In 2011, the Court of Appeals for the Federal Circuit en banc reheard the thorny issues of inequitable conduct and announced new intent and materiality standards. Therasense, Inc v. Becton Dickinson & Co., 649 F.3d 1276 (Fed. Cir. 2011). The majority held that a weak showing of intent can no longer be offset by a strong showing of materiality, and intent cannot be inferred solely from materiality. The accused infringer must prove by clear and convincing evidence that the patent applicant knew of an omitted reference, that it was “but for” material, and made a deliberate decision to withhold it. Therefore, the test could be restated that but for the witholding of the reference, the application would have been rejected based on that reference. The majority remanded the case to the issuing district court for new findings of fact based on the new standard.
Therasense on Remand: Inequitable Conduct Deja Vu?
April 3rd, 2012En Banc Decision in Marine Polymer v. HemCon: Amended or New Claims are Candidates for Possible Intervening Rights
March 20th, 2012In my earlier post, I summarized the panel opinion in Marine Polymer Technologies, Inc. v. Hemcon, Inc. On September 26, 2011, a panel of the Federal Circuit reversed the district court’s decision, concluding that HemCon had acquired intervening rights in the ’245 patent based on actions taken in a reexamination proceeding. That opinion was vacated and Marine Polymer’s petition for rehearing en banc was granted on January 20, 2012. In a divided decision, the Federal Circuit en banc affirmed the judgment of the district court.
Declaratory Judgment Plaintiff and Stays Pending Reexamination
March 12th, 2012In Interwoven, Inc. v. Vertical Computer Systems, Inc. (Case No. C 10-04645 RS, Northern District of California), Judge Richard Seeborg was less than persuaded by Interwoven’s attempt to obtain a stay after filing an ex parte reexamination of the patents in suit.
BACKGROUND
Vertical owns U.S. Pat. Nos. 6,826,744 and 7,716,629 relating to Internet technologies. Vertical sued Microsoft in the Eastern District of Texas and settled in 2009. Later, Vertical informed Interwoven that its products infringed the patents as well. Interwoven filed a declaratory judgment action in the Northern District of California and Vertical countered with a counterclaim for patent infringement. Read the rest of this entry »
IPO Article on Misjoinder
February 13th, 2012My last post was on the America Invents Act amendments to 35 U.S.C. 299 affecting joinder in patent infringement actions. If you are interested in that topic, you should see an article reported in today’s IPO Daily News. The article was written by Scott Burt from Jones Day, Barry F. Irwin from Kirkland & Ellis LLP, and Jonathan B. Tropp from Day Pitney LLP. It is titled: : “Impact of the Misjoinder Provision of the America Invents Act“
America Invents Act Impacts Joinder in Patent Infringement Cases
February 5th, 2012The America Invents Act brought a lot of changes for patent attorneys. This post will discuss the impact of Section 19 of the Act on joinder of parties in litigation. The amendments to 35 U.S.C. § 299 provide that joinder of defendants shall not be permitted “solely on allegations that they have infringed a patent or patents in suit.” This provision was intended to curb the practice of patent suits that named potentially hundreds of defendants en masse simply because the same patent (or patents) was in suit. The text of the amendment is repeated here:
§ 299. Joinder of parties
(a) JOINDER OF ACCUSED INFRINGERS.—With respect to any civil action arising under any Act of Congress relating to patents, other than an action or trial in which an act of infringement under section 271(e)(2) has been pled, parties that are accused infringers may be joined in one action as defendants or counterclaim defendants, or have their actions consolidated for trial, or counterclaim defendants only if—
(1) any right to relief is asserted against the parties jointly, severally, or in the alternative with respect to or arising out of the same transaction, occurrence, or series of transactions or occurrences relating to the making, using, importing into the United States, offering for sale, or selling of the same accused product or process; and
(2) questions of fact common to all defendants or counterclaim defendants will arise in the action.
(b) ALLEGATIONS INSUFFICIENT FOR JOINDER.—For purposes of this subsection, accused infringers may not be joined in one action as defendants or counterclaim defendants, or have their actions consolidated for trial, based solely on allegations that they each have infringed the patent or patents in suit.
(c) WAIVER.—A party that is an accused infringer may waive the limitations set forth in this section with respect to that party.
Do You Want That Post-Grant Review Super-Sized? – Part III
November 22nd, 2011This is the third post in a series of articles on PGR strategies. In Part I, I made the point that while patents come in all shapes and sizes, post-grant reviews (PGRs) basically come in two sizes. By statute, the PGR must complete in 1 to 1 ½ years. Part II addressed some of the issues that the Petitioner faces during a PGR and when the Petitioner may benefit from a 6 month extension. This post will provide some insight to the Patent Owner’s analysis of what to do if its patent is tested in a PGR.
Do You Want That Post-Grant Review Super-Sized? – Part II
November 16th, 2011This is the second post in a series of articles on PGR strategies. In my last post I made the point that while patents come in all shapes and sizes, post-grant reviews (PGRs) don’t. PGRs are very different from ex parte prosecution. In ex parte prosecution, if a patent application includes 200 claims that are somehow not divided by restriction practice, there is a way to prosecute all of them using extensions of time, requests for continuing examination (RCEs), and an almost unlimited capacity to amend the claims if necessary. In post-grant review, however, the Patent Owner has limited time to argue its position and limited opportunities to amend the issued patent. Furthermore, the Petitioner may appear to have an initial advantage when a petition for a PGR is granted because the Patent Office will employ a heightened standard when deciding whether to grant a PGR. The heightened standard provides that granted PGR petitions include grounds that are likely to result in a successful challenge at least one claim of the patent. But at this stage, despite this initial “win” for Petitioner, the PGR is still young and there is much to consider.
Do You Want That Post-Grant Review Super-Sized? – Part I
November 12th, 2011Patents come in all shapes and sizes. There are long ones, short ones, ones that are hard to read, and easy ones. Some have 1 claim and some have 200 claims. Some have valid claims, and some not-so-much. But when it comes to post-grant procedures, the two new procedures only come in two statutory sizes: regular and super-sized. (Editor’s note: you won’t exactly find these titles in the America Invents Act.)
Marine Polymer Technologies v. HemCon, Inc. and Intervening Rights
October 30th, 2011Marine Polymer Technologies, Inc. v. HemCon, Inc. (Fed. Cir. 2011) is a widely reported case that raises some questions about the scope of the application of intervening rights. It involves a matter where the literal language of a claim was not amended, yet absolute intervening rights were still found to apply to the accused infringer. Marine Polymer owns U.S. Pat. No. 6,864,245 (the ’245 patent), which claims a polymer p-GlcNAc that accelerates hemostasis (the process which causes bleeding to stop) and is useful in trauma units for treating serious wounds. Marine Polymer sued HemCon, alleging that HemCon infringed claims 6, 7, 10, 11, 12, 17, and 20 of the ’245 patent. Read the rest of this entry »
New, More Popular Post-Grant Patent Challenges Drive Patent Generation Strategy
September 24th, 2011Patent Generation and Enforcement Before the Popularity of Post-Grant Proceedings
Patent Owners adopt different approaches for drafting patent applications. For large companies a patent production line approach is frequently adopted which limits the cost and the commensurate drafting efforts on any particular application. There is a reasonable argument to use this “assembly line” approach for very large portfolios. But for smaller companies and/or for extremely strategic portfolios this approach may fail. Why? Because when the effort expended to establish patent rights is limited, the resulting patent applications can be hastily drafted, or just plain incomplete. They can also fail to consider relevant prior art. Such applications can turn into weak patents. And weak patents in litigation or in reexamination may lose the day for the patent owner.
