The Federal Circuit’s recent opinion in Pacific Biosciences of California, Inc. v Oxford Nanopore Technologies, Inc. et al. reminds us that new trial motions are hard to win, even when the adversary violates a pretrial motion in limine (MIL) order. Rather, the district court judge’s curative instructions and procedures to avoid future violations of a … Continue Reading
In patent infringement cases involving consumer electronics and the like, the accused instrumentality oftentimes includes components the accused infringer obtained from third-party suppliers. To prove infringement, the patent owner may need discovery from the third party, such as source code, and that discovery would in turn be relied upon by the patent owner’s testifying expert. … Continue Reading
The Patent Trial and Appeal Board (PTAB) is an administrative law body of the US Patent and Trademark Office (USTPO) that determines disputes over the issuance, reissuance, and cancellation of patent claims. The PTAB has become well known to patent litigants since the implementation in 2012 of new proceedings, including Inter Partes Review (IPR), for … Continue Reading
Since the mid-2000s, mention Marshall, Tyler, Sherman, Beaumont or Texarkana to an experienced patent litigator and you would get knowing nods about this string of small Texas towns, tips on their favorite BBQ or Tex-Mex restaurants, and war stories about the big patent wars fought there. The Eastern District of Texas, along with the District … Continue Reading
Monday’s announcement of the institution of a section 337 investigation of Certain Batteries and Products Containing the Same, 337-TA-1244, is notable as the first time in recent memory that a battery company has sued in the US International Trade Commission (ITC) for design patent infringement. Battery patents typically cover new and useful features of a … Continue Reading
Since Egyptian Goddess, Inc. v. Swisa, Inc., the sole test for determining whether a design patent has been infringed is the ordinary observer test. Under this test, “if, in the eye of an ordinary observer, giving such attention as a purchaser usually gives, two designs are substantially the same, if the resemblance is such as … Continue Reading
Courts are exercising their power under Rule[1] 30(b)(4) to order that depositions be taken remotely and by videoconference during these uncertain times of the coronavirus pandemic. Such orders reflect concerns about the progress of cases, as discussed in our prior blog, and the public health. With remote depositions being essential under current circumstances, attorneys need … Continue Reading
Today’s litigators are advocates and strategists, excelling in the application of rules, the art of negotiation, and the power of oral argument, and they use these tools to achieve the best possible outcomes for their clients. In the age of COVID-19, with stay-at-home orders in effect across much of the nation, litigators may have lost … Continue Reading
Over the last decade, filings of patent lawsuits in the US rose to unprecedented highs in 2013, and remained high for a while thereafter, but have steadily declined in the last few years. The decline is variously attributed to Inter Partes review (IPR) proceedings established in 2011 under the America Invents Act (AIA) and a … Continue Reading
It is settled law under 35 U.S.C. § 287 that when the patent owner sells or authorizes the sale of a patented product, it must comply with the statute’s marking requirement to obtain the benefit of constructive notice or else damages do not begin to accrue until actual notice is given to the infringer. In … Continue Reading
In its November 13, 2019 decision in Columbia Sportswear v. Seirus, the Federal Circuit addressed the issue of whether the presence of a logo in the accused design should be considered when assessing infringement of a design patent and found that the district court erred in granting summary judgement without considering the impact of a … Continue Reading
As more and more courts grapple with the Coronavirus Public Health Emergency, many are issuing Administrative Orders with provisions for conducting business via teleconference or videoconference. Most courts and litigators are familiar with holding status conferences and discovery dispute hearings by phone conference. But what should courts and parties do about complex hearings such as … Continue Reading
In Samsung Electronics America, Inc. v. Prisua Engineering Corp., No. 2019-1169 (Fed. Cir. Feb. 4, 2020), the Federal Circuit squarely held that the Patent Trial and Appeal Board lacks the power to cancel patent claims for indefiniteness in an IPR, regardless of whether indefiniteness is raised by petitioner or on its own accord. If claims … Continue Reading
The U.S. International Trade Commission (ITC) has published in the Federal Register final revisions to its rules of practice and procedure governing Section 337 investigations, the investigations that the ITC conducts under 19 U.S.C. § 1337 based on private party complaints against imported articles that allegedly violate U.S. intellectual property rights. This completes a process … Continue Reading
For a third time in the past thirty days, a Judge Moore-led panel has found in favor of a patent owner defending its claims from an eligibility challenge under Section 101. In Exergen Corp. v. Kaz USA, Inc., Nos. 2016-2315, 2016-2341 (March 8, 2018), a panel majority (Moore, Bryson) upheld a lower court’s post-trial ruling … Continue Reading
On February 14, 2018, a Federal Circuit panel in Aatrix Software, Inc. v. Green Shades Software, Inc., No. 2017-1452, overturned a Middle District of Florida decision that held patent claims to systems and methods for importing data into viewable form on a computer to be patent-ineligible under 35 U.S.C. § 101. According to the majority opinion … Continue Reading
Earlier today (May 22, 2017), the U.S. Supreme Court unanimously held that venue for patent infringement suits against U.S. companies is limited to the company’s state of incorporation or where the company has a “regular and established place of business.” The Supreme Court’s decision—TC Heartland LLC v. Kraft Foods Group Brands LLC, Case No. 16-341—dramatically reshapes … Continue Reading
In a somewhat surprising move, the U.S. Supreme Court has agreed to address the question of the proper forum for patent litigation in TC Heartland, LLC v. Kraft Foods Group Brands LLC, No. 16-341. Although the U.S. Code contains a special venue provision for patent infringement actions that the Supreme Court had interpreted to be … Continue Reading
The Defend Trade Secrets Act was signed into law on May 11, 2016. It creates the first-ever federal civil cause of action for trade secret misappropriation. We have prepared an article on the Act. The article distills the DTSA’s most important aspects – and omissions – into a distinct set of takeaways of practical use to … Continue Reading
President Barack Obama signed the Defend Trade Secrets Act (DTSA) into law yesterday, May 11, 2016. As we previously reported, the Senate unanimously passed the bill on April 4, and the House overwhelmingly passed it on April 27. The President has long supported the legislation to bring greater harmonization to trade secrets enforcement, following an … Continue Reading
The Federal Circuit today denied a challenge to its venue precedent in patent infringement cases, rejecting arguments that a U.S. district court should be precluded from hearing a patent infringement action over a non-resident corporation without an established place of business in the district. The case, In re TC Heartland, LLC, No. 2016-105, originated from … Continue Reading
On April 27, 2016, the U.S. House of Representatives approved the Defend Trade Secrets Act, S. 1890, by a vote of 410-2. The Senate approved an identical bill 87-0 on April 4, 2016. President Obama is expected to sign the DTSA into law in short order. Once effective, the DTSA will create a federal, civil cause … Continue Reading
In Sports Dimensions, Inc. v. The Coleman Company, slip op., 2015-1553 (Fed. Cir. April 19, 2016), the U.S. Court of Appeals for the Federal Circuit held that a design patent incorporating functional elements must be construed to include ornamental aspects of those elements. It rejected a lower court’s construction of the design patent because the construction … Continue Reading
Teva Pharm. USA, Inc. v. Sandoz, Inc., U.S., No. 13-854, 1/20/15 Continuing its string of decisions reversing Federal Circuit precedent, today the Supreme Court rejected the Federal Circuit’s de novo standard for reviewing district court claim construction rulings. Rather, in view of the subsidiary fact findings that are typically integral to the claim construction process, … Continue Reading
