Archives: Patent Litigation

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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

Federal Circuit Rejects Requirement That Patent Owners Have the Burden to Prove the Patentability of Amended Claims Proffered During Inter Partes Review Proceedings

The Federal Circuit has issued its long-awaited ruling in Aqua Products, Inc. v. Matal, No. 2015-1177, with the majority of the en banc court agreeing that the requirement by the Patent Trial and Appeal Board (PTAB) that patent owners have the burden to prove the patentability of amended claims proffered during inter partes review (IPR) … Continue Reading

ITC Refuses To Allow Limited Usage Of Protected Material In European Patent Proceedings; Calls For Granular Examination Of Public Interest Issues

The U.S. International Trade Commission (USITC) has decided to review in part an Administrative Law Judge (ALJ)’s finding of violation of Section 337 based on patent infringement in Certain Semiconductor Devices, Semiconductor Device Packages, and Products Containing Same, Inv. No. 337-TA-1010 (Sept. 29, 2017).  While review of patent issues is not unusual, the Notice of … Continue Reading

Federal Circuit in Visual Memory Struggles with Alice Test (Part Two)

In Part One of this post, I summarized the Federal Circuit’s recent ruling on patent eligibility in Visual Memory LLC v NVIDIA Corp. In this second part I look at Judge Hughes’ dissent and the majority’s response to Hughes. Dissent Judge Hughes believed the claims could not be described at a lower level of abstraction … Continue Reading

Federal Circuit in Visual Memory Struggles with Alice Test (Part One)

In a rare reversal of a district court’s patent-ineligibility holding, the Federal Circuit found the claims at issue in Visual Memory LLC v NVIDIA Corp. patent-eligible under Step 1 of the Supreme Court’s two-part eligibility test in Alice v. CLS Bank.  The Federal Circuit found that the claims (directed to computer memory) were, for purposes … Continue Reading

District Court Non-Infringement Ruling Does Not Warrant Rescinding USITC Exclusion Order

In yet another decision concerning how rulings in parallel, patent challenge proceedings impact Section 337 investigations, the U.S. International Trade Commission (ITC) has refused to rescind an exclusion order issued against a defaulted party despite a district court’s summary judgment ruling that it did not infringe the patent. The investigation is Certain Beverage Brewing Capsules, … Continue Reading

USPTO Continues Outreach on Patent Subject Matter Eligibility with Recap of Roundtable Discussions

The United States Patent and Trademark Office (“USPTO”) recently released a Report summarizing the comments received during two roundtable discussions that the USPTO hosted in 2016 on patent subject matter eligibility. Since 2010, the U.S. Supreme Court has issued four major decisions that have transformed subject matter eligibility law, and the USPTO has responded with … Continue Reading

USITC Remands ALJ’s Enforcement Decision to Address Infringement Issues

In an August 4, 2017 Notice, the US International Trade Commission announced that it has determined to review an administrative law judge (ALJ)’s initial determination in the enforcement proceeding in Certain Network Devices, Related Software, and Components Thereof, Inv. No. 337-TA-944 (Enforcement Proceeding).  The Commission’s notice could lead to additional rulings by the presiding ALJ (Shaw) … Continue Reading

Illinois District Court Continues Trend Toward Broader Interpretation 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 … Continue Reading

USITC Will Not Bar Hoverboards

In a much-anticipated ruling, the U.S. International Trade Commission (ITC) has declined to issue an exclusion order barring hoverboards from the U.S. market, finding that the popular consumer items did not infringe the claims of the patent asserted against them. The investigation, captioned Certain Motorized Self-Balancing Vehicles, Inv. No. 337-TA-1000, was instituted in May 2016 … Continue Reading

Intellectual Property Threats Reforms – Will IP Owners Benefit?

The Intellectual Property (Unjustified Threats) Act 2017 (the “Act”) comes into force on 1 October. It will reform UK law on unjustified threats in intellectual property infringement disputes. What will change and will this benefit IP owners? Currently, UK legislation provides that a person (typically the rightsholder) must not threaten another person with proceedings in … Continue Reading

Providing Scientific Information in Patents after Nautilus

Scientific information—features of an invention that are known through physical analysis—often provides the foundation for patent claims.  But providing such information can also risk the validity of a patent if it is not clearly explained in the patent.  Since the Supreme Court’s 2014 decision in Nautilus, Inc. v. Biosig Instruments, Inc. heightened the patent law … Continue Reading

One Win, One Loss for the ITC on Invalidity Holdings at the Federal Circuit

The Federal Circuit has recently ruled on two appeals of Section 337 investigations involving findings of patent invalidity. As we reported in a prior blog, in Certain Beverage Brewing Capsules, Components Thereof, and Products Containing Same, Inv. No. 337-TA-929, the products under investigation were reusable beverage brewing capsules designed to replace the prior art cup-shaped … Continue Reading

Are Inter Partes Reviews “Quintessential” Agency Adjudications?

A superlative or excessive statement is often a dead give-away that the statement may not be true.  In deciding whether the America Invents Act’s inter partes review provisions violate Article III of the Constitution of the United States, the Federal Circuit in MCM Portfolio LLC v. Hewlett-Packard Company, 815 F.3d 1284, 1291 (Fed. Cir. 2015) … Continue Reading

German Federal Constitutional Court delays UPC

The launch of the Unified Patent Court and Unitary Patent has been dealt a blow from an unexpected corner. Following delays caused by Brexit and the political uncertainty in the UK, the attention suddenly shifts to the ratification process in Germany. It is being reported that the German Federal Constitutional Court (Bundesverfassungsgericht) has asked the … Continue Reading

Uncharted Waters: ITC Administrative Law Judge Recommends $37 Million Penalty For Prohibited Fish-Finder Sales

In an enforcement proceeding stemming from the ITC’s December 2015 decision in Certain Marine Sonar Imaging Devices, Inv. No. 337-TA-921, ALJ David Shaw has found that the ITC’s cease and desist order was violated by continued infringing sales of imported products and has recommended that respondent Garmin be assessed a civil penalty of $37 million. … Continue Reading

Exhausted: The Supreme Court Takes The Federal Circuit To Task (Again)

On May 30, 2017, the U.S. Supreme Court continued its recent string of decisions reversing Federal Circuit holdings on fundamental issues of patent law.  Taking on patent exhaustion in Impression Products, Inc. v. Lexmark Int’l, Inc., No. 15-1189, the Court unanimously held that that “a patentee’s decision to sell a product exhausts all of its … Continue Reading

Change of Scenery: TC Heartland Reshapes the Patent Litigation Landscape

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 … Continue Reading

Preparing for (or Avoiding) a Schoolyard Brawl: Rationalizing Patent Value

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

No Clear Consensus on Patent Venue During TC Heartland Oral Argument

Further to our colleagues’ prior blogs on this matter (here, here, and here), on March 27, the US Supreme Court heard arguments in TC Heartland LLC v. Kraft Foods Group Brands LLC  to decide whether 28 U.S.C. § 1400(b) (“patent venue statute”) is the sole and exclusive provision controlling venue in patent infringement actions or … Continue Reading
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