Patent Law

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It has become commonplace for companies such as Google to use local servers to provide faster service to customers.  This practice has raised the question as to whether those local servers constitute “a regular and established place of business” for the purposes of establishing venue in patent infringement suits in the districts where the servers are located.

Specifically, the patent venue statute, 28 U.S.C. § 1400(b), limits the districts where patent infringement cases can be filed to either (1) where the defendant resides, which for a corporation is where it is incorporated, or (2) where the defendant has a regular and established place of business and has committed acts of infringement.
Continue Reading Google’s Servers Do Not Constitute a Regular and Established Place of Business for Patent Venue

There are a number of requirements that must be met for an invention to be patentable. The invention must be novel (unique) and nonobvious (i.e., a person skilled in the field of the invention would not have found the invention obvious based on the existing knowledge in the field). In addition, the patent application must meet other requirements, including written description (the application must contain a detailed, clear, and definite written description of the invention) and enablement (the application must describe how to make and use the invention). If the patent application satisfies all of the requirements, a patent is issued.

A third party can challenge an issued patent on several different grounds, either in litigation or in the Patent and Trademark Office’s Patent Trial and Appeal Board (PTAB). If the challenge is successful, some or all of the patent’s claims will be invalidated. If only some of the claims are invalidated, those claims will be canceled from the patent and the remaining claims will be enforceable.
Continue Reading IPRs Cannot Be Used to Challenge Patents for Indefiniteness

In Guardant Health, Inc. v. Foundation Medicine, Inc., 1-17-cv-01616 (DDE 2020-01-07, Order), the Court rejected the Plaintiff’s argument that an inequitable conduct claim must be related only to the prosecution of the patent-at-issue in ruling on plaintiff’s motion to dismiss defendants’ infectious unenforceability counterclaims.  In the case, the Defendants’ theory as to the unenforceability of U.S. Patent No. 9,902,992 (the ’992 patent) was not based on inequitable conduct said to have occurred during the ’992 patent’s prosecution.  Instead, it rested on the relationship between the ’992 patent and the prosecution of other related patents.

As some background, inequitable conduct regarding any single claim in the prosecution of a patent renders the entire patent unenforceable, not just that specific claim. Moreover, a finding of inequitable conduct can affect not just the improperly-prosecuted patent, but can also render unenforceable any other related patents and applications in the same patent family. This concept is what courts have referred to as the doctrine of “infectious unenforceability.”
Continue Reading Inequitable Conduct Can Render all Patents in a Patent Family Unenforceable through Infectious Unenforceability

The Patent and Trademark Office (PTO) may reject a patent application on several different grounds.  One of those grounds is obviousness.  Under 35 U.S.C. § 103, if an invention is obvious to a person of ordinary skill in the art, then it is not patentable.

In determining whether an invention is obvious, the PTO compares the invention to the “prior art” – all similar inventions that are publicly available at the time the application is filed.  If the PTO rejects the invention as obvious, the applicant can respond by narrowing the invention or arguing that the PTO is wrong.  In addition, the applicant can submit evidence of certain factors that the courts have held are relevant, objective indicia of nonobviousness.  These factors are called “secondary considerations.”  They include evidence of: unexpected results, commercial success, long-felt but unsolved needs, failure of others, skepticism of experts, and copying by competitors.Continue Reading Copying by Competitors is Evidence of Nonobviousness of an Invention

To use a textbook or other reference to challenge the validity of a patent in a petition for inter partes review (“IPR”), the textbook must have been “publicly accessible” prior to the date of the challenged patent to qualify as a printed publication. Is a copyright notice sufficient evidence that a textbook was publicly accessible? The short answer is no in most, if not all, cases.  In Hulu, LLC v. Sound View Innovations, LLC, the PTAB denied Hulu’s IPR petition on the ground that Hulu had not provided sufficient evidence to show that a prior art textbook with copyright and ISBN dates was publicly available as of those dates.  As a result, Hulu requested rehearing of the PTAB decision denying institution of inter partes review of the validity of Sound View’s patent, U.S. Patent No. 5,806,062.  Hulu argued the decision was in conflict with other PTAB decisions “involving the public availability of an asserted ‘printed publication.’” 
Continue Reading Is a Copyright Notice Sufficient Evidence a Textbook Is a Printed Publication for Institution of Inter Partes Review?