Court Won't Review USPTO Denial Of Inter Partes Review

In a decision issued on April 18, 2014, Judge Payne of the U.S. District Court for the Eastern District of Virginia granted the USPTO’s motion to dismiss the case brought by Dominion Dealer Solutions, LLC to challenge the USPTO’s decisions denying petitions to institute inter partes review of five patents granted to Autoalert, Inc. As I predicted in this article, the decision does not come as a surprise in view of  the statutory language of 35 USC § 314 and the court’s previous decision dismissing Versata’s challenge of the USPTO’s decision to institute post grant review of its patent.

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Update On Myriad Appeal And Announcing A Public Forum On The USPTO 101 Guidelines

Myriad has appealed the district court decision that denied its motion for a preliminary injunction against Ambry Genetics Corp. According to a report in Bloomberg BNA Life Sciences Law & Industry Report™, on April 14 , 2014, the Federal Circuit denied Myriad’s motion to expedite proceedings, but it is still possible that this Myriad appeal will be argued and decided by the end of this calendar year. Continue reading this entry

Federal Circuit Find Fractures in Roche Boniva Patents

In Hoffman-LaRoche, Inc. v. Apotex, Inc., the Federal Circuit affirmed the district court’s summary judgment that two Roche Boniva patents are invalid as obvious. The conclusion of obviousness is not particularly remarkable based on the Federal Circuit s recounting of the prior art, but the court’s willingness to affirm invalidity on summary judgment where the record included evidence of unexpected results demonstrates the difficulty of prevailing against obviousness challenges. Continue reading this entry

The Complexities Of The USPTO Proposed Attributable Ownership Rules

The USPTO proposed attributable ownership rules would require the public disclosure of the “attributable owner” of patent applications and patents. As discussed in this article, the proposed definition of  “attributable owner” reaches far beyond title holder (assignee), and includes parties with standing to enforce the patent (including exclusive licensees), ultimate parent entities as defined in 16 CFR § 801.1(a)(3), and hidden beneficial owners. This article provides an overview of some of the complexities of the proposed rules and their potential conflict with other areas of law and public policy.  Continue reading this entry

Do The USPTO 101 Guidelines Violate International Trade Agreements?

One advantage of being a blogger in the relatively small world of patents is that I have gotten to know practitioners in other countries who also have a keen interest in patent law. One such person is Australian Registered Patent Attorney Mark Summerfield, who blogs at Patentology. I enjoyed his article on the new USPTO 101 Guidelines, and that led to a discussion where he raised the question whether the Guidelines violate international trade agreements. He agreed that I could share his comments here, and I do so to spark further consideration, discussion, and public comments challenging the Guidelines. Continue reading this entry