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Patent Eligible Method of Treatment/Prevention Claim

Federal Circuit Denies Rehearing in Arthrex v. Smith & Nephew

On March 23, 2020, approximately two months after all briefs were submitted, the Fed. Cir. has denied the outstanding petitions for panel rehearing and rehearing en banc in Arthrex, Inv. v. Smith & Nephew, Inc. (CAFC No. 2018-2140) (decision here). As a reminder, the Arthrex panel concluded that the PTAB's Administrative Patent Judges (APJs) were improperly appointed principal officers under the Constitution's Appointments Clause. To remedy this deficiency, the panel severed the APJ's Title 5 removal protections, thereby (according to the panel) rendering APJs inferior officers and prospectively curing any Appointments Clause infirmity in PTAB final written decisions post October 31, 2019. The Fed. Cir.'s rehearing denial leaves a change to the current Arthrex remedy in the hands of Congress or the Supreme Court.

Federal Circuit Rules That IPR Issue-Joinder Practice Is Not Allowed

Last March I wrote about the PTAB's Precedential Opinion Panel (POP) taking up its first case in Proppant Express Invs., LLC et al. v. Oren Tech., LLC (article here). In that case, the POP concluded that, where fairness requires it, 35 U.S.C. § 315(c) allows a petitioner to file an otherwise time-barred IPR petition and join that petition to its previously-instituted IPR to request joinder and consideration of new issues ("issue joinder"). Although this tool was rarely used, issue joinder allowed an IPR petitioner to attempt to add new claims/grounds to a previously instituted IPR if, for example, those claims were asserted by the patent owner after petitioners' one-year-filing window. Just over a year later, the Fed. Cir. has reversed this POP decision.

Battle of the Biologics: Lilly's IPRs Clear Six Teva Patents

Pharma Claiming Practice Under Fire

Oblon Featured in Attorney at Law – February 2020

Oblon has been featured in Attorney at Law on February 14, 2020 – "Oblon Secures No. 1 Ranking for Most Utility Patents in 2019." This post highlights our ranking for securing the most utility patents in 2019 and our recent promoted partners Yuki Onoe and Daniel Pereira, as co-heads of the Chemical Patent Prosecution Group.

Attorney at Law

Claim Indefiniteness To Provide An End Around SAS?

In Samsung Electronics America, Inc. v. Prisua Engineering Corp., the Fed. Cir. confirmed that, outside of the context of a motion to amend, the PTAB cannot cancel claims for indefiniteness in an IPR proceeding. Specifically, the Court found that if the PTAB cannot ascertain the scope of a claim with reasonable certainty for purposes of assessing patentability, the proper course for the PTAB to follow "is to decline to institute the IPR or, if the indefiniteness issue affects only certain claims, to conclude that it could not reach a decision on the merits with respect to whether petitioner had established the unpatentability of those claims under sections 102 or103. It would not be proper for the Board to cancel claims on a ground that is unavailable in an IPR."

Fifth Circuit Holds that Mitigation is Not an Absolute Defense to Statutory Damages for Copyright Infringement and DMCA Violations

In Energy Intelligence Grp., Inc. v. Kayne Anderson Capital Advisors, L.P., 2020 U.S. App. LEXIS 1347, __ F.3d __ (5th Cir. Jan. 15, 2020), on an issue of first impression, the Fifth Circuit held that a mitigation defense is not an absolute defense to statutory damages for copyright infringement or DMCA violations.

Ninth Circuit Affirms $3.9 Million Attorney's Fees Award in Ultraman Copyright Dispute

The Ninth Circuit recently affirmed a $3,938,227.22 attorney's fees award in the contract and copyright dispute between UM Corporation ("UMC") and Tsuburaya Products Co. ("TPC") and other companies relating to the alleged wrongful creation of derivative works of the superhero Ultraman film series. UM Corp. v. Tsuburaya Prods. Co., 2019 U.S. App. LEXIS 36134, Case Nos. 18-55604, 18-56133 (9 Cir. Dec. 5, 2019).

Persion v. Alvogen: Inherency in Obviousness Attacks

Last month, the Federal Circuit affirmed the District Court of Delaware's decision in Persion Pharmaceuticals v. Alvogen invalidating as obvious two Persion patents claiming methods of treating pain in patients with hepatic impairment (compromised liver functionality) using hydrocodone. Important to the Federal Circuit's decision was the concept of "inherency."