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Latest from Finnegan, Henderson, Farabow, Garrett & Dunner, LLP

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Supplemental Examination has been in place for a few years now, (see Nyshadham, Burgy, Murphy, Lewis, and Irving, “AIA Supplemental Examination Nuts and Bolts: Get it in Your Toolbox and Don’t Leave Home Without It,” AIA Prosecution First blog post June 3, 2019) and it is interesting to see how some patent owners have used it and what results the procedure has provided. In Santos, Bosch, Leiman, Barker, Ward, Lewis, and Irving, “A Tale …
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Decision: Xitronix Corp. v. KLA-Tencor Corp., No. A-14-CA-01113-SS, 2016 WL 7626575 (W.D. Tex. Aug. 26, 2016), aff’d Rule 36, No. 16-2746 (Fed. Cir. May 23, 2019) Background: Xitronix filed a Walker Process antitrust claim in the Western District of Texas, alleging that KLA-Tencor (“KLA”) fraudulently prosecuted a patent. In Walker Process Equipment, Inc. v. Food Machinery & Chemical Corp., 382 U.S. 172 (1965), the Supreme Court held that “the enforcement of a patent procured by fraud…
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The Patent Trial and Appeal Board issued 46 IPR and CBM Final Written Decisions in April, including decisions following remands from the Federal Circuit, cancelling 400 (68.14%) instituted claims while declining to cancel 182 (31.01%) instituted claims. Patent owners conceded 5 (0.85%) claims through motions to amend or disclaimer in cases reaching a final decision. For comparison, the cumulative average rate of instituted claims cancelled in IPR and CBM Final Written Decisions is about 74%.…
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Supplemental Examination is a tool created by the America Invents Act (“AIA”) that, according to the legislative history, was designed to give patent owners the ability to request that the USPTO review information that might later provide a basis for an inequitable conduct allegation if left unaddressed. Under 35 U.S.C. § 257, a patent owner may request Supplemental Examination of a patent to consider, reconsider, or correct information believed to be relevant to the patent.…
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Can a trademark licensee continue using a licensed trademark (legally, that is) even after the licensor has declared bankruptcy and—as allowed by the Bankruptcy Code—rejected the licensing agreement? As the Supreme Court has now said, the answer is yes. In 2012, Tempnology, LLC, owner of the COOLCORE trademark, entered into a license agreement with Mission Product Holdings, Inc. that gave Mission two rights: the non-exclusive right to use the COOLCORE trademark in the United States…
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Effective September 16, 2012, the America Invents Act allows a patent owner to request Supplemental Examination of a patent by the U.S. Patent and Trademark Office (“USPTO”). Supplemental Examination gives patent owners a proactive tool to have the USPTO consider, reconsider, or correct information that the patent owner believes is relevant to the patent. 35 U.S.C. § 257(a). Such information may include issues raised in inequitable conduct or unclean hands challenges against the patent during…
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Through May 15, 2019, the Federal Circuit decided 524 PTAB appeals from IPRs and CBMs. The Federal Circuit affirmed the PTAB on every issue in 388 (74.05%) cases and reversed or vacated the PTAB on every issue in 70 (13.36%) cases. A mixed outcome on appeal, where at least one issue was affirmed and at least one issue was vacated or reversed, occurred in 49 (9.35%) cases.  The court dismissed 17 (3.24%) appeals without rendering…
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A series of recent cases teach an important lesson about claim language: simple terms may be construed based on the context in which they appear – even if different from their ordinary meaning. The conjunctive claim term “and” can sometimes mean the disjunctive “or” Decision: Simo Holdings Inc. v. Hong Kong uCloudlink Network Tech Ltd., 18-CV-5427 (JSR), (S.D.N.Y. April 25, 2019) Holding: The Court granted SIMO’s motion for summary judgment as to infringement of claims…
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Congress continues to discuss the patent eligibility requirements; on May 22, 2019, a bipartisan, bicameral bill was proposed which could redefine what kinds of inventions may be patented. If enacted, the bill will remove the judicial exceptions to patent eligibility. This draft bill arrives on the heels of the USPTO’s revised guidance on patent eligibility that went into effect on January 7, 2019, and feedback from stakeholders, inventors, and industry representatives from an earlier draft…
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Decision: Eagle Pharmaceuticals, Inc. v. Slayback Pharma LLC, Civil Action No. 18–1953–CFC (D. Del. May 9, 2019) Holding: At the pleading stage, Judge Connolly in the District of Delaware granted Slayback Pharma’s (“Slayback”) motion for judgment of noninfringement of Eagle Pharmaceutical’s (“Eagle”) claims covering its biologic product BALRAPZO® by Slayback’s biosimilar.  Background: Eagle sued Slayback alleging infringement under the doctrine of equivalents (“DOE”) of four patents: U.S. Patent Nos. 9,265,831 (“the ’831 patent”), 9,572,796 (“the…