In response to a petition for panel rehearing, the US Court of Appeals for the Fifth Circuit withdrew its prior decision finding that an automotive parts supplier did not have constitutional standing to pursue an antitrust...more
The US Court of Appeals for the Federal Circuit ordered a district court to transfer a patent infringement case from Texas to California because the district court had wrongly assessed facts relating to the convenience of...more
The US Court of Appeals for the Fifth Circuit determined that an automotive parts supplier did not have constitutional standing to pursue an antitrust lawsuit against standard essential patent (SEP) owners that refused to...more
KEY TAKEAWAYS AND OUTLOOK FOR 2022 -
Tracking with this era’s continuation and uncertainty trends―global supply chain disruption, innovation outpacing legislation, the unstoppable internet of [all the] things (IoT)―2022 is...more
2/18/2022
/ Administrative Procedure Act ,
America Invents Act ,
Appeals ,
Corporate Counsel ,
Department of Justice (DOJ) ,
EU ,
Final Written Decisions ,
FRAND ,
Inter Partes Review (IPR) Proceeding ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patent-Eligible Subject Matter ,
Patents ,
Section 101 ,
Standard Essential Patents ,
USPTO ,
Venue
The US Court of Appeals for the Second Circuit transferred an appeal of a preliminary injunction enjoining alleged copyright and trademark infringement to the US Court of Appeals for the Federal Circuit because the operative...more
The Supreme Court of the United States upheld the validity of doctrine of assignor estoppel but concluded that the US Court of Appeals for the Federal Circuit failed to recognize the boundaries of the doctrine. Minerva...more
The US Court of Appeals for the Federal Circuit concluded that while it did not have jurisdiction to consider the direct appeal of a Patent Trial & Appeal Board decision denying institution, it could review the decision under...more
In 2020, the US Supreme Court and Court of Appeals for the Federal Circuit continued to refine key aspects of intellectual property law on issues that will have an impact on litigation, patent prosecution and business...more
1/28/2021
/ Appeals ,
En Banc Review ,
Hatch-Waxman ,
Life Sciences ,
Medical Devices ,
Patent Litigation ,
Patent-Eligible Subject Matter ,
Patents ,
SCOTUS ,
Section 101 ,
Technology Sector ,
United States v Arthrex Inc ,
Venue
The US Court of Appeals for the Federal Circuit found that in cases brought under the Hatch-Waxman Act, for purposes of determining venue, infringement occurs only in districts where actions related to the submission of an...more
11/12/2020
/ Abbreviated New Drug Application (ANDA) ,
Generic Drugs ,
Hatch-Waxman ,
Mylan Pharmaceuticals ,
Patent Infringement ,
Patent Litigation ,
Patents ,
Pharmaceutical Industry ,
Pharmaceutical Patents ,
Prescription Drugs ,
Venue
The Supreme Court of the United States agreed to consider whether Patent Trial and Appeal Board (PTAB) judges are unconstitutionally appointed. The United States of America v. Arthrex, Inc., Case Nos. 19-1452, -1458, -1459...more
10/22/2020
/ 5 U.S.C. § 7513(a) ,
Administrative Patent Judges ,
Appointments Clause ,
Arthrex Inc v Smith & Nephew Inc ,
Constitutional Challenges ,
Director of the USPTO ,
Inferior Officers ,
Inter Partes Review (IPR) Proceeding ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Polaris Innovations Ltd v Kingston Technology Co ,
Principle Officers ,
SCOTUS ,
Severability Doctrine ,
Tenure ,
United States v Arthrex Inc
The US Court of Appeals for the Federal Circuit affirmed a district court’s claim construction of the term “end plate” that required a flat external surface, and its construction of the term “protrusion extending outwardly...more
The US Court of Appeals for the Federal Circuit affirmed a district court dismissal, finding that a patent license implicitly licensed all parents and continuations that disclosed the same invention as the explicitly licensed...more
The US Court of Appeals for the Federal Circuit reversed a district court’s summary judgment grant of non-infringement because it was improperly granted on a ground that was not asserted by the accused infringer. NeuroGrafix...more
The US Court of Appeals for the Federal Circuit reversed a district court decision that retained jurisdiction over a breach of contract action, finding that the action did not sufficiently implicate issues of patent law and...more
10/31/2019
/ Breach of Contract ,
Breach of Duty ,
Contract Disputes ,
Exclusive Licenses ,
IP License ,
Patent Infringement ,
Patent Litigation ,
Patent Royalties ,
Patents ,
Remand ,
State Law Claims ,
Subject Matter Jurisdiction ,
Unjust Enrichment ,
Vacated
The US Court of Appeals for the Federal Circuit affirmed a Patent Trial and Appeal Board (PTAB) non-obviousness determination because substantial evidence supported the PTAB’s finding that a person of skill in the art would...more
In the first-ever final written decision in a post-American Invents Act (AIA) derivation proceeding, the Patent Trial and Appeal Board (PTAB) found that the petitioner had not shown that an inventor named in the respondent’s...more
The US Court of Appeals for the Federal Circuit elected not to decide en banc whether servers or similar equipment in third-party facilities constitute a regular and established place of business under the patent venue...more
3/28/2019
/ Computer Servers ,
Google ,
Intellectual Property Protection ,
Motion to Dismiss ,
Patent Litigation ,
Patents ,
Principal Place of Business ,
TC Heartland LLC v Kraft Foods ,
Technology Sector ,
Venue ,
Web Servers
Affirming a series of district court rulings, the US Court of Appeals for the Federal Circuit found claims directed to software menus that display a limited subset of commonly used functions—useful in conserving space on...more
The US Court of Appeals for the Federal Circuit affirmed a Patent Trial and Appeal Board (PTAB) decision, finding that the PTAB did not need to explicitly construe a claim term. HTC Corp. v. Cellular Communications Equipment,...more
In remanding a case back to the district court, the US Court of Appeals for the Federal Circuit held that the Supreme Court of the United States’ 2017 decision in TC Heartland v. Kraft Foods qualifies as a change of law, and...more
The US Court of Appeals for the Federal Circuit affirmed a Patent Trial and Appeal Board (PTAB or Board) decision finding claims invalid as obvious, but did not directly address the PTAB’s determination that joinder was...more
The US Court of Appeals for the Federal Circuit defined “regular and established place of business” in a judicial district to require (1) a physical place in the district that is (2) regular and established, and that is (3)...more
The Supreme Court of the United States has tightened restrictions on where patent infringement actions may be filed. In an 8–0 decision, the Supreme Court held that for purposes of venue in patent infringement actions, a...more
In a highly anticipated decision, the Supreme Court of the United States issued a unanimous opinion in TC Heartland LLC v. Kraft Food Group Brands LLC, holding that for the purposes of venue in patent infringement actions, a...more