Patent Counsel

Arent Fox's patent law blog examines the latest news, trends, and legal developments in the patent world.

Patent Counsel
Patent Litigation
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Post-Octane Fitness Decisions Show an Uptick in Attorney Fee Awards to Prevailing Parties

The Patent Act’s fee shifting provision provides that a “court in exceptional cases may award reasonable attorney fees to the prevailing party.” 35 U.S.C. § 285. Earlier this year, we reported on the Supreme Court’s decision in Octane Fitness, LLC v. ICON Health & Fitness, Inc., 134 S. Ct. 1749, 188 L. Ed. 2d 816 (2014), which revised the standard on fee shifting in patent cases, and held:

[A]n “exceptional” case is simply one that stands out from others with respect to the substantive strength of a party’s litigating position (considering both the governing law and the facts of the case) or the unreasonable manner in which the case was litigated. District courts may determine whether a case is “exceptional” in the case-by-case exercise of their discretion, considering the totality of the circumstances. Id. at 1756.

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Patent Litigation, Patent Prosecution, Patent Transactional
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What the 2014 Election Means for Patent Reform

Without a Republican majority in the Senate last year, Congress was unable to pass patent reform legislation. The primary contender, as we previously reported, was the Innovation Act, sponsored by House Judiciary Committee Chairman Rep. Bob Goodlatte (R-VA). That bill passed the House with an overwhelming majority vote of 325-91 only to get stalled in the Democratic-led Senate.(For a detailed discussion on Arent Fox’s reporting of the Innovation Act, click here.) At the time, many speculated that Senate Majority Leader Harry Reid (D-NV) was reluctant to permit Senate floor consideration of patent reform legislation that was opposed by trial lawyers and elements of the pharmaceutical industry.

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Post-Grant Proceedings, Inter-Partes Review
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Recent PTAB Decisions on Motions for Additional Discovery

On a motion for additional discovery, various factors inform the Board’s determination of whether the discovery requested meets the standard of “necessary in the interest of justice” under 35 U.S.C. § 316(a)(5), including the factors set forth in Garmin Int’l., Inc. v. Patent of Cuozzo Speed Techs, LLC, Case IPR2012-00001 (PTAB Mar. 5, 2013) (Paper No. 26) slip. op. at 6-7: (1) the request is based on more than a mere possibility of finding something useful; (2) the request does not seek the litigation positions of the other party; (3) the information is not reasonably available through other means; (4) the request is easily understandable; and (5) the request is not overly burdensome to answer.

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Post-Grant Proceedings, Inter-Partes Review
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Joinder Decisions

An inter partes review challenging the validity of a patent is normally barred after one year from service of a complaint. However, 35 USC § 315(b) indicates that the time limit doesn’t apply to a motion to join, which has been interpreted to allow filing an IPR after one year with a motion to join the other IPR. The window for doing this is within one month of institution of the IPR to be joined (37 CFR § 42.122(b)). This situation often occurs in multicase, multidefendant litigation.

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Post-Grant Proceedings, Inter-Partes Review
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USPTO’s Decision to Not Institute Inter Partes Review of a Patent is Final and Nonappealable

Addressing 35 U.S.C. § 314(d), the US Court of Appeals for the Federal Circuit (the Federal Circuit) determined that, in recent precedential orders in inter partes review proceedings, the Federal Circuit does not have authority to hear appeals of the United States Patent & Trademark Office (USPTO) decisions to not institute inter partes review of an issued patent. St. Jude Medical v. Volcano Corporation (Fed. Cir. Order, April 22, 2014) (Prost, O’Malley, Taranto, J.).

In 2010, St. Jude Medical, Cardiology Division, Inc. (St. Jude) sued Volcano Corporation (Volcano) in the United States District Court for the District of Delaware, alleging infringement of five St. Jude patents. Subsequently, Volcano filed a counterclaim against St. Jude asserting infringement of one of its patents, U.S. Patent No. 7,134,994 (the ‘994 patent). In October 2012, based on parties’ stipulations, the district court dismissed all claims relating to the ‘994 patent.

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Patent Litigation
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Congressional Patent Reform Efforts — Arent Fox Analysis

On December 5, 2013, the House of Representatives passed the Innovation Act (H.R. 3309) by a vote of 325 to 91. This bill, sponsored by House Judiciary Committee Chairman Bob Goodlatte (R-VA), is designed to curtail the abuses of so-called “patent trolls” and to supplement provisions of the America Invents Act, which went into effect on September 16, 2011. In contrast to the fairly quick action by the House, the Senate is working at a slower pace and will hold its first hearing on the differing Senate version of this legislation, the Patent Transparency and Improvements Act (S. 1720), later in December, with committee consideration likely delayed until 2014.

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Arent Fox LLP, founded in 1942, is internationally recognized in core practice areas where business and government intersect. With more than 350 lawyers, the firm provides strategic legal counsel and multidisciplinary solutions to clients that range from Fortune 500 corporations to trade associations. The firm has offices in Los Angeles, New York, San Francisco, and Washington, DC.