Gibbons Law Alert

Gibbons Law Alert

Tagged: Patent

Prometheus Re-bound: Supreme Court Reverses in Mayo v. Prometheus Labs

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Posted in Patent

On March 20, 2012

In a much anticipated decision, a unanimous Supreme Court today reversed the ruling of the Federal Circuit Court of Appeals, and held that Prometheus’ process is not patent eligible. Mayo Collaborative Servs. v. Prometheus Labs., Inc., No. 2008-1403, slip. op. (Fed. Cir. Dec. 17, 2010), rev’d, 566 U.S. __ (2012). Mayo purchased and used medical diagnostic tests based on Prometheus Labs’ patents, but later sold and marketed its own diagnostic test. Prometheus Labs brought suit, asserting that Mayo’s test kits infringed its patents.

In re Staats: Two-Year Time Limit for Reissue Applications

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Posted in Patent

On March 9, 2012

In In re Staats, a Federal Circuit panel including Judges Dyk, O’Malley and Reyna found that the requirement set forth in 35 U.S.C. § 251 for filing broadening reissue application within two years of patent issuance is met once a first broadening reissue application has been filed within that time period, and that subsequently-filed and broadening continuation applications based on the first broadening reissue application need not be filed within the two-year period. In reaching this decision, the Federal Circuit interpreted and affirmed a ruling made by its predessor court, the United States Court of Customs and Patent Appeals (CCPA) in In re Doll.

NJIPLA Annual Patent Litigation Seminar — Wednesday, March 14, 2012

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Posted in Patent

On March 1, 2012

As President-Elect of the New Jersey Intellectual Property Law Association (NJIPLA), I am happy to announce that the NJIPLA will again host its well-received and well-attended “Annual Patent Litigation” seminar on Wednesday, March 14, 2012 at the Woodbridge Hilton. This seminar is a half-day program starting at 11:45 am, and includes a meet and greet lunch. CLE credits for NJ (5.0) and NY/PA (4.5) will be awarded. The Woodbridge Hilton is easily accessible by car and a short walk from the Iselin train station, providing convenience for New York City and Philadelphia area attendees.

2011: The Year Inequitable Conduct Changed

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Posted in Patent

On February 8, 2012

2011 was a significant year for the “atomic bomb” of patent defenses, inequitable conduct. Inequitable conduct is a defense to patent infringement that potentially renders a patent, and its family, unenforceable when a patent applicant breaches its duty of candor and good faith to the USPTO. Two traditional hurdles for succeeding on an inequitable conduct defense were showing that withheld information or falsely disclosed information was material and the patent applicant intended to deceive the USPTO.

One-E-Way Inc. v. Plantronics Inc.: Central District of California Court Finds Improper Joinder of Defendants

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Posted in Licensing / Patent

On February 7, 2012

In a recent order, a judge in the United States District Court for the Central District of California held that the defendants were misjoined because even though “some of the products incorporate the same wireless technology [it] does not alter the fact that Plaintiff brings suit against unrelated defendants for independent acts of infringement.” One-E-Way Inc. v. Plantronics Inc. et al, 2:11-cv-06673, at 2 (CD Cal. January 19, 2012).

IP Licensees and the Kodak Bankruptcy, II

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Posted in Patent

On January 25, 2012

Kodak’s recent bankruptcy filing raises a host of issues relating to intellectual property. Foremost among these is the need for any Kodak patent licensees to diligently monitor the on-going proceedings to ensure their rights are preserved in the thousands of patents in Kodak’s portfolio. Among these are some 1,150 digital imaging patents slated to be auctioned later this year.

IP and Chapter 11 Intersection: Kodak Files for Bankruptcy

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Posted in Licensing / Patent

On January 19, 2012

As anticipated, Eastman Kodak Co. filed a petition for Chapter 11 bankruptcy relief this morning in the United States Bankruptcy Court for the Southern District of New York. This development followed a recent flurry of patent infringement suits involving Kodak, and on the heels of Kodak’s unrequited efforts to license or sell off its substantial intellectual property (“IP”) portfolio.

Innovated in China: China’s Aggressive Innovation and Patent Development Policy

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Posted in Patent

On January 18, 2012

In 2006, the Chinese government pledged to foster future innovation in China by promoting science and technology development in key fields and enhancing innovation capacity. In the National Medium- and Long-Term Plan for Science and Technology Development (2006-2020) published by the State Council, China pledged that by 2020 research and development (“R&D”) investment will exceed 2.5% of China’s total GDP, and that progress of science and technology will contribute at least 60 percent to the country’s development.

IP Law 2012: A Look Ahead . . . .

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Posted in Patent / Pharmaceuticals / Trademarks / USPTO

On January 4, 2012

Coming off a year that included the Smith-Leahy “America Invents Act,” 2012 portends to have some significant developments in IP law. Decisions for IP practitioners and industry to watch for include: the Supreme Court’s decision in Caraco Pharm. Labs. Ltd. v. Novo Nordisk A/S, regarding “use codes” and section viii carve-outs under the Hatch-Waxman Act; the Supreme Court’s decision in Mayo v. Prometheus, regarding patentable subject matter, post-Bilski; and the Federal Circuit’s upcoming en banc decisions in McKesson and Akamai, regarding joint infringement liability.

Update: IPXI Gains Momentum as Five More Entities Join and $10 Million is Secured from Investors

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Posted in Patent

On December 14, 2011

Gibbons published an IP Law Alert this summer describing the forthcoming Intellectual Property Exchange International (“IPXI”). Along with providing background information about how the IPXI will monetize patents, and the process for listing an IP asset on the IPXI, this post discussed the growing pains associated with starting a financial exchange pegged to IP.

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