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Teva Pharmaceuticals Int l GmbH v Eli Lilly & Co , Eli Lilly & Co v Teva Pharmaceuticals Int l GmbH, and Teva Pharmaceuticals Int l GmbH v Eli Lilly & Co (Fed Cir 2021) | McDonnell Boehnen Hulbert & Berghoff LLP
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Minerva V Hologic: Assignor Estoppel Doctrine Retained, But Limited | Haug Partners LLP
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In
Comcast Cable Communications, LLC v. Promptu Systems Corp.,
1 the Federal Circuit held that the plain meaning of the claim phrase “command function” was limited to functions that command an action to be taken. The meaning of this claim phrase turned out to be a focal point, and Comcast lost its invalidity challenge to the claims as a result of this interpretation.
Comcast filed a petition for
inter partes review (IPR) of U.S. Patent No. 7,260,538 (the ’538 patent) on the grounds that the contested claims would have been obvious in view of two prior art references U.S. Patent No. 6,513,063 (Julia) or U.S. Patent No. 7,013,283 (Murdock) alone or in combination with U.S. Patent No. 5,774,859 (Houser). The Patent Trial and Appeal Board (Board) instituted review and issued a final-written decision in each IPR. The Board rejected Comcast’s interpretation of the claim language “command function” as unreasonably broad. Since Comcast’s contentions were based on its reje
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Patent licenses, technology transfer agreements, and non-disclosure agreements often include forum selection clauses as a matter of course, and sometimes include an arbitration clause requiring private arbitration of disputes. Petitioners and patent owners both will want to know: Can these clauses preclude a challenge at the Patent Trial and Appeal Board (PTAB)? The federal district courts routinely enforce the parties’ selected forum in patent lawsuits. The PTAB, however, has been reluctant to do so for
inter partes and post-grant review proceedings. The Federal Circuit has not yet ruled on whether the PTAB must directly consider and enforce forum selection clauses. Patent owners seeking to avoid the PTAB may have recourse through the district courts, but results on this path are uncertain. Petitioners have frequently been successful in maintaining challenges at the PTAB, despite prior agreements that include forum se
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