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A New Vision: Collateral Estoppel Doesn’t Extend to Related Claims

The US Court of Appeals for the Federal Circuit reversed a district court order excluding expert validity testimony based on collateral estoppel stemming from an inter partes review (IPR) proceeding of a related patent,...more

Section 337 Doesn’t Require Article III Standing for Claimant but Claimant Must Be “Patentee”

The US Court of Appeals for the Federal Circuit vacated and remanded a district court’s grant of summary judgment, finding that the language used in an invention assignment clause was subject to more than one reasonable...more

Stud-y Harder: Domestic Industry Must Be Established for Each Asserted Patent

Addressing a final determination by the US International Trade Commission of no violation of § 337, the US Court of Appeals for the Federal Circuit affirmed that the complainant had not satisfied the economic prong of the...more

ITC Shines Light on DI: Complainant Can’t Aggregate Investments Across Patents, Prongs

Addressing a determination by its chief administrative law judge (CALJ) finding a violation of § 337, the US International Trade Commission reversed and held that the complainant had not satisfied the economic prong of the...more

R&D Expenditures Need Only Relate to Subset of Domestic Industry Product

Addressing a decision by the US International Trade Commission finding a violation of Section 337 based on importation of certain TV products, the US Court of Appeals for the Federal Circuit agreed that the patent holder had...more

No Smoking Gun Here: Soliciting Input Sufficient to Satisfy Commission’s Statutory Obligation

Addressing a decision by the US International Trade Commission finding a violation of Section 337, the US Court of Appeals for the Federal Circuit agreed with the Commission on a slew of issues, including its determination...more

Present-Tense Claim Terms Not Sufficient to Require Actual Operation

The US Court of Appeals for the Federal Circuit affirmed a US International Trade Commission (Commission) decision that found no violation of Section 337 due to noninfringement. The Court disagreed with the Commission that...more

Threat of ITC Exclusion Order Is Too Speculative to Constitute Irreparable Harm

The US Court of Appeals for the Federal Circuit affirmed a decision by a federal district court denying a defendant’s motion for a preliminary injunction seeking to enjoin a parallel International Trade Commission (ITC)...more

Patent Invalidity Doesn’t Demonstrate Good Faith for Consent Order Violation

The US Court of Appeals for the Federal Circuit affirmed a US International Trade Commission (ITC) decision upholding a civil penalty for violating a consent order based on a patent that was later found to be invalid...more

Nailed It: Expert Must at Least Meet Ordinary Skill Level to Testify from POSITA Perspective

Addressing a US International Trade Commission (ITC) decision finding a § 337 violation as to one patent but no violation as to four other patents, the US Court of Appeals for the Federal Circuit reiterated that a technical...more

Knowledge and Control of Importation Can Lead to § 337 Violation

The US Court of Appeals for the Federal Circuit affirmed a US International Trade Commission (ITC) decision that a respondent qualified as an importer under § 337 despite not being the actual importer of record, based on the...more

Domestic Industry May Include Old Investments with Sufficient Nexus to Continuing Expenditures

Addressing orders entered by the International Trade Commission (ITC) against imported ATMs, the US Court of Appeals for the Federal Circuit held that expenditures up to 10 years before the complaint may be used to establish...more

PTAB Refuses to Deny IPR Petitions Based on Parallel ITC Proceeding

Addressing an inter partes review (IPR) petition filed by respondents to an earlier-filed International Trade Commission (ITC) Section 337 investigation, the Patent Trial and Appeal Board (PTAB) declined to treat the petition...more

ITC Must Grant Relief Against Defaulting Respondents

Addressing an International Trade Commission (ITC) refusal to enter an exclusion order against defaulting respondents, the US Court of Appeals for the Federal Circuit reversed, holding that the ITC is required to grant relief...more

ITC May Reassess Civil Penalty Even If Asserted Claims Are Later Invalidated

Addressing a US International Trade Commission (ITC) decision refusing to reassess its imposition of a civil penalty for a violation of a consent order, the US Court of Appeals for the Federal Circuit held that its earlier...more

Extrinsic Evidence Not Required to Overcome Means-Plus-Function Interpretation

Addressing construction of claims including means-plus-function claim elements, the US Court of Appeals for the Federal Circuit overturned an International Trade Commission (ITC) plain and ordinary meaning construction in...more

IP Update, Vol. 15, No. 12, December 2012

In This Issue: Patents - ..Federal Circuit Rules It’s Own Standards Apply When Considering Preliminary Injunctions ..Preliminary Testing of Medical Devices in Animals Enables Their Use in...more

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