and §325(d), declining to deny institution, finding, in part, that since Fintiv and General Plastic did not warrant discretionary denial, the arguments, which were almost identical to those made in the Intel IPRs, deserved to see their day in court at the PTAB.

Federal Circuit Further Clarifies Venue in Hatch-Waxman Cases

Nov 14 2021

Last year, in Valeant Pharmaceuticals North America LLC v. Mylan Pharmaceuticals Inc., the Federal Circuit confirmed that 28 U.S.C. § 1400(b) is the sole venue provision for domestic defendants in Hatch-Waxman actions.¹ On Friday 5 November 2021, the Federal Circuit provided even greater clarity on venue rules in such cases, concluding that, for venue purposes, only submission of the ANDA qualifies as an act of infringement, not any action related to the submission.²

Finally – German Constitutional Court Clears the Way for the Unified Patent Court

Jul 12 2021

Today the German Federal Constitutional Court rejected two applications for an interim injunction against the German implementation of the Unified Patent Court Agreement (UPCA). The outcome of the decisions is a clear yes to a European patent court system!

Australia aligns with the U.S. and EU by adopting ‘exhaustion of rights’ doctrine

Nov 18 2020

The High Court of Australia’s recent decision Calidad Pty Ltd v Seiko Epson Corporation [2020] HCA 41 (Calidad) has more closely aligned Australian patent law with its U.S. and European counterparts. Key takeaways from this decision are:

the ‘doctrine of exhaustion of rights’ has replaced the ‘implied licence doctrine’;
a patent owner’s exclusive rights are extinguished by the first sale of the patented goods;
innovators have greater scope to reuse products without risking patent infringement; and
patentees seeking greater control over post-sale use should do so through contract law.

Tag:Patent Litigation