No Rehearing Because of Hindsight Declaring

The Federal Circuit recently reversed a district court decision that found a patent that did not describe after-arising technology failed to satisfy the written description requirement. In so doing, the Federal Circuit explained that written description and enablement are evaluated based on the subject matter that is claimed, not the products that practice those claims. As a result, the patentee was not required to describe unclaimed, later-discovered features of the accused products despite the broad language in the claims that undisputedly covered the products.

The District of Delaware recently rejected a patentee’s argument that non-production of an opinion letter from counsel, combined with knowledge of the patent, warranted a finding that defendant induced infringement.

The District of Delaware recently denied a motion to dismiss a patent infringement complaint involving gene editing technology that sought relief under the Safe Harbor Provision of the Hatch-Waxman Act. Specifically, the court found the patentee’s complaint sufficiently alleged at least some uses of the claimed technology that, when taken as true, were not solely uses of a “patented invention” that were “reasonably related” to an FDA submission.

The District of Arizona recently held that a plaintiff’s failure to mark patented products during the time period that marking was required barred it from recovering all pre-notice damages, including for a period of time when there was no obligation to mark.

The Unified Patent Court (UPC) aims to provide expeditious decisions for its litigants. That means that there is a higher bar for obtaining extensions of time. As exemplified in BMW v. ITCiCo, the UPC’s reluctance to grant extensions can have serious consequences, including revocation of the patent.

The Patent Trial and Appeal Board granted institution of inter partes review of a patent directed to delivery of targeted television advertisements. The board rejected patent owner’s argument that a lack of particularity as to the asserted grounds justified denial under 35 U.S.C. § 312(a), holding that “simply including a significant amount of testimony and a number of supporting references is not, by itself, a reason to find that the particularity requirement is not met.”

The Patent Trial and Appeal Board determined that a reference could be used as prior art because patent owner failed to provide sufficient evidence that the prior art’s disclosure was invented by all four named inventors, and thus the same “inventive entity,” as the challenged claims.

The Patent Trial and Appeal Board rejected a patent owner’s assertion that petitioner should have named a third party, which was a defendant in a related district court patent infringement litigation and a party to a joint defense agreement (JDA) with petitioner, as a real party-in-interest (RPI). Had the board ruled otherwise and found the third party to be an RPI, the petition would have been time-barred under 35 U.S.C. § 315(b).