Federal Circuit Upholds Inequitable Conduct Post Therasense For Withheld Information

In American Calcar, Inc. v. American Honda Motor Co., the Federal Circuit upheld the district court’s finding that three Calcar patents are unenforceable due to inequitable conduct. Both courts reached this decision of inequitable conduct post Therasense despite the fact that the validity of the patents over the information at issue had been upheld, and despite the lack of direct evidence of an intent to deceive. Judge Newman’s dissent raises additional questions regarding the basis of the decision. Continue reading this entry

Federal Circuit Applies "Searching Review" Of Stay Pending CBM Proceeding

In Benefit Funding Systems, LLC v. Advance America Cash Advance Centers, Inc., the Federal Circuit upheld the district court’s decision to stay patent infringement litigation while the USPTO Patent Trial and Appeal Board (PTAB) conducts a Covered Business Method (CBM) review of the patent at issue. Although the Federal Circuit ultimately affirmed, it noted that the America Invents Act (AA) authorizes it to conduct a “searching review” of decisions to grant or deny stays pending CBM review.  Continue reading this entry

Inter Partes Review -- Parties Favor Settlement Over Board Decisions

Now that we have a growing body of statistics on the Inter Partes Review proceedings created by the America Invents Act, it is interesting to see how the proceedings are being resolved. With the significant attention given to Patent Trial and Appeal Board (PTAB) decisions, it may come as a surprise to learn that a significant majority of IPRs are terminated by settlement.

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USPTO Promotes Patent Litigation Toolkit

If you subscribe to USPTO email updates like I do, then you probably received an email recently announcing that the “USPTO Launches Updated Patent Litigation Toolkit and Hosts Free Webinar about Toolkit Resources.” When one of my colleagues asked why the USPTO is disseminating information on how to “challenge” patents that they granted with a presumption of validity, I decided to open up the toolkit to see what I would find. Continue reading this entry

Update On Mayo Myriad Patent Eligibility From USPTO BCP Partnership Meeting

On September 17, 2015, the USPTO held the first “bicoastal” Biotechnology/Chemical/Pharmaceutical Customer Partnership meeting, with live participation from the USPTO’s main campus in Alexandria, VA and from San Jose University in San Jose, CA. The last item on the agenda was a panel on the Mayo-Myriad Guidance, so I joined the meeting by WebEx to hear what the panelists had to say about the current state of patent eligibility rejections and how to overcome them.

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