Archives: IP Litigation

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Oil States Energy Services, LLC v. Greene’s Energy Group, LLC, et al.: The Magic Happens Around the Word “Franchise”

In Oil States Energy Services, LLC v. Greene’s Energy Group, LLC, et al  the Supreme Court found that inter partes review is constitutional under Article III and the Seventh Amendment of the Constitution in a 7-2 opinion delivered by Justice Thomas. The Court determined that inter partes review falls “squarely” within the public rights doctrine.  … Continue Reading

Texas Court Finds IPR Estoppel Extends To Grounds That Could Have Been Raised In Joinder Petition

U.S. patent law provides that any patent challenger initiating an inter partes review (IPR) proceeding at the United States Patent & Trademark Office (PTO) “may not assert” an invalidity ground in a patent case in U.S. district court or in the U.S. International Trade Commission that it “raised or reasonably could have raised during that inter partes review.”  Despite … Continue Reading

Court of Appeal Decides That the Electronic Supply of Software Does Not Amount to a “Sale of Goods”

The Court of Appeal has allowed an appeal from the judgment of a High Court case, which concerned the question of whether a licence to use electronically supplied software amounts to the “sale of goods” under the Commercial Agents (Council Directive) Regulations 1993 (“Regulations”).  This question is important, given the significant protections and post-termination payouts … Continue Reading

USITC Declines To Designate An Antitrust-Based Section 337 Investigation For Early Disposition

Under a pilot program initiated in 2013, the U.S. International Trade Commission (ITC) may designate an investigation for early disposition if it believes that there is a potentially case-dispositive issue warranting the program’s speedy (100-day) treatment.  Since the program’s inception, the ITC has employed it sparingly, with only a handful of investigations garnering entry into … Continue Reading

USITC Institutes Antitrust-Based Section 337 Investigation

Just days after affirming an administrative law judge’s decision to dismiss price fixing claims brought under Section 337 against numerous foreign steel companies for failing to plead “antitrust injury” (see our prior post), the U.S. International Trade Commission (ITC) has issued a notice announcing institution of another investigation involving antitrust claims (Certain Programmable Logic Controllers … Continue Reading

Zazzle And Other Print-On-Demand Websites Can Breathe A Sigh Of Relief . . . For Now

Last month, in a February 8, 2018 Order, the Central District of California vacated its injunction in Greg Young Publishing, Inc. v. Zazzle, Inc., 2:16-cv-04587-SVW-KS, in which Zazzle was “permanently enjoined from infringing any of the exclusive rights in 17 U.S.C. § 106 with respect to Plaintiff’s copyrighted works…”  See Permanent Injunction and Order, October 27, 2017.  … Continue Reading

U.S. International Trade Commission Affirms ALJ’s Dismissal Of Antitrust-Based Claims In Carbon And Alloy Steel Products

Section 337 of the U.S. trade laws provides the U.S. International Trade Commission with the authority to prevent “unfair practices in import trade.”  While the statute is best known for its provisions that allow the ITC to exclude imported goods that infringe U.S. intellectual property rights, the statute also provides more generally for the ITC’s … Continue Reading

Exergen Corp. v. Kaz USA Represents Another In A String Of Recent Setbacks For Patent Infringement Defendants On Eligibility Challenges

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

Does Aatrix Software Provide Software Patent Owners Shelter From The “Alice Storm”?

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

California Court Weighs In On Patent Venue In Multi-District States

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

Another Domestic Industry Lesson For Section 337 Litigants

The requirement of establishing a “domestic industry” in articles protected by a patent is a unique and important aspect of Section 337 litigation.  Without it, the statute’s exclusionary remedies against imports that infringe a patent cannot be invoked.  The statute enumerates the types of activities that can satisfy the “economic prong” of the domestic industry … Continue Reading

USITC Rings In The New Year By Designating An Investigation For Early Disposition

Under a pilot program initiated in 2013, the U.S. International Trade Commission (ITC) may designate an investigation for early disposition if it believes that there is a potentially case-dispositive issue warranting the program’s speedy (100-day) treatment.  Since the program’s inception, the ITC has employed it sparingly, with only a handful of investigations garnering entry into … Continue Reading

Look Out Below: The New Year’s Mixed Signals On Patent Eligibility

Challenges to patent eligibility under 35 U.S.C. § 101 have become so routine in patent litigation that it is easy to overlook the opinions that seem to issue almost daily from the district courts and, less frequently, from the Federal Circuit.  If one were to judge solely by the tenor of recent cert petitions filed with … Continue Reading

Illinois District Court Reaffirms Broader Interpretation Of IPR-Estoppel

As we previously reported (here), the U.S. District Court for the Northern District of Illinois in an August 2017 decision in Oil Dri Corp. v. Nestle Purina Petcare Co., No. 1-15-cv-01067 (N.D. Ill., Aug. 2, 2017) joined the seeming trend of courts interpreting estoppel against patent challengers in inter partes review (IPR) proceedings more broadly … Continue Reading

U.S. Supreme Court To Decide Whether Patent-Holders Can Recover Foreign Lost Profits

On January 12, 2018, the U.S. Supreme Court granted certiorari in WesternGeco L.L.C. v. ION Geophysical Corp., No. 16-1011.  The case stems from an opinion of the Federal Circuit in which a divided panel affirmed a jury’s verdict of patent infringement and its damages award of $12.5 million in reasonable royalties but reversed the jury’s additional … Continue Reading

Federal Circuit To Decide Whether A Corporation Can Be Sued For Patent Infringement In Any Federal District In Its State Of Incorporation

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

The Pendulum Continues To Swing On The Scope Of IPR Estoppel

The America Invents Act of 2011, which ushered in a new regime for post-grant patent challenges at the U.S. Patent and Trademark Office (PTO), provides that any patent challenger initiating an inter partes review (IPR) proceeding at the PTO “may not assert” an invalidity ground in a patent case in U.S. district court or in the U.S. … Continue Reading

The $93.4 Million Question: Can Patent-Holders Recover Profits Lost On Contracts To Be Performed Outside The U.S.?

Is a patent-holder precluded from recovering lost-profits damages for patent infringement if those profits would have been earned on contracts for services to be performed outside of U.S. territory?  That is the $93.4 million question presented by the cert petition in WesternGeco L.L.C. v. ION Geophysical Corp., No. 16-1011 and that the Supreme Court is … Continue Reading

USITC Denies Early Disposition Pilot Program Status In Three More Section 337 Investigations

The U.S. International Trade Commission (ITC) has denied respondents’ requests for entry into the ITC’s pilot program for early case disposition in a trio of recent orders: in Certain Insulated Beverage Containers, Components, Labels, and Packaging Materials Thereof, Inv. No. 337-TA-1084 (Nov. 17, 2017); and in the companion cases of Certain Color Intraoral Scanners and Related Hardware … Continue Reading

Key Intellectual Property Enforcement Mechanism or Toothless Tiger? – The US Department of Justice and Department of State Launch Intellectual Property (IP) Law Enforcement Coordinator Network

On Friday, December 15, 2017, the US Department of Justice and Department of State announced the launch of an IP Law Enforcement Coordinator Network.  The Network focuses on international trademark counterfeiting, copyright piracy and other forms of intellectual property rights infringement across the world, spanning all industry sectors.  Though the components of the Network are … Continue Reading

Giving Defendants a Second Chance: Failure to Assert Improper Venue Prior to TC Heartland is Not a Waiver Under the Federal Rules

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

USITC Denies Request For Entry Into Early Disposition Pilot Program

Under a pilot program initiated in 2013, the U.S. International Trade Commission (ITC) may designate an investigation for early disposition if the ITC believes that there is a potentially case-dispositive issue warranting the program’s speedy (100-day) treatment.  Since the program’s inception, however, the ITC has designated only a handful of cases for early disposition.  Although … Continue Reading

USITC Maintains General Exclusion Order Against Foam Footwear Despite PTO’s Finding of Unpatentability On Reexamination

For the second time in the past few months, the U.S. International Trade Commission (ITC) has decided to maintain an exclusion order despite final unpatentability findings by the U.S. Patent and Trademark Office (PTO). The investigation is Certain Foam Footwear, Inv. No. 337-TA-567, which resulted in a general exclusion order in July 2011 based on … Continue Reading
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