IP Newsflash

The USPTO Director denied a patent owner’s request for discretionary denial of two inter partes review (IPR) petitions, citing the petitioner’s “well-settled expectation” that it would not be accused of infringing the two challenged patents. The Director’s conclusion was based on the petitioner’s decade-long business relationship with the original owner of the challenged patents.

The Southern District of Florida recently dismissed a complaint without prejudice because the allegations used a form of “shotgun pleading.” The court explained that a shotgun pleading includes those where every count incorporates every preceding paragraph into each cause of action, and that dismissal of such pleadings was required under Eleventh Circuit precedent.

The Federal Circuit recently addressed whether the PTO must conduct notice‑and‑comment rulemaking before issuing instructions that guide how the Board should exercise discretion at the institution stage of IPRs. The court held that no such rulemaking is required. Instructions to the Board regarding its use of the Director’s delegated discretionary authority not to institute review are merely general statements of policy exempt from notice-and-comment rulemaking.  

The District Court for the District of Delaware recently invalidated claims directed to a panoramic objective lens for lack of enablement, holding the claims impermissibly recited a single element in means‑plus‑function form. Under § 112, ¶ 6, “[a]n element in a claim for a combination may be expressed as a means or step for performing a specified function….” By its plain terms, the statute permits means‑plus‑function claiming only in the context of a “combination.” In other words, a claim may not consist solely of a single means‑plus‑function element. Claims drafted as a single means are invalid for lack of enablement as a matter of law.

In an ANDA litigation, the District of Delaware recently denied the defendants’ motion to compel the production of correspondence between the plaintiffs’ testifying expert and a third-party analyst who had performed experiments and provided data used by the testifying expert. The court found that the scope of material sought by the motion was overbroad and disproportionate to the needs of the case.

In an ANDA litigation, the District of Delaware recently denied the plaintiffs’ motion to strike portions of the defendants’ expert reports and related deposition testimony. Although the defendants’ invalidity contentions did not state the specific theories of invalidity upon which the expert opined, the court found that none of the Pennypack factors supported excluding that expert testimony.

The Western District of Texas recently vacated a preliminary injunction after the USPTO issued a non-final rejection in a reexamination proceeding of all claims of the asserted patent directed to magnetic data cables. Although not final, the rejection was based on a substantial question of validity that made vulnerable the counter-plaintiff’s likelihood of success on the merits.

A Northern District of Florida court denied a motion to disqualify plaintiffs’ outside counsel based on an alleged violation of a prosecution bar because, although the issue was “not free of doubt,” the court did not find a “clear violation” of the protective order. In reaching its decision, the court explained that disqualification is a “high bar” requiring compelling reasons and that motions to disqualify based on violating a prosecution bar, therefore, should only be granted “if the violation was clear.” Here, the court found it was unclear whether outside counsel prosecuted patents “related to” the asserted patent, in violation of the order, because the scope of “related to” was not clearly defined.

The Federal Circuit recently vacated a $20 million jury verdict in favor of a patentee and remanded with instructions to dismiss the case for lack of subject matter jurisdiction, finding that the patentee did not own the asserted patents at the time it filed suit and therefore lacked standing.