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SEP Licensing Wins Continue—Multinational Litigation Strategy Drives Licensing Win for Ericsson

Ericsson finally sees resolution of its standard essential patent (“SEP”) campaign against Lenovo and Motorola, filed globally in multiple jurisdictions, importantly at the U.S. International Trade Commission (“ITC”). In a...more

Another Implementer Hold Out Door Closes: The Death of the Anti-Suit Injunction?

Implementers of standard essential patents (SEPs) continue to hold out in patent licensing discussions with SEP owners, including pursuing the cynical strategy of seeking anti-suit injunctions (ASIs). This failed strategy is...more

No Pleading, No Problem: Court Denies Motion to Dismiss and Bifurcates Willful Infringement Determination, in Absence of...

Recently in Nike, Inc. v. Skechers U.S.A., Inc., 2:17-cv-08509 (C.D. Cal.) (October 26, 2020), the U.S. District Court for the Central District of California granted-in-part and denied-in-part Defendant, Skechers U.S.A.,...more

Federal Circuit: Licensees’ Failure to Mark Eliminates Entitlement to Pre-Suit Damages

Recently, in Packet Intelligence LLC v. NetScout Sys., Inc., No 19-2041 (July 14, 2020), the Court of Appeals for the Federal Circuit reversed a jury verdict of $3.5 million in pre-suit damages and vacated the trial court’s...more

Claim Construction of “Customary and Ordinary” Meaning Does Not Justify Amendment of Noninfringement and Invalidity Contentions

Recently, in a patent infringement action pending in the Eastern District of Michigan, Webasto Thermo & Comfort N. Am., Inc. v. BesTop, Inc., No. 2:16-cv-13456, Order No. 209 (E.D. Mich. May 20, 2019) (Borman, J.), the court...more

The Tall Tale of the Domestic Industry

There is a common misconception the domestic industry economic prong requirement is insurmountable and an unknowable factor in a patent infringement action at the International Trade Commission (“ITC” or “Commission”),...more

PTAB Finds that Allowing IPR Petitioner to Avoid a Statutory Bar by Retroactively Adding Missing Real Party in Interest Is “In the...

Recently, in ZTE (USA) Inc. v. Fundamental Innovation Int’l LLC, IPR2018-00425, Paper No. 34 (Feb. 6, 2019), the Patent Trial and Appeal Board (“PTAB”) allowed Petitioner’s motion to retroactively correct its defective IPR...more

PTAB Denies Institution of IPR after Successive Petitions by Unrelated Co-Defendants

Last week, the Patent Trial and Appeal Board (the “Board”) denied a second challenge to a patent where the petitioners were co-respondents in an ITC investigation. In Shenzhen Silver Star Intelligent Tech. Co., Ltd. v....more

Sued Customers Insufficient to Prove a Supplier’s Actual Case or Controversy Against Patentee

In an interesting order issued recently in BroadSign International, LLC v. T-Rex Property AB, Judge Swain of the Federal District Court for the Southern District of New York dismissed the Plaintiff’s declaratory judgment of...more

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