News and Articles

Claim Construction & Disclaimer –Federal Circuit Sides with the University of Minnesota

07/01/2013 In Regents of the University of Minnesota v. AGA Medical Corp., No. 12-1167 (Fed. Cir. June 3, 2013), the Federal Circuit affirmed the district court’s partial dismissal of a suit brought by the University of Minnesota (“the University”) alleging that AGA Medical Corp. (“AGA”) infringed the University’s medical devices patents. The University’s patents cover medical devices for repairing heart defects. Specifically, the two patents, derived from the same parent




Myriad and Patenting of the Human Gene

The June 2013 Supreme Court decision in Association for Molecular Pathology v. Myriad Genetics, 569 U.S. 12-398 (2013) which considered whether portions of human genes may be patented, fueled an extraordinary amount of heated discussion for an intellectual property case. The patents at issue in Myriad concern mutated genes associated with increased risk of breast and ovarian cancer. Health care advocates worried that a ruling in favor of patentability would make




Do Business Method Patents Hurt or Help?

Do Business Method Patents Hurt or Help? A Financial Industry Perspective, 14 VA. J.L. & TECH. 147 (2009). Abstract The State Street Bank decision of 1998 affirmed U.S. business method patents. Along with the subsequent downpour of patent filings came a shower of commentary from the legal and business communities alike. The literature has generally been thoughtful and well-reasoned, or at least well-meaning. But as practitioners in the fields, we




FIRREA and Bank Fraud

The U.S. District Court for the Southern District of New York, in U.S. ex rel. O’Donnell v. Bank of America Corp et al., No. 12-01422 (S.D.N.Y. 2013), has endorsed a broad interpretation of a savings-and-loan era law that the Justice Department is trying to use in cases against Wall Street banks. This ruling came as part of a federal case against Bank of America over allegations that it sold toxic




The New Way to Challenge A Patent When Threatened: America Invents Act Creates the Post Grant Review

The America Invents Act (AIA) creates new administrative trial procedures to challenge patentability outside litigation before a district court venue. These trial procedures are namely (1) Post Grant Review (PGR), (2) Inter Partes Review (IPR) and (3) a transitional program for covered business method patents. These laws went into effect on September 16, 2012. This article covers the basics of the Post Grant review. Post Grant Review (PGR) Inter Partes




The Federal Circuit Rules on Apple v. ITC

On August 7, 2013, the Federal Circuit affirmed-in-part the lower court’s decision in Apple Inc. v. ITC (2012-1338) finding no Section 337 violation in Certain Mobile Devices, and Related Software Thereof (Inv. No. 337-TA-750). The Federal Circuit ruled that Apple’s U.S. Patent No. 7,663,607, which related to a touch panel with a transparent capacitive sensing medium that can detect multiple touches at once, was invalid for anticipation and obviousness, and




Employee Access vs. Misappropriation of Trade Secrets

The Michigan District Court in Dana Limited v. American Axle and Manufacturing Holdings, Inc., 1:10-cv-00450 (W.D. Mich. Aug. 19, 2013) addressed an important aspect of a trade secret misappropriation claims, holding that the mere fact that a former employee had access to a valid trade secret does not necessarily mean that he or she misappropriated the trade secret just, by the act of accepting employment at a competing company. In May




ANDA Litigation and Reverse Payments

In Federal Trade Commission v. Watson Pharmaceuticals, Inc., No. 133 S. Ct. 787 (2012), the Supreme Court held that reverse payments in pharmaceuticals patent settlement are not categorically immune from the antitrust laws even if such payments fall within the scope of the patent. Often, reverse payments are made by a pioneer drug manufacturer to a generic drug manufacturer in settlement of a patent challenge. In exchange for the payment, the generic




Challenging A Patent Without Litigation - The New Inter Partes Review

The America Invents Act (AIA) has invoked significant changes to the U.S. patent system, a principal one being creation of Inter Partes Review (IPR), and concurrent elimination of the inter partes reexamination. Like the latter, the new Inter Partes Review is an administrative proceeding to invalidate patents, by allowing a party to petition the U.S. Patent and Trademark Office (USPTO) with prior art that destroys novelty or establishes the claimed




First Sale in Copyrights - Supreme Court takes a Fresh Look

On March, 19 2013, the Supreme Court held that the “first sale” doctrine, which allows the owner of a copyrighted work to sell or otherwise dispose of that copy as he wishes, applies to copies of a copyrighted work lawfully made abroad. In a six to three decision, the Court reversed previous lower court rulings and ruled in favor of defendant, Supap Kirtsaeng. While studying in the United States, Thailand