MONTHLY INSIGHTS

Supreme Court Turns Back the Clock on Prior Art in the U.S.

On January 22, 2019, the U.S. Supreme Court issued a unanimous decision in the 
Helsinn v. Teva  case, holding that non-public or confidential sales of inventions that are "ready to be patented" continue to qualify as prior art despite the changes that were made to §102 by the Leahy-Smith America Invents Act (AIA).     READ MORE
Satin China flag
China to Increase Damages for Patent Infringement
Following the third revision of the Patent Law of the People's Republic of China in 2008, China is expected to proceed with a fourth revision of the Patent L aw this year. The Chinese government is now soliciting opinions from the public for a Proposed Amendment to t he Patent Law of the People's Republic of China.
Patents written in search bar on virtual screen
Obviousness-Type Double Patenting Does Not Invalidate Patent Term Extensions

In  Novartis AG v. EZRA Ventures LLC , No. 2017-2284, the U.S. Court of Appeals for the Federal Circuit affirms the Delaware district court's final judgment concerning patent term extensions and the interplay with the obviousness-type double patenting doctrine. In this court decision, the Federal Circuit found that in accordance with statutory construction principles and the court's holding in Merck & Co. v. Hi-Tech Pharmacal Co., 482 F.3d 1317 , the obviousness-type double patenting doctrine and the court's holding does not invalidate an otherwise validly obtained patent term extension under § 156.

Beating the Odds in IPRs

Osha Liang is pleased to announce a recent series of victories on behalf of a firm client and patent owner in three inter partes review proceedings pending before the United States Patent and Trademark Office's Patent Trial and Appeal Board. Earlier this month, the PTAB issued Final Written Decisions in all three IPRs, finding that out of 42 patent claims challenged as unpatentable, 41 claims survived.    
Report on January Meetings of the Global Dossier Task Force and the Industry Consultation Group

On January 15 and 16, 2019, AIPLA participated in meetings of the IP5 Industry, the Global Dossier Task Force (GDTF), and the Industry Consultation Group (ICG) hosted by the European Patent Office in The Hague.  AIPLA was represented by Jonathan Osha, board liaison to the AIPLA Harmonization Committee. 

JOINED PARTIES TO AN  INTER-PARTES  REVIEW HAVE RIGHT TO APPEAL

The U.S. Patent Trial and Appeal Board instituted an  inter partes review of a patent owned by Research Corporation Technologies, Inc., pursuant to a petition filed by Argentum Pharmaceuticals LLC.  After the institution, three other companies - all of whom had been sued for infringement of the same patent more than a year earlier - requested and were granted joinder but were limited by agreement to an "understudy role" and limited to evidence presented in the original Argentum petition.  The Board upheld the patentability of all instituted claims.  The joining parties appealed to the Federal Circuit; Argentum, the original petitioner and the only petitioner who was not time-barred, did not.  The Federal Circuit held in a February 1, 2019, precedential decision that the joining parties did not lack standing; the joined parties were parties under the law despite their limited participation and any party to an IPR has the right to be a party to the appeal.     READ MORE

GOING THE EXTRA MILE


Osha Liang has a group of employees that are passionate about running.  Collectively, the group has run over 30 marathons or half marathons.  Several of these individuals are globetrotters, running marathons in countries like Africa, China, New Zealand and Hong Kong. Their racing portfolio includes some grueling races in the United States, such as the Grand Canyon Rim to Rim hike and Juneau Alaska Half Marathon.  Most recently, several members of our group of dedicated runners participated in the Aramco Houston Half Marathon on January 20, 2019. 
Manak Basra
Patent Engineer 
Houston office
          Deborah Skolaski
           Senior Litigation Paralegal 
         Houston office
Pictured below: Houston Half Marathon Finalists: Peggy Louie, Deborah Skolaski and Manak Basra.

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