A. Antony Pfeffer

Counsel

New York


Read full biography at www.orrick.com

A. Antony Pfeffer has extensive experience representing plaintiffs and defendants in intellectual property litigation matters involving patent infringement and trade secret misappropriation, in state and federal courts as well as before the U.S. International Trade Commission (ITC). He is also experienced in conducting patent office proceedings including inter partes reviews (IPR), reexaminations, and interferences.

In addition to helping clients resolve disputes, Antony handles transactional and licensing work that helps to facilitate his clients’ strategic growth. This includes drafting, negotiating, and counseling clients on commercial collaborations, joint research arrangements, and a diverse range of other transactions. In addition, he participates in patent prosecution, review, opinion, and clearance work in various technology areas.

An engineer by training, Antony is adept at applying his scientific knowledge to develop litigation strategies for clients in a range of industries. He has litigated cases involving diverse technologies including medical imaging, diagnostics (both clinical and consumer use), expression of recombinant proteins, small-molecule pharmaceuticals, nutritional supplements, automotive, electronic devices, and computer software.

Antony’s clients have included Otsuka, Nitto Denko, Medinol, Akzo Nobel, Toyota, GE Healthcare, Barnes & Noble, Human Genome Sciences, Enzon Pharmaceuticals, Iovate, and Imclone Systems, among others.

Posts by: Antony Pfeffer

Seven Months’ Delay Too Much for Venue Transfer After TC Heartland…. Or Is It?

Order Granting Defendant’s Motion to Transfer for Improper Venue or, Alternatively, to Dismiss, Blue Rhino Global Sourcing, Inc. v. Best Choice Products a/k/a Sky Billiards, Inc., M.D.N.C. (June 20, 2018) (Judge Loretta C. Biggs) and Adrian Rivera v. Remington Designs, LLC, C.D. Cal. (June 19, 2018) (Judge John A. Kronstadt)

Courts continue to work through the backlog of venue motions created by the combo of TC Heartland and In re Micron Tech. rulings. In a pair of almost concurrently issued opinions two courts reached differing conclusions as to whether a seven month delay was sufficient to deem a venue transfer motion waived. READ MORE

Turning the Looking Glass at the Alice Inquiry

Orders Denying Petition for Rehearing En Banc, Aatrix Software, Inc. v. Green Shades Software, Inc., Fed. Cir. (May 31, 2018); Berkheimer v. HP Inc., Fed. Cir. (May 31, 2018)

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

Potential Issues for “Not Yet Practicing” PTAB Petitioners: Constitutional Requirements for Appealing PTAB Decisions

Order Reversing-In-Part, Vacating-In-Part, and Remanding, Altaire Pharmaceuticals, Inc. v. Paragon Bioteck, Inc., Appeal No. 2017-1487 (Fed. Cir. May 2, 2018) (Judge Evan J. Wallach)

Occasionally, a company may file a proceeding before the Patent Trial and Appeal Board (the “PTAB”), not with respect to its current use and practice of the contested patent, but for its potential future practice of the patent.  For example, a company may seek inter partes review (“IPR”) of a patent it does not use or infringe upon, purely for the purpose of clearing a pathway to use the patented technology several years down the line, before spending substantial resources to develop a product using that technology.   READ MORE

Use It or Lose It: Assert All Prior Art References During IPR

ZitoVault, LLC v. International Business Machines Corporation and Softlayer Technologies, Inc., N.D. Texas (April 4, 2018)

The defendants in this case chose not to assert all relevant prior art patents and printed publications during an IPR (in order to increase their likelihood of joinder with an instituted IPR) and were subsequently precluded from asserting that prior art in defense to an infringement action in the Northern District of Texas. This case serves as a reminder that parties should perform a careful review of prior art patents and printed publications prior to filing or joining an IPR lest they lose their right to assert crucial prior art. READ MORE

No Foul: “Jumpman” Can Keep Soaring

Rentmeester v. Nike, Inc., No. 15-35509, 2018 WL 1055846, at *6 (9th Cir. Feb. 27, 2018) (Judge Paul J. Watford)

On February 27, the Ninth Circuit upheld the dismissal of copyright claims against Nike, Inc. alleging that the company’s popular photograph of Michael Jordan and its “Jumpman” logo infringed upon an earlier photograph taken by Jacobus Rentmeester. The court found that although Nike’s photo and logo were “obviously inspired” by the Rentmeester photograph, they were not “substantially similar” and therefore did not infringe upon Rentmeester’s copyrights. READ MORE

To Avoid Attorneys’ Fees, Support Your Trial Arguments

Genes Industry, Inc. v. Custom Blinds and Components, Inc., Case No. SACV 15-0476 AG (C.D. Cal. Jan. 29, 2018 Order Re Plaintiff’s Motion for Enhanced Damages and/or Attorneys Fees and Costs).  

The standard for determining when a patent litigation is an “exceptional case” under 35 U.S.C. § 285 such that an award of attorneys’ fees is justified is a deliberately discretionary, open-ended one. Under the Octane Fitness standard, an exceptional case is one that stands out from others with respect to either the substantive strength of a party’s litigating position or the unreasonable manner in which a party conducted itself during the litigation. This opinion provides several guideposts in terms of conduct that should be avoided. READ MORE

Reversed! Failure to Assert Robust Nonobviousness Arguments During IPR Led to Reversal By The Federal Circuit

Owens Corning v. Fast Felt Corporation, Fed. Cir. (October 11, 2017)

During inter partes review proceedings, the Patent Trial and Appeal Board (“PTAB”) is required to give claims their broadest reasonable construction in light of the specification.  See 37 C.F.R. § 42.100(b).  Thus, when the PTAB imports claim limitations based on the invention’s preferred embodiments, its decision upholding patent validity may be subject to reversal.  In situations where a broader construction is argued by the petitioner and adopted in the Institution Decision, and the patent owner does not provide suitable arguments for nonobviousness in light of that broader construction, the Federal Circuit may choose to reverse rather than remand. READ MORE

Federal Circuit Rules that TC Heartland is a Change of Law Preventing a Waiver of Venue, But Rules That a Forfeiture of Venue May Still Exist

Granting Petition for Writ of Mandamus, In re: Micron Technology,
Fed. Cir. (November 15, 2017)

In the wake of the Supreme Court’s decision in TC Heartland, courts had been struggling with the question of whether defendants who had already answered waived their right to challenge the propriety of the plaintiff’s choice of venue.  This often turned on the question of whether TC Heartland was in fact a change of law.  If it was a change of law, then the post-TC Heartland venue challenge did not exist under Rule 12(g)(2), and therefore could not be considered waived under Rule 12(h)(1)(A).  If it was not a change of law, then there could be a waiver.  Today the Federal Circuit has settled this debate, but has also set forth that the district courts retain other bases to “reject a venue defense for non-merit reasons, such as by determining that the defense was not timely presented.”  Accordingly, the Federal Circuit opinion states that this ruling provides a “less bright-line, more discretionary framework[.]” READ MORE

Not All Buffalos are Alike: Court Finds No Likelihood of Consumer Confusion Between Bourbon Bottle and Wine Bottle Trade Dress

Findings of Fact and Conclusions of Law, Sazerac Co. Inc. v. Fetzer Vineyards,
N.D. Cal. (Sept. 19, 2017) (Judge William Orrick)

Winemaker Fetzer Vineyards recently escaped a trademark infringement lawsuit brought by Sazerac Co. Inc. over the label design and imagery featured on its 1000 Stories red zinfandel wine product.  Sazerac produces a bourbon called Buffalo Trace which features a label that contains an image of a buffalo facing head-on towards the right, as well as an image of a buffalo on the neck of the bottle and white and gold lettering.  Sazerac has used the Buffalo Trace trade dress in commerce since 1999, and has several federal trademark registrations for the buffalo design and the word mark BUFFALO TRACE.  In 2013, Fetzer developed a male-orientated bourbon aged wine brand and selected the buffalo as the icon for the brand based in part on an article in the Smithsonian magazine entitled “101 Objects that Made America.”  Although Fetzer’s wine label also featured an image of a buffalo in which the entire animal is visible, on its wine label the animal faces toward the left and is placed on a black background.  The following image is a comparison shot of the two respective bottles:

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