Samsung v. Prisua – Fed. Cir. Tries to Eliminate IPR Catch-22

The Fed. Cir. panel decision in Samsung Elec. Amer., Inc. v. Prisua Engineering Corp., Appeal No. 2019-1169, 2019-1260 (Fed. Cir., Feb. 4, 2020) flew under my blogging radar for some time, but since Prisua petitioned for rehearing en banc on March 5th, I haven’t been able to get the decision out of my IP head. The panel decision is an attempt to resolve an inherent Catch-22 situation in which the Board (“PTAB”) ruled that it could not evaluate the obviousness or anticipation of all of the challenged claims in Prisua’s U.S. Pat. No. 8,650.519, because the PTAB could not construe the claims.

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Advocacy vs. Candor Paves the Road to Inequitable Conduct

In GS Cleantech Corp. v. Adkins Energy LLC, the Fed. Cir. upheld a finding of an on-sale bar to patenting and also found that the main prosecuting attorney committed inequitable conduct by providing false or misleading information to the PTO. To provide a law review analysis of the opinion (appeal no. 2016-2231, 2017-1838 (Fed. Cir., March 2, 2020) would require more pages of text than this 39 page opinion, and I will spare you that. At least the invention was a not-overly-complex method of recovering oil from a dry mill ethanol plant’s by product called thin stillage.

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Method of Treatment Efficacy Benchmarks Avoid Inherency Attack

In Galderma Labs. v. Teva Pharm. USA, Inc., Appeal Nos. 2019-2396 and 2020-1213 (Fed. Cir,. January 29, 2020), a Fed. Cir. panel of Judges Moore, O’Malley and Stoll reversed a district court finding that three Galderma patents (US Pat. Nos. 9,809,587, 9,223,117 and 9,223,118) on methods for treating inflammatory lesions of acne with a 1% ivermectin formulation, Soolantra© were invalid as inherently anticipated by a patent (McDaniel) disclosing the use of a 1-5% ivermectin formulation to treat acne, that was enabled “as to the formulation” by a patent disclosing the Soolantra© composition (Manetta).

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Trump Signs Economic and Trade Agreement with China

On January 15, 2020, President Trump signed a lengthy “Economic and Trade Agreement Between the Government of the [US] and the Government of [P. R. of China].” Chapter 1 is entitled “Intellectual Property”  that contains Sections on trade secrets, pharmaceuticals, patents, piracy and counterfeiting, geographical indications (involving TM disputes), manufacture and export of pirated and counterfeit goods (including counterfeit medicines), bad faith trademarks, judicial enforcement (e.g., via criminal proceedings), bilateral cooperation and implementation.

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