IP Newsflash

In a precedential and sua sponte Director Review decision, USPTO Director Squires recently vacated three related institution decisions nearly six months after institution where a district court later found the challenged claims invalid. Because the fourteen-day deadline to request Director Review of the institution decisions had passed, the Director used this opportunity to formally extend the deadline in two ways. First, he extended the fourteen-day deadline under 37 C.F.R. § 42.75(c)(1) to thirty days, which “puts requests for Director Review of decisions to institute trial on equal footing to requests for Director Review of final decisions or decisions not to institute trial.” Second, he outlined certain “exceptional circumstances” that warrant a further extension of the deadline to account for changes in the case that “surface after the deadline.” In the case at hand, the Director found the district court’s invalidity finding to be such an “exceptional circumstance” and ultimately initiated review and vacated the institution decisions on that basis.

The Supreme Court unanimously held that for a complaint of induced infringement, a patent owner must allege that the accused infringer took affirmative, not passive, steps to encourage direct infringement. Thus, where a generic drug has a skinny label, to induce infringement of the carved-out patented use of the drug, the generic company must have taken steps that were designed to cause others to perform the patented use, not just steps that could cause such conduct.

The Northern District of Illinois granted a summary judgment motion of no invalidity based on indefiniteness because the qualitative terms like “sufficiently slow” and “desired period of time” were definite when viewed in light of the surrounding claim language and specification.

The Northern District of Illinois recently dismissed a complaint without prejudice for failing to plausibly allege patent infringement. The court found that the allegations of direct infringement were insufficiently pled where the images of the accused product included in the complaint did not appear to show a particular necessary element of the claims.

The District of New Jersey recently denied the litigants’ request for a briefing schedule to resolve a dispute about a proposed discovery confidentiality order, and also denied extending the deadlines for the defendants’ invalidity and non-infringement contentions. At issue was the scope of the FDA and patent prosecution bars in the confidentiality order.

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 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.

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.