For many years, German courts would, in principle, only grant a preliminary injunction in a patent case, if the patent in suit had “gone through the fire” in the sense of having survived an adversarial opposition or nullity proceeding at first instance. This case law was based on the consideration that it can be extremely … Continue Reading
On March 24, 2022, the Court of Appeals for the Federal Circuit issued a precedential opinion in Hunting Titan, Inc. v. Dynaenergetics Europe GMBH, affirming — on a procedural technicality — a precedential decision of a Precedential Opinion Panel (POP) of the Patent Trial and Appeal Board (PTAB) that granted a motion to amend claims … Continue Reading
Powerful remedies, particularly General Exclusion Orders, are often cited as a reason why patent owners should consider asserting their patents at the U.S. International Trade Commission (ITC) under Section 337 of the Tariff Act of 1930 instead of, or in addition to, in U.S. District Court. A recent Federal Circuit decision reaffirms another advantage of … Continue Reading
For the second time in four months, the U.S. Court of Appeals for the Federal Circuit has issued a precedential opinion about forum selection clauses (FSC) in confidentiality agreements. On October 7, 2021, the Federal Circuit issued a precedential opinion in Kannuu Pty Ltd. v. Samsung Electronics Ltd. et al., holding that, in a non-disclosure … Continue Reading
In its 2018 decision in Helsinn Healthcare S.A. v. Teva Pharmaceuticals USA, Inc., the Supreme Court held that an inventor’s sale of an invention to a third party who is obligated to keep the invention confidential can create an on-sale bar under AIA §102(a). Relying on Helsinn, the ITC’s ALJ Cheney has held, in In … Continue Reading
On Wednesday, November 3, 2021, the White House announced President Biden’s nomination of Judge Leonard P. Stark (U.S. District Court for the District of Delaware) to the U.S. Court of Appeals for the Federal Circuit. If approved, Judge Stark will succeed Judge Kathleen M. O’Malley, who recently announced that she will retire in March 2022.… Continue Reading
Serving a district court complaint for patent infringement on a foreign defendant usually requires compliance with the Hague Convention on Service. A recent Federal Circuit decision, however, endorses alternative options under Federal Rule 4(f)(3) that could significantly simplify the process for plaintiffs and make it more difficult for foreign defendants to avoid service and delay … Continue Reading
In a patent infringement lawsuit, a plaintiff often seeks to recover lost profits damages—the profits that the patent owner would have made but for the competitor’s alleged infringement—instead of a lower reasonable royalty. A plaintiff is not automatically entitled to such damages, though, even upon a finding of infringement. Rather, the patent owner must prove … Continue Reading
The Federal Circuit recently dismissed an interlocutory appeal filed by LG Electronics as untimely because LG filed its notice of appeal more than seven months after the district court’s order disposing of all LG post-trial motions except for its post-trial motion on damages. The opinion stands as a lesson to all parties contemplating an appeal … Continue Reading
A recent Federal Circuit decision has re-affirmed prior guidance on the pleading requirements for a plaintiff alleging patent infringement. The decision was issued in Bot M8 LLC v. Sony Corp. of Am., Case No. 2020-2218, on July 13, 2021. In short, while a plaintiff need not prove its case at the pleading stage, a plaintiff … Continue Reading
In United States v Arthrex, the Supreme Court held that 35 U.S.C. §6(c), which sets forth the authority of Patent Trial & Appeal Board (“PTAB”) Administrative Patent Judges (“APJs”), is unconstitutional because APJs effectively wield the power of principal officers (who require Senate confirmation) while being appointed as inferior officers (who do not require Senate confirmation) … Continue Reading
Much of the discussion about the Federal Circuit’s precedential opinion in Yu et al. v. Apple, Inc. et al. has focused on the perceived confusion and dysfunction of U.S. patent law that invalidates a claim directed to an “improved digital camera” as a patent-ineligible “abstract idea.” After delving into the underlying record, this author posits … Continue Reading
On June 21, 2021, in United States v. Arthrex, the United States Supreme Court ruled that Patent Trial & Appeal Board (“PTAB”) Administrative Patent Judges (“APJs”) are unconstitutionally appointed because they effectively wield the power of principal officers while being appointed as inferior officers. 594 U.S. ____ (2021).… Continue Reading
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
With its recent decision in Trimble Inc. v. PerDiemCo LLC, the Federal Circuit has opened the door for declaratory judgment actions a bit wider. The Court reversed the Northern District of California’s dismissal of a patent declaratory relief action based on lack of personal jurisdiction, and limited the scope previously articulated by its 1998 decision … 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
In 2020, the PTAB increasingly denied otherwise meritorious petitions for review under its discretionary authority, as my partner Steve Auvil and I recently discussed. Many such denials were made in view of co-pending litigation under the so-called Fintiv factors adopted last May. The reaction to the PTAB’s approach was vocal and divided, and the USPTO … Continue Reading
On March 11, 2021, the Federal Circuit issued a precedential decision in In re PTAB of Trustees of the Leland Stanford Junior University affirming a decision by the Patent Trial and Appeal Board (PTAB) to maintain the examiner’s rejection of claims involving analysis of genetic data to determine inheritance. The Federal Circuit found that the … Continue Reading
Back in July and December 2020, we wrote about the seeming rise in allegations of infringement allegations under the doctrine of equivalents (DOE) in life sciences cases. We noted that in those recent cases the Federal Circuit provided in-depth analyses of the application of DOE, prosecution history estoppel, and the various other limits on the … Continue Reading
On December 21, 2020, the US Patent and Trademark Office (Office) published final rules in the Federal Register, implementing the decision in Hunting Titan, Inc. v Dynaenergetics Europe GMBH as follows regarding motions to amend in inter partes review (IPR) and post-grant review (PGR) proceedings: The patent owner bears the burden of persuasion to show, … Continue Reading
On October 13, 2020, the U.S. Supreme Court agreed to take up the question of the constitutionality of the Patent Trial and Appeal Board (PTAB) under the America Invents Act (AIA). The Supreme Court will review the decision of the Court of Appeals for the Federal Circuit in what has become well known as the … Continue Reading
On August 27, 2020, the Federal Circuit issued a decision in Baxalta Inc. v. Genentech, Inc. overturning the District Court’s ruling that Genentech did not infringe the claims of US Patent No. 7,033,590 and remanded for further proceedings. The Federal Circuit’s decision was based on its finding that the District Court’s claim construction was erroneous … Continue Reading
In Godo Kaisha IP Bridge 1 v. TCL Commun. Tech. Holdings Ltd.,[1] the Federal Circuit definitively answered the question: “Who determines the standard-essentiality of the patent claims at issue—the court, as part of claim construction, or the jury, as part of its infringement analysis?” According to this precedential decision authored by Judge Kathleen O’Malley: “Where … Continue Reading
