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
The Answer Is Yes In Keith Mfg. Co. v. Butterfield,[1] decided April 7, 2020, the Federal Circuit held that, where parties stipulate to dismiss a case with prejudice, a party still can move for attorney’s fees. The court distinguished this stipulated dismissal situation from the one in Microsoft Corp. v. Baker,[2] in which a single … Continue Reading
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
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
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
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
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
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
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
In a recent ruling in Personal Audio, LLC v. CBS Corp., the Federal Circuit affirmed the District Court’s final judgment, which reversed a prior $1.3 Million jury verdict in Plaintiff’s favor. It found Personal Audio’s constitutional arguments raised in its appeal to the Federal Circuit were barred by its prior appeal of the US Patent … Continue Reading
Although the U.S. Supreme Court recently denied certiorari in Acorda Therapeutics v. Roxane Laboratories, which sought review of the “blocking patent” doctrine, expecting the doctrine’s appearance in obviousness cases across all technologies is logical and will undoubtedly speed the development of the law on a number of unanswered questions. Partner David Manspeizer explains further in an … Continue Reading
In a landmark decision delivered recently by the UK Supreme Court, Professor Shanks, an inventor, was awarded £2 million in compensation for a device he created. Professor Shanks developed the technology while he was employed by a Unilever company and the invention has proved lucrative for Unilever in many jurisdictions. Background In the early 1980s, … Continue Reading
Steven Auvil, partner and leader of our US IP litigation practice will serve as a moderator at IAM’s Patent Litigation: Navigating the Law and Policy Landscape in the U.S., on November 5th in Washington DC. Steven’s panel, “Navigating the US Litigation Climate” will discuss lessons IP owners can learn from this past year’s docket, the … Continue Reading
In its recently issued opinion in Automotive Body Parts Association v. Ford Global Technologies, LLC, the Federal Circuit reaffirms the importance of design patents and their value in an overall patent portfolio strategy for automotive manufacturers and others who may be threatened by aftermarket sales of replacement parts. It also provides guidance on the arguments … Continue Reading
Squire Patton Boggs is thrilled that our outstanding IP team continues to be recognised for its expertise. Partner Ron Lemieux has recently been listed in the IAM Patent 1000 as one of the world’s leading patent professionals. Ron is based in our Palo Alto office and we are so pleased that his work and dedication … Continue Reading
The U.S. Supreme Court issued a 6-3 decision on June 10, 2019 holding that the Government was not a “person” capable of instituting one of the three AIA patent review proceeding described below. This holding overturned a prior decision by Court of Appeals for the Federal Circuit (Federal Circuit) in favor of the United States … Continue Reading
In its recent ruling in IBG LLC v. Trading Techs. Int’l, the Federal Circuit vacated determinations by the Patent Trial and Appeal Board (PTAB) on patents relating to a graphical user interface (“GUI“), holding that the patents were “not … technological inventions” and were therefore ineligible for Covered Business Method Patent Review (“CBM review”). The … Continue Reading
The United States Patent and Trademark Office (USPTO) has announced revised guidance (2019 Revised Patent Subject Matter Eligibility Guidance) for evaluating subject matter eligibility of patent claims. The new guidance, published in the Federal Register on January 7, 2019, and effective immediately for all applications, is intended to help Examiners determine whether a proposed patent … Continue Reading
The Federal Circuit recently affirmed a Patent Trial and Appeal Board (“PTAB”) inter partes review (“IPR”) decision in Palo Alto Networks, Inc. v. Finjan, Inc., No. 2017-2059, holding that the PTAB did not err in concluding that a person of ordinary skill would not have combined certain prior art identified by Palo Alto Networks, Inc. … Continue Reading
In Click-to-Call Technologies, LP v. Oracle Corporation, No.2015-1242 (en banc), the Federal Circuit has overturned the Patent Trial and Appeal Board’s longstanding interpretation of 35 U.S.C. §315(b)’s time bar for inter partes review (“IPR”) petitions, finding that the service of any civil complaint for patent infringement— even if later dismissed—starts the clock on the statute’s one-year … Continue Reading
In yet another twist in the saga of Certain Beverage Brewing Capsules, Components Thereof, and Products Containing Same, Inv. No. 337-TA-929, the U.S. International Trade Commission (ITC) has issued an order temporarily rescinding the extant remedial orders in that investigation pending appeal of a district court judgment finding the claims of the patent-in-suit invalid. The … Continue Reading
Just one month after the U.S. International Trade Commission (ITC) issued an important decision in Certain Solid State Storage Drives, Stacked Electronics Components, and Products Containing Same, Inv. No. 337-TA-1097 holding that labor, capital, and employment investments in non-manufacturing activities, such as engineering and research and development, can satisfy Section 337’s domestic industry requirement (see … Continue Reading
Just a few days after denying a motion to terminate in Certain Color Intraoral Scanners and Related Hardware and Software, Inv. No. 337-TA-1091, Order No. 23 (May 18, 2018) that was based on a forum selection clause in a prior agreement between private parties (see our prior post), Administrative Law Judge Cheney granted a motion to … 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
