July 2, 2013
Boston, MA, July 2, 2013 — Fish & Richardson announced today that it won an appellate decision in a patent infringement case for Fresenius USA, Inc. and Fresenius Medical Care Holdings, Inc. against Baxter International and Baxter Healthcare Corporation regarding a patent for a hemodialysis machine. The U.S. Court of Appeals for the Federal Circuit, in a July 2, 2013 decision, held that federal trial and appellate courts are required by statute to dismiss pending patent cases if the U.S. Patent and Trademark Office (PTO) has cancelled the asserted claims through reexamination.
Fresenius sued Baxter in 2003, seeking a declaratory judgment that it did not infringe any valid claims of certain Baxter patents. Baxter counter-sued for patent infringement. In 2005 Fresenius hired Fish as new counsel for the district court litigation, and Fish quickly filed a request for ex parte reexamination of Baxter’s patents.
ChiMei Innolux Corp. v. Semiconductor Energy Lab. Co., Ltd., slip op. IPR2013-00038 (PTAB Apr. 26, 2013)
May 17, 2013.
Written by Adam Shartzer, Timothy Riffe, Karl Renner, and Dorothy Whelan
In ChiMei Innolux Corp. v. Semiconductor Energy Lab. Co., Ltd., IPR2013-00038, notice-18, Order, Conduct of the Proceeding (April 26, 2013), the PTAB held that a party’s failure to adequately describe an anticipated motion may be grounds for dismissal or exclusion of the motion(s) from the motion list. By adequately describing the purpose and reasons for a motion, the anticipated moving party can provide sufficient notice to the PTAB and non-moving party.
Post-Grant Alert: PTAB Trial Transcript Released for SAP America, Inc. v. Versata Development Group, Inc.
April 25, 2013
Written by Dorothy Whelan and Karl Renner.
The U.S. Patent and Trademark Office (USPTO) released the transcript from the first-ever oral hearing conducted before the Patent Trials and Appeals Board (PTAB) in an America Invents Act post-grant proceeding. The hearing, which was conducted just last week, involved a patent that was challenged using the transitional program for covered business method patents (TPCBM). It is between SAP America Inc. and Versata Development Group Inc. and is styled as case number CBM2012-00001 at the PTAB. The patent is also involved in co-pending litigation, namely Versata Software Inc. et al. v. SAP America Inc. et al., case number 2:07-cv-00153 in the U.S. District Court for the Eastern District of Texas, and case number 12-1029 in the U.S. Court of Appeals for the Federal Circuit.
April 16, 2013
Written by David Holt, Karl Renner, and Dorothy Whelan
In Liberty Mutual Ins. Co. v. Progressive Casualty Ins. Co., the PTAB set forth a framework by which it would limit the number of “redundant” grounds of rejection that may be sustained in patent trials. The decision is important because the PTAB forecasts that it will only sustain more than one ground of rejection per claim if the Petition provides a particular type of description for why multiple grounds are not redundant.
Updated March 22, 2013 – New PTO Fees Effective March 19, 2013, for Ex Parte Reexamination, Inter Partes Review, Post-Grant Review, and Covered Business Method Review
The alert below is updated from the March 20 release. Please note the updated IPR hypotheticals and updated fee structure for PGR/CBM.