The US Court of Appeals for the Federal Circuit has now held that a “place of business” for purposes of the patent venue statute requires an employee or agent of the defendant to be conducting business at that place. In light...more
On January 21 and 22, 2020, the 8th annual McDermott International Seminars took place in Osaka and Tokyo. These seminars focused on cross-border M&A, GDPR, intellectual property, global enforcement and other key topics....more
2/13/2020
/ 5G Network ,
Artificial Intelligence ,
Blockchain ,
Driverless Cars ,
Emerging Technologies ,
Intellectual Property Protection ,
Internet of Things ,
Patents ,
Personalized Medicine ,
Professional Conferences ,
Trade Secrets
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
In a precedential decision, the Patent Trial and Appeal Board (PTAB) dismissed a petition for inter partes review (IPR), finding that the one-year time limit for filing an IPR petition under 35 USC § 315(b) is triggered even...more
10/10/2019
/ § 315(b) ,
Article III ,
Bad Faith ,
Copyright Infringement ,
Counterclaims ,
Declaratory Judgments ,
Equitable Tolling ,
Inter Partes Review (IPR) Proceeding ,
Patent Infringement ,
Patents ,
Precedential Opinion ,
Standing ,
Time-Barred Claims ,
Trademark Infringement ,
Unfair Competition ,
USPTO
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
The US Court of Appeals for the Federal Circuit denied a petition for a writ of mandamus requesting transfer of a patent infringement case, finding that the “first-to-file” rule did not warrant transfer because, even though...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
Following remand from the Supreme Court of the United States, the US Court of Appeals for the Federal Circuit addressed the impact of an intervening invalidation of four of six patent claims in issue by the Patent Trial and...more
3/1/2019
/ 35 U.S.C. § 271(f)(2) ,
35 U.S.C. § 284 ,
Appeals ,
Damages ,
Domestic Injury ,
Extraterritoriality Rules ,
Foreign Sales ,
Lost Profits ,
Patent Act ,
Patent Infringement ,
Patent Royalties ,
Patents ,
Remand ,
SCOTUS ,
Vacated ,
WesternGeco LLC v Ion Geophysical Corporation
The US Court of Appeals for the Federal Circuit concluded venue was improper under the patent venue statute as interpreted by the Supreme Court of the United States, finding that the accused infringer did not waive or forfeit...more
The Supreme Court of the United States granted, in part, Return Mail’s petition for certiorari to address whether the federal government has standing to challenge patents using post-grant proceedings under the America Invents...more
The US Court of Appeals for the Federal Circuit denied a patent holder’s petition for rehearing en banc but issued a modified opinion finding that to invoke the entire market value rule, the patent holder must show that the...more
The US Court of Appeals for the Federal Circuit vacated a jury’s damages award, finding that the entire market value rule could not be used to calculate damages since the patented feature did not drive demand for the product....more
The US Court of Appeals for the Federal Circuit affirmed a Patent Trial and Appeal Board (PTAB) finding that tribal immunity does not apply to inter partes review (IPR) proceedings. Saint Regis Mohawk Tribe v. Mylan...more
The US Supreme Court granted certiorari to consider the question of whether, under the America Invents Act, an inventor’s sale of an invention to a third party that is obligated to keep the invention confidential qualifies as...more
While reversing a Patent Trial and Appeal Board (PTAB) decision that confirmed the validity of a patent, the US Court of Appeals for the Federal Circuit ruled that a post-grant review (PGR) petitioner has Article III standing...more
In a series of decisions, the US Court of Appeals for the Federal Circuit continued its trend of strict adherence to § 1400(b) when analyzing proper venue for patent infringement actions under the Supreme Court of the United...more
The United States Supreme Court issued a decision in WesternGeco LLC v. ION Geophysical Corp. holding that a patent owner may recover lost foreign profits for infringement under § 271(f) of the Patent Act because it is a...more
6/27/2018
/ 35 U.S.C. § 271(f)(2) ,
35 U.S.C. § 284 ,
Appeals ,
Damages ,
Domestic Injury ,
Extraterritoriality Rules ,
Foreign Profits ,
Foreign Sales ,
Lost Profits ,
Patent Act ,
Patent Infringement ,
Patents ,
Remand ,
SCOTUS ,
Vacated ,
WesternGeco LLC v Ion Geophysical Corporation
In a matter of first impression, the Patent and Trial Appeal Board (PTAB) denied a Native American tribe’s motion to terminate a finding that tribal sovereign immunity does not apply to inter partes review (IPR) proceedings....more
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 Patent and Trademark Office (PTO) initiated a two-year Diversion Pilot Program to align its attorney discipline program with the practices of more than 30 states. The program is designed to give patent and trademark...more
Addressing the issue of prima facie obviousness, the US Court of Appeals for the Federal Circuit affirmed a district court’s ruling that evidence of secondary considerations failed to overcome a strong showing of obviousness....more