37 C.F.R. § 42.23(b) limits a petitioner’s inter partes review (“IPR”) reply papers to arguments raised by the patent owner in its opposition. Under this rule, a petitioner cannot assert new invalidity arguments, cite previously unidentified parts of a prior art reference, or introduce new evidence such as a new prior art reference. The line between this and what is merely responsive, however, can be blurry. The Federal Circuit’s recent decision in Ericsson sheds some light on this line. READ MORE
Alex's cases have involved technologies such as telecommunications, microprocessors, wireless devices, computer peripherals, video games, pharmaceuticals, recombinant DNA technology, chemicals and protein science. Alex has tried numerous cases before the United States district courts and the International Trade Commission. Alex also practices before the Patent Trial and Appeal Board.
Alex is frequently quoted in the media on intellectual property law issues, including in the Wall Street Journal and the New York Times.
Alex is on the Board of the Legal Aid Society. He also is active in pro bono matters, including through Legal Aid (from whom he received a Pro Bono Publico Award in 2017), the New York County District Attorney's Office and Lawyers for Children. Alex has also represented pro bono St. Bartholomew's Church of New York and individual artists and artisans
Prior to law school, Alex was a researcher with United Technologies International Operations in Tokyo, Japan, and a laboratory researcher at the Tokyo Institute of Technology in Yokohama, Japan.
Posts by: Alex Chachkes
Olivia Garden, Inc. v. Stance Beauty Labs, Inc., et al., N.D. Cal (July 12, 2017) (Judge Haywood S. Gilliam, Jr.)
In a June 12, 2018, order, Judge Haywood S. Gilliam, Jr. granted the motion of defendant Stance Beauty Labs (“Stance”) to dismiss for improper venue, rejecting plaintiff Olivia Garden’s request that the court exercise pendent venue over its claims. The court found that pendent venue was unavailable for patent claims, despite being brought alongside related claims that the plaintiff brought against a codefendant.
Specifically, Olivia Garden brought claims against Stance (represented by Orrick) and codefendant Burlington Coat Factory of Texas (“Burlington Texas”) alleging design patent infringement, trade dress infringement and unfair competition based on certain of the defendants’ brush products. Stance subsequently moved to dismiss based on improper venue. In opposition, Olivia Garden acknowledged that Stance was incorporated in Connecticut and that it lacked facts sufficient to show proper venue under the second prong of 28 U.S.C. § 1400(b). READ MORE
Last week, the Federal Circuit denied petitions for rehearing en banc in two separate cases: Berkheimer v. HP, Inc. and Aatrix Software, Inc. v. Green Shades Software, Inc. Both cases involved the question of whether an invention was patent-eligible under 35 U.S.C. § 101. That is, in Berkheimer a digital file archiving idea and, in Aatrix, a data manipulation idea. In the prior panel decisions, the Federal Circuit had determined that there were factual questions regarding patent eligibility in both cases, reversing the district court’s grant of judgment on the pleadings in each instance. Although the denials for rehearing en banc were made in per curiam orders, what is unusual and noteworthy is that they were accompanied by concurring and dissenting opinions that dealt squarely with the question of how properly to analyze patentability under 35 U.S.C. § 101. READ MORE
Part owners of the patentee-plaintiff company lose Rule 12(b)(6) motion to dismiss by virtue of that partial ownership interest. READ MORE
The Federal Circuit, sitting en banc, found that the decision of the Patent Trial and Appeal Board (“PTAB”) as to whether a petition for inter partes review (“IPR”) is barred as untimely may indeed be appealed. Wi-Fi One, LLC v. Broadcom Corp., No. 2015-1944 (Fed. Cir. Jan. 8, 2018) (en banc). This overrules the panel in Achates Reference Publishing Inc. v. Apple Inc., 803 F. 3d 652 (Fed. Cir. 2015). READ MORE
The Federal Circuit affirmed a Wisconsin district court’s decision to overturn the $52 million award a jury awarded to Promega Corporation (“Promega”) in its patent suit against Life Technologies Corp. (“Life”). The Federal Circuit also upheld the district court’s decision denying Promega’s request for a new trial on damages. For the Federal Circuit, there was to be no second bite at the apple: at trial, Promega pursued an all-or-nothing damages calculation strategy that improperly assessed damages based on worldwide infringement, and accordingly it had waived its right to prove damages based on infringement that occurred only in the United States.
On Tuesday, November 7, 2017, the USPTO published its final rule clarifying the situations in which the Office will recognize the existence of the attorney-client privilege in proceedings before the PTAB. New section 37 C.F.R. 42.57 provides that all communications between a client and a USPTO patent practitioner (i.e. a registered attorney or agent), or between a client and a person authorized under foreign law to provide legal advice on patent matters, which communications are within the scope of the practitioner’s authority, will be afforded the attorney-client privilege. READ MORE
On Wednesday, the en banc Federal Circuit decided Aqua Products, Inc. v. Matal, 2015-1177 (Oct. 4, 2017 Fed. Cir.), which addressed the allocation of burdens when the patent owner in an IPR moves to amend its patent to add substitute claims. The decision is 148 pages long, with three separate opinions and two separate dissenting opinions, no opinion or dissent fully joined by more than five judges, with only two judges signing a single opinion and, instead, most judges agreeing with parts of two or even three separate opinions.
In today’s blog post, we keep it very simple, though, given this blog’s mandate to focus on practical thoughts for the busy practitioner. In this post, we address this: What in the Aqua decision is precedential, and what does that mean in practice? READ MORE