Intellectual Property

Mosaic Brands, Inc., et al. v. Ridge Wallet LLC

Docket No. 2022-1001-2 (https://cafc.uscourts.gov/opinions-orders/22-1001.OPINION.12-20-2022_2050643.pdf)

NEWMAN, PROST, STARK

December 20, 2022

Brief Summary:   DC claim construction affirmed based on description of invention “as a whole” in specification.  Anticipation finding based on inventor testimony found corroborated but grant of SJ found premature.  Invalidity of trade dress affirmed based on 9th Circuit law.

Summary: Mosaic and Ridge make “similar money-clip wallets”.  Mosaic asserted Ridge infringes its US 7,334,616 as well as its trade dress.  Ridge asserted Mosaic infringed its US 10,791,808 (also alleged infringement by Mosaic’s third-party licensees which is not
Continue Reading DC claim construction based on description of invention affirmed; anticipation reversed; trade dress invalidity affirmed

LKQ Corporation, et al. v. GM Global Technology Operations LLC

Docket No. 2022-00055 (PGR2020-00055) (https://cafc.uscourts.gov/opinions-orders/22-1253.OPINION.1-20-2023_2066551.pdf) (Non-Precedential)

LOURIE, CLEVENGER, STARK

January 20, 2023

Brief Summary:   Board post-grant decision finding GM’s design patent not anticipated or obvious affirmed.

Summary:  LKQ appealed USPTO final written decision (FWD) holding it failed to show by a preponderance of the evidence that GM’s design patent U.S. Patent D855,508 (the ‘’508 patent’) directed to an “ornamental design for the vehicle front skid bar” shown in Figs. 1-4 was anticipated or would have been obvious over the cited prior art.  LKQ sells automotive body repair
Continue Reading Board post-grant decision finding GM’s design patent not anticipated or obvious affirmed

Grace Instrument Industries, LLC v. Chandler Instruments Co., LLC and Ametek, Inc.

Docket No. 2021-2370 (https://cafc.uscourts.gov/opinions-orders/21-2370.OPINION.1-12-2023_2062188.pdf)

CHEN, CUNNINGHAM, STARK

January 12, 2023

Brief Summary:   DC indefiniteness determination of “enlarged chamber” vacated and remanded while construction of “means for driving” a rotor limitation affirmed.

Summary:  Grace appealed a DC claim construction order the found the term “enlarged chamber” indefinite and its construction of “means for driving said rotor to rotate located in at least one bottom section” of US 7,412,877 relating to pressurized devices and viscometers for oil well drilling rigs.  As a result of the DC findings,
Continue Reading DC indefiniteness finding vacated and remanded, while “means”-related claim construction finding affirmed, each based on the intrinsic evidence

Personalized Media Communications, LLC v. Apple Inc.

Docket No. 2021-2275 (https://cafc.uscourts.gov/opinions-orders/21-2275.OPINION.1-20-2023_2066571.pdf)

REYNA, CHEN, STARK

January 20, 2023

Brief Summary:   DC decision of prosecution laches (unreasonable and inexcusable delay by PMC and prejudice to Apple) affirmed.

Summary:  Personalized Media Communications (“PMC”) appealed DC finding that US 8,191,091 is unenforceable based on prosecution laches (“an equitable affirmative defense dating back to the early 1900s”), finding PMC “successfully employed an inequitable scheme to extend its patent rights.”  PMC alleged that Apple’s FairPlay digital rights management software that uses decryption keys to prevent copying songs from iTunes.  The DC jury initially
Continue Reading DC prosecution laches finding affirmed (unreasonable and inexcusable delay by PMC and prejudice to Apple)

Novartis Pharm. Corp. v. Accord Healthcare, et al. and HEC
Pharm Co., Ltd. et al.
Docket No. 2021-1070 (https://cafc.uscourts.gov/opinions-orders/21-1070.OPINION.1-3-2022_1887614.pdf)
MOORE (D), LINN, O’MALLEY
January 24, 2022
Second Update (January 24, 2023): Novartis petitioned SCOTUS with two questions presented:  1) Whether 28 U.S.C. § 46 and principles of sound judicial administration preclude a court of appeals from adding a new judge to form a new panel and redecide a case after an original three-judge panel has already decided the case and entered its judgment; and, 2)  Whether 35 U.S.C. § 112 should be interpreted consistent with its plain text
Continue Reading Novartis appeals to SCOTUS rehearing of FC panel decision reversing negative limitation written description finding of prior FC panel

On Wednesday, January 25, 2023, from 1:00 p.m. to 2:00 p.m. CT, The Richard Linn American Inn of Court and the Intellectual Property Law Association of Chicago (“IPLAC”) are hosting an interactive panel discussion focusing on lessons learned in evaluating whether lawyers are satisfying their responsibilities competently and diligently, and with integrity and satisfaction. 

In advance of the meeting, questions were posed to Inn members relating to issues addressed and lessons learned regarding our responsibilities as lawyers. 

Questions might include:

  • “how do you competently and diligently satisfy the responsibilities that we have as lawyers,”
  • “how can we, as lawyers, be


Continue Reading CLE: Are You Satisfying Your Responsibilities As A Lawyer In Your Career?

On Tuesday, January 24, 2023, from 12:00 p.m. to 1:00 p.m. CT, the Intellectual Property Law Association of Chicago (“IPLAC”) is hosting a panel discussion focusing on the complexities and nuances of trade secrets damages.  The panel is moderated by Timothy Oliver, Grogan, Hesse & Uditsky.  Panel members include:

  • John Bone, CPA, Managing Director, Stout; and
  • David Duski, Principal, Charles River Associates

The virtual event is free for IPLAC Members and $15.00 for Non-Members.  Click here to register. 
Continue Reading Damages for Trade Secret Misappropriation

This month’s issue of Ping® highlights Illinois rules regarding use of iPhone-recorded video in a criminal trial. In case you missed it, my article, “Six Things You Can Do to Improve Your Contracts,” from ASID Impact Illinois Magazine, Issue Two, 2022, is discussed below.

Six Things You Can Do to Improve Your Contracts.

In case you missed it, my article “Six Things You Can Do to Improve Your Contracts” appeared in ASID Impact Illinois Magazine, Issue Two 2022, pages 22-24.

Here’s a quick summary.

If you have questions about your business, or about contracts, or if you need assistance
Continue Reading Ping® By Adlerlaw – Illinois Evidence Rules on Admissibility of Cell Phone Video

Genentech, Inc., Intermune, Inc. v. Sandoz Inc., LEK Pharmaceuticals, D.D.

Docket No. 2022-1595 (https://cafc.uscourts.gov/opinions-orders/22-1595.OPINION.12-22-2022_2052253.pdf)

NEWMAN, LOURIE, PROST

December 22, 2022

Brief Summary:   DC findings that Genetech’s disputed Esbriet® patents are invalid for obviousness and not infringed by Sandoz’s ANDA affirmed.

Summary:  Genentech (“GT”) appealed DC decision holding that: (1) GT’s Liver Function Test (“LFT”) claims are invalid for obviousness (US 7,566,729; 7,635,707; 8,592,462; and 8,609,701) (2) “Sandoz’s” generic product sales would not induce infringement of the LFT patents, and (3) Sandoz’s generic product sales would not directly infringe GT’s Drug-Drug Interaction (“DDI”) patents (US 7,816,383 and 8,013,002
Continue Reading FC panel affirms DC obviousness and non-infringement findings regarding Genentech’s Esbriet® patents

On Wednesday, January 18, 2023 from 12:00 p.m. to 1:00 p.m. CT, the Intellectual Property Law Association of Chicago (IPLAC) is hosting a discussion on navigating common sticking points in technology and licensing transactions.  IP licensing and technology transactions attorneys Cole Hardy, Walgreens and Francesca Cardillo, Norton Rose Fulbright US LLP will discuss the most common sticking points in transaction involving IP, data, or technology, share negotiation tips and tricks, offer considerations to keep in mind for both licensor and licensee, and provide guidance on how to discuss these issues with your clients.

This virtual event is $15 for members
Continue Reading CLE: Navigating Common Sticking Points in Technology and Licensing Transactions

P Tech, LLC v. Intuitive Surgical, Inc.

Docket No. 2022-1102, -1115 (IPR-2020-00649-50) (https://cafc.uscourts.gov/opinions-orders/22-1102.OPINION.12-15-2022_2048477.pdf) (Non-Precedential)

LOURIE, DYK, CUNNINGHAM

December 15, 2022

Brief Summary:   Board IPR decisions of obviousness of P Tech’s robotic surgical instrument claims affirmed. Summary:  P Tech appealed two IPR final written decisions (FWDs) finding claims 1 and 4 of US 9,192,395 and claims 1-20 of US 9,149,281 directed to robotic tissue fastening systems unpatentable for obviousness.  This opinion explained that “[t]he differences between these claims have not been argued as significant to this appeal” and “[t]herefore, they all stand or fall together.”  The ‘281 patent
Continue Reading FC panel affirms Board IPR decisions finding P Tech’s robotic surgical instrument claims obvious

Starting on December 3, 2022, the new deadline for trademark Office Actions is three months. Recently, the United States Patent and Trademark Office (“USPTO”) amended its Rules of Practice under the Trademark Modernization Act (“TMA”) of 2020. The new rules shorten the old, six-month deadline to three months.

Table of Contents

Starting on December 3, 2022, the new deadline for trademark Office Actions is three months.

As
Continue Reading New Deadline for Trademark Office Actions

Arius Two, Inc., Biodelivery Sci. Int., Inc. v. Alvogen PB Res. & Develop. LLC, et al.

Docket No. 2022-1394, -1449 (https://cafc.uscourts.gov/opinions-orders/22-1394.OPINION.12-21-2022_2051391.pdf) (Non-Precedential)

CHEN, CLEVENGER, CUNNINGHAM

December 21, 2022

Brief Summary:   DC obviousness findings for two patents affirmed; obviousness of certain claims vacated as DC applied “clear and convincing” to secondary considerations while only “preponderance of the evidence” standard required.

Summary:  This Hatch-Waxman case involves US 8,147,866; 9,655,843; and 9,901,539 regarding a bi-layer film containing a bioerodable mucoadhesive (BEMA) layer comprising  buprenorphine and a backing layer between the BEMA layer and the oral cavity.  BDSI sued Alvogen with
Continue Reading DC findings of obviousness of certain claims affirmed and others vacated based on secondary considerations

Congratulations to Judge Feinerman who has decided to retire from the federal bench and return to private practice at the end of the year. His thoughtful analysis, kind demeanor and thorough, well-reasoned opinions will be missed.
Judge Feinerman’s move will create a third vacancy on the Northern District of Illinois bench. The others were created when Judge Norgle took inactive senior status in October and when Judge Dow left the bench to become counselor to Chief Justice Roberts.
Continue Reading Judge Feinerman Returning to Private Practice

Congratulations to Judge Dow. He left the Northern District bench to become Counselor to Chief Justice Roberts. As Counselor, Judge Dow will focus on “Court-wide policies and initiatives” and “matters of judicial administration.” Our local loss is the country’s game. Anyone who has appeared before Judge Dow knows that he is exceptionally bright and hard working. No doubt those traits will benefit him and the Supreme Court in his new role.
Continue Reading Judge Dow Leaves Federal Bench to Become Chief Judge Roberts’ Counselor

NPE activity sped up in June. Frequent filers included Advanced Transactions, Buffalo Patents, Cedar Lane Technologies, Locket IP, Lexos Media, M4siz, RFCyber, and Savannah Licensing.
As usual, I prepared the report in partnership with and using Docket Navigator and its powerful database. Docket Navigator is a valuable resource, and the place to go if you want to keep track of new patent litigation filings or want to know what is happening in particular cases, how your judge has historically handled a particular type of motion, or a particular plaintiff’s litigation history. Finally, please let me know if you have thoughts
Continue Reading JUNE 2022 RETAIL PATENT LITIGATION REPORT