Insights

Washington, D.C.—April 10, 2023: On April 7, 2023, the Federal Circuit affirmed three IPR decisions obtained by Crowell invalidating every asserted claim of three patents owned by Paice LLC and the Abell Foundation that were asserted against BMW: U.S. Patent Nos. 7,104,347; 7,237,634; and 8,630,761.

Washington – January 11, 2023: Crowell & Moring has published Litigation Forecast 2023: What Corporate Counsel Need to Know for the Coming Year. The 11th-annual Litigation Forecast focuses on trends in litigation that are playing out in specific jurisdictions around the globe. 

Washington, D.C. – January 13, 2015: Crowell & Moring LLP is pleased to announce the publication of its third annual "Litigation Forecast: What Corporate Counsel Need to Know in the Coming Year," and the introduction of its first-ever "Regulatory Forecast 2015: What Corporate Counsel Need to Know in the Coming Year."

The Federal Circuit in Sanho Corp. v. Kaijet Technology International Limited, Inc., No. 2023-1336 (Fed. Cir. July 31, 2024) recently addressed the prior art exception of a “public disclosure” under 35 USC § 102(b)(2)(B).  Affirming a decision of the U.S. Patent Trial and Appeals Board (“PTAB”), the court held that “publicly disclosed” is only satisfied if the invention was made available to the public, and a non-confidential but otherwise private sale of an invention is not a sufficient “public disclosure”.  This case provides a cautionary tale that disclosing or selling an invention before filing a patent application is fraught with risk.

A petition for Inter Partes Review (IPR) kicks off an IPR proceeding, and is required to set forth the grounds of invalidity and how the claim terms should be construed. In the precedential opinion Axonics, Inc. v. Medtronic, Inc., the Federal Circuit held that if the patent owner proposes, or the Patent Trial and Appeal Board (PTAB) adopts, a claim construction that is different from the construction proposed by the petitioner, the petitioner should be given an opportunity to present invalidity arguments and evidence under the new construction. In responding to the new claim construction, however, the petitioner is limited to the prior art of record, and it may not rely upon new prior art references. The Federal Circuit left open whether the petitioner may rely upon different embodiments in a previously cited reference.

The PTAB ruled last week that the common law doctrine of claim preclusion only applies at the PTAB in one direction, holding that Congress did not intend for an adverse district court judgment to block a party from pursuing a subsequent inter partes review challenge. 

Washington, D.C.-based partners, Terry Rea, of Crowell & Moring's Intellectual Property Group, and Keith J. Harrison, of the firm's Labor & Employment and Litigation groups, weigh in on two important cases in the life sciences arena. Harrison discusses Teva Pharmaceuticals USA, Inc.'s challenge of a California appellate decision that a generic-drug manufacturer can be held liable for failing to warn consumers of the side effects listed on the equivalent brand-name drug, which may potentially be taken up by the U.S. Supreme Court. "This is going to be a case that is going to further define the scope of federal preemption," Harrison said. Additionally, Rea talks about the Cuozzo Speed Technologies LLC suit, which argues that the Patent Trial and Appeal Board uses the incorrect standard during America Invents Act (AIA) proceedings, making it difficult for inventors to retain their patents. "Everybody is going to be very, very careful how they handle this [case]," Rea said of the suit, which may upend new IPR standards.

This article heralds an exciting win for the Washington-D.C. based members of Crowell & Moring's Intellectual Property Group. A Virginia federal jury awarded the firm's client, LifeNet, nearly $35 million in damages for LifeCell Corp.'s infringement of a patent improving the preservation of bone and soft-tissue grafts, rejecting LifeCell's invalidity defenses. News of this victory was also highlighted in "Law360's Weekly Verdict: Legal Lions & Lambs," found here.

Washington, D.C.-based partner and chair of the firm's Intellectual Property Group, Mark Supko tells Law360 in their "Practice Leader Q&A" series about areas of the intellectual property industry that he thinks need to be reformed, and about a good life lesson learned when he was just beginning his legal career.