This column highlights some of the more notable recent internet notices, newsletters and blogs dealing with IP prosecution issues.
IPWatchdog – a patents and patent law blog – ipwatchdog.com .
- Repeal and Replace? No, not that one, but another law. The April 19, 2017 post by Chris Gallagher repairing, replacing, or repealing the PTAB. Full post here.
- The April 21, 2017 post by Joseph Robinson and Robert Schaffer, describes the situation in Novartis AG v. Torrent Pharms., Ltd (Fed. Cir., April 12, 2017) PDF document here. in which a refusal to institute an inter parties review based on a reference still does not preclude using the same reference for establishing a motivation to combine for an obviousness rejection. Full post here.
- In a May 1, 2017 post, Gene Quinn provided a discussion of Helsinn Healthcare S.A. v. Teva Pharmaceuticals USA, Inc., 2016-1284, 2016-1787 (Fed. Cir., May 1, 2017) PDF document here. in which the court interpreted the AIA on-sale bar to not require public disclosure of invention details in an invalidating public sale. Full post here.
- In a May 2, 2017 post, Gene Quinn discussed potential conflicts of interest involving PTAB judges deciding cases involving recent former clients. One example provided involves an Administrative Patent Judge serving as patent infringement defense counsel for a corporate client up until appointment to the PTAB and later sitting on a PTAB panel issuing at least seventeen final written decisions, authoring four of those decisions. Full post here.
OC Patent Lawyer – James Yang publishes a patent blog for innovators and businesses in Orange County, California – ocpaentlaywer.com.
- In a March 31, 2017 post, James Yang described the loss of patent claim scope when an applicant deletes information from a provisional patent application when filing the corresponding non-provisional application. Full post here.
- In the April 25, 2017 post, James Yang details Personal Web Technologies v. Apple (Fed. Cir., Feb. 14, 2017) PDF report here. regarding the requirement that an examiner provide a detailed explanation as to how one of ordinary skill in the relevant art would have been motivated to combine references to make the claimed invention. Full post here.
Patently-O – a blog written by Dennis Crouch – www.patentlyo.com .
- The April 5, 2017 post critiqued the Novartis v. Noven Pharma, 2016-1678, 2016-1679 (Fed. Cir., April 4, 2017) opinion (PDF report here ) stating “Prior Judicial Opinions Did Not Bind the PTAB.” Professor Crouch distinguishes the evidentiary standards for invalidity in court litigation (clear and convincing evidence) from inter parties review (preponderance of the evidence).
- On April 17, 2017, Professor Crouch explained issue preclusion as to claim construction in a prior lawsuit as recently elucidated in Phil-Insul Corp. v. Airlite Plastics, 2016-1982 (Fed. Cir., April 17, 2017) PDF report here. Full post here.
- In the April 26, 2017 post, Professor Crouch discusses Securus Tech v. Global Tel*Link, 2016-1992, 2016-1993 (Fed. Cir., Apr. 25, 2017) (non-precedential) (PDF report here) as to how the PTAB must justify each obviousness finding. Full post here.
Patent Docs – A patent blog – patentdocs.typepad.com/patent_docs
- On May 11, 2017 Joseph Herndon considered the Northern District of California’s finding in Sungkyunkwan University v. LMI Technologies (USA) Inc., No. 16-cv-06966-VC (N.D. Cal., May 3, 2017) (PDF report here.) that a method for processing images from a camera system is invalid under 35 U.S.C. § 101. Full post here.
- The Chisum Patent Academy holds upcoming patent law seminars in Seattle, Washington on August 10-11, 2017 and August 14-15, 2017 respectively (two identical seminars). There will be a Washington, D.C. seminar in the fall of 2017. On March 8-9, 2018 there will be a seminar in Cincinnati, Ohio. There are a possible 18 CLE credits for these seminars. Each seminar is limited to ten attendees. More info here.
For more information about any of the patent topics mentioned consult Patent Application Practice. Trademark topics are discussed in Trademark Registration Practice. Both are published by West and updated twice a year. For litigation questions, contact Fred Douglas at 949-293-0442 or by email at email@example.com.