Patent Litigation

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The Federal Circuit Finds a “Hooke” to Patent Ineligibility

 On July 31, 2020, the U.S. Court of Appeals for the Federal Circuit issued a modified and reissued decision[1] (American Axle II) of its earlier October 3, 2019 decision[2] (American Axle I) in response to a combined petition for panel rehearing and hearing en banc concerning patent eligibility under 35 U.S.C. § 101. At issue were … Continue Reading

Beware! Inventors Include Those Who Significantly Contributed to a Claimed Invention – Even if their Contribution is Not Recited in the Claim

In the U.S., patent ownership vests with inventors, and each inventor can exploit their rights without accounting to the other. Neglecting to identify the true inventors of a claimed invention, and obtain assignments of their rights, can create chaos. This is what happened in Dana-Farber Cancer Institute, Inc. v. Ono Pharmaceutical (Fed. Circ., 2020), where … Continue Reading

The PTAB Informs: Applying Apple v. Fintiv

On July 13, 2020, the Patent Trial and Appeal Board (PTAB or Board) designated as informative two opinions applying its now precedential Apple Inc. v. Fintiv, Inc. opinion, which set forth factors governing the exercise of the PTAB’s discretion to deny institution of a post-issuance proceeding. In these two informative opinions, Apple Inc. v. Fintiv, … Continue Reading

In Assessing Design Patent Infringement, The Devil Is In The Details

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

Feel Like DOE is Having a Rebirth in Life Science Cases? You’re Not Alone

On June 15, 2020, the Supreme Court denied a petition for certiorari from the Federal Circuit’s 2019 Eli Lilly & Co. v. Hospira, Inc. opinion affirming infringement under the doctrine of equivalents (DOE). In doing so, the Supreme Court put to rest a more than decade-long dispute over attempts to market a generic version of … Continue Reading

Even If the Federal Circuit Could Award Attorney Fees for IPR Appeals, § 285 Does Not Permit It to Award Fees Incurred During the IPR

Normally, a branded bio/pharm company is pleased to escape an inter partes review (IPR) unscathed. Doubly so when the challenger moves voluntarily to dismiss its appeal. So what happened in Amneal Pharms. LLC v. Almirall, LLC, No. 20-1106, to cause Almirall to insist on receiving its attorney fees for a mere month of work before … Continue Reading

The Chinese Supreme People’s Court Intervenes on Patent Issues, with Focus on Pharmaceutical Experiments

In April 2020, the Supreme Court of the People’s Republic of China published the amended draft Provisions concerning interpretation of certain norms of the patent law and its implementing regulations about the administrative litigation of patent rejections and invalidations.[1] The Provisions offer the Supreme People’s Court the opportunity to address new issues and matters not … Continue Reading

Complimentary Webinar – Legal Insights Series – Equitable Attacks on Patents Live On: Learning From Case Studies

Inventors and lawyers — both in-house and firm counsel — involved in the prosecution of patents have a duty of candor to the US Patent Office, and breaching that duty renders patents unenforceable for inequitable conduct. Once common in litigation, allegations of inequitable conduct faced a more stringent review after the Federal Circuit’s decision in … Continue Reading

Articles that Infringe Only after Importation can be Excluded by the ITC

The Federal Circuit recently affirmed the International Trade Commission’s (“ITC” or “Commission”) Opinion in Certain Digital Video Receivers and Hardware and Software Components Thereof,[1] holding that the ITC’s authority to exclude products from the United States is not limited to “articles that infringe” at the time of importation, but can include articles that infringe after … Continue Reading

It’s A Snap: Supreme Court Rules that Trademark Owners can Recover Infringer’s Profits without Proving that Infringement was Willful

On April 23, 2020, the Supreme Court ruled that a trademark owner may recover an infringer’s profits under the federal Lanham Act without having to prove that the trademark infringement was “willful.” The ruling, in Romag Fasteners, Inc. v. Fossil Group, Inc. (Docket No. 18-1233), resolved a split among the Circuit Courts on this issue. … Continue Reading

“Consisting Essentially Of” Decision at Federal Circuit Supports Link between Specification and Claims in Composition Patents

The Appellants in HZNP Medicines v. Actavis Laboratories saw their hopes for rehearing dashed on February 25, 2020, when the Federal Circuit issued an order denying their petitions for panel rehearing and en banc rehearing. The decision leaves intact an order finding that claims reciting “consisting essentially of” could be found indefinite based on ambiguities … Continue Reading

PTAB Time-Bar Determinations Under 35 U.S.C. §315(b) Are Final and Not Appealable

Yesterday, in Thryv, Inc., f/k/a Dex Media, Inc. v. Click-To-Call Technologies, LP, et al., the U.S. Supreme Court ruled 7-2 that the non-appealability of Patent Trial and Appeal Board (PTAB) institution decisions encompasses PTAB decisions on whether a statutory time bar applies. More specifically, 35 U.S.C. §314(d), which sets forth the finality and nonappealability of … Continue Reading

Secondary Considerations at the PTAB: Nexus Required, but Amendments Allowed

The Supreme Court recognized long ago that a patentee can overcome a prima facie showing of obviousness by presenting objective evidence of non-obviousness, referred to as secondary considerations.[1] To do so, however, the patentee must establish a nexus between the challenged claims and the objective evidence. In a newly designated precedential decision, Lectrosonics, Inc. v. … Continue Reading

The Cold Hard Fact of Arctic Cat: Actual Notice is Necessary to Protect a Damages Claim from the Cold After Unmarked Patented Goods are Sold

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

Federal Circuit Says Logos Must Be Taken Seriously in Evaluating Infringement of Design Patents

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

Bad Faith Finding Still Required to Ban Patent Infringement Accusations

In Myco Industries, Inc. v. BlephEx, LLC,[1] decided April 3, 2020, the Federal Circuit reversed a district court’s preliminary injunction which forbade a patent owner from accusing others of patent infringement. The Federal Circuit found a lack of a finding of bad faith in the patent owner’s accusations of infringement. The Federal Circuit also found … Continue Reading

Complimentary Webinar – The Current State of U.S. Patent Litigation: Have We Reached the Bottom Yet?

Intellectual Property & Technology partners Steven Auvil and Tamara Fraizer will assess the current state of US patent litigation, including historic trends, major law changes impacting patent litigation, a review of 2019 and an assessment of the road ahead. Join us Thursday, April 9, 2020 at 12pm EDT/9am PDT. For more information, and to register, … Continue Reading

“Numerous Reasons” Support Finding Inequitable Conduct: Another Example of the Federal Circuit’s Current Approach to Inequitable Conduct

When the Federal Circuit decided Therasense in 2011[1], many thought the heightened standard announced by the Court for proving equitable conduct spelled the practical end of the doctrine. Contemporary commentators noted, “The Federal Circuit Continues to Make Inequitable Conduct More Difficult to Prove” and asked, “Is Inequitable Conduct in Patent Prosecution Dead?” It’s not dead. … Continue Reading

Foreign-based Companies Can Meet the Section 337 Domestic Industry Requirement

The United States International Trade Commission (ITC) can provide a powerful alternative forum for enforcement of Intellectual Property Rights, including U.S. patents.[1] But there are limitations on the actions that can be brought at the ITC. For example, to bring an action for patent infringement at the ITC, a patent owner must demonstrate, inter alia, … Continue Reading

Delaware Provides More Insight into the Scope of the Rights Derived by a Patent Term Extension

In a recent district court decision, Judge Stark (D. Del.) further clarified the scope of the rights derived from a Patent Term Extension (PTE) during the extension period. On January 7, 2020, Judge Stark granted a Rule 12(c) motion for judgment on the pleadings in Biogen Int’l GmbH v. Banner Life Sciences, dismissing Biogen’s complaint.[1]  … Continue Reading

Federal Circuit Holds PTAB Cannot Cancel Claims as Indefinite in IPR; Where Claims Cannot be Construed, PTAB’s Authority Limited to Denying Institution or Saying So in Final Written Decision

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
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