In a November 2019 blog post, Intel’s Executive Vice President and General Counsel Steven R. Rodgers announced Intel’s new diversity requirements.[1] “Beginning Jan. 1, 2021, Intel will not retain or use outside law firms in the U.S. that are average or below average on diversity.” Intel’s new “above-average” rule requires that firms doing work for … Continue Reading
The America Invents Act’s creation of patent challenge proceedings to be conducted by the USPTO’s Patent Trial and Appeals Board (PTAB) provided a powerful tool for challenging patent validity outside of costly litigation proceedings. But recent events are changing the strategic advantage that such proceedings may hold for patent challengers.… Continue Reading
The Federal Circuit has rejected Allergan’s ploy to shield its Restasis patents from the scrutiny of inter partes review by assigning them to the St. Regis Mohawk Tribe, finding that tribal immunity does not apply in such proceedings. The case is Saint Regis Mohawk Tribe, Allergan, Inc., v. Mylan Pharmaceuticals Inc., et al., Case No. 18-1638, … Continue Reading
The United States Supreme Court ruled on Friday that a patent owner can, at least in some situations, recover lost profits for the unauthorized use of its patented technology abroad. The 7-2 decision in WesternGeco LLC v. ION Geophysical Corp. overturned the Federal Circuit’s opinion, which relied on the presumption against extraterritorial application of U.S. … Continue Reading
In the third important patent venue decision it has issued in the past week (In re: BigCommerce, No. 2018-122 (May 15, 2018)), the Federal Circuit has clarified the proper location for patent infringement suits against U.S. corporations whose state of incorporation is large enough to have multiple federal judicial districts. According to the Court, a … Continue Reading
With IPRs here to stay, the USPTO is proposing to drop its BRI standard and interpret claims under the same standards as used by federal courts. Specifically, the USPTO has proposed to change the standard for interpreting claims in inter partes review, post grant review, and covered business method patent proceedings conducted by the PTAB … Continue Reading
When Allergan assigned its Restasis patents to the Saint Regis Mohawk Tribe last September, so that sovereign immunity could be used to help prevent their invalidation by the Patent Trial and Appeals Board (PTAB), politicians and the public cried foul. This past month, after the PTAB decided that sovereign immunity did not apply and scheduled … Continue Reading
As reported in our prior blog post, the Federal Circuit appears poised to decide whether a corporation can be sued for patent infringement in any federal district in its state of incorporation. In a recent order in the Central District of California case of Realtime Data LLC v. Nexenta Systems, Inc., No. 2-17-cv-07690-28 SJO (JCx), the … Continue Reading
The patent venue statute provides that “[a]ny civil action for patent infringement may be brought in the judicial district where the defendant resides.” 28 U.S.C. § 1400(b) (emphasis added). In TC Heartland, LLC v. Kraft Foods Grp. Brands, LLC, 137 S.Ct. 1517 (2017), the Supreme Court held that a corporate defendant resides in the state … Continue Reading
In its May 2017 decision in TC Heartland LLC v. Kraft Foods Group Brands, LLC, 137 S.Ct. 1514 (2017), the Supreme Court shocked the patent world by restricting the range of permissible venues in patent infringement cases for domestic corporations. (See our prior posts, here and here). The Federal Circuit has now found – in … Continue Reading
Patents are expensive and should provide value to any company that spends money on them. There is no single way to value patents, and the value of a patent may change depending on the company’s needs and as products and markets develop. We offer here a few practical suggestions to value patents and prepare for … Continue Reading
This past summer, the Supreme Court settled the debate about the standard to be applied by the Patent Trial and Appeal Board (PTAB) in construing patent claims – finding its use of the broadest reasonable interpretation (BRI), the approach used by the US patent office for the past century, was proper.1 Its decision left in … Continue Reading
This past summer, a divided Federal Circuit panel found, in the case of Amgen v. Sandoz, that the so-called “patent dance” under the Biologics Price Competition and Innovation Act of 2009 (BPCIA) is optional. This past Friday, the Federal Circuit declined to rehear that decision. Its decision provides biosimilar developers with continued choice while opening … Continue Reading
Can the International Trade Commission (ITC) offer trade relief when the importation of goods is not an act of direct infringement, but rather induces a subsequent act of infringement? In its 2011 determination that Suprema and Mentalix infringed, the ITC did just that. On appeal, in a revised en banc decision, the Federal Circuit has now … Continue Reading
In its fourth decision in the ten-year litigation between Akamai and Limelight, the Federal Circuit again addresses the issue of so-called divided infringement, this time providing guidance on the requirement that only a “single party” can directly infringe. This case had its most momentous turning point last summer, in June 2014, when the Supreme Court … Continue Reading
