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Previous Patent Infringement Contentions and Expert Testimony May Inform the Scope of Subsequent Allegations

The Federal Circuit recently affirmed a district court’s holding that a settlement agreement between a patentee and a defendant manufacturer released additional defendants from liability because their products used components...more

Federal Circuit Vacates Summary Judgment of Non-Enablement Where the Only Alleged Non-Enabled Systems Did Not Practice the Claims

In a recent decision, the Federal Circuit vacated the district court’s summary judgment of non-enablement because the systems identified by patent challengers as non-enabled under § 112 were not covered by the claims. Because...more

Enjoining a Patentee from Communicating Its Patent Rights Requires a Showing of Bad Faith

The United States Court of Appeals for the Federal Circuit (“Federal Circuit”) recently reversed a preliminary injunction enjoining a patentee from making allegations of patent infringement and threatening litigation against...more

Pre-Issuance, Industry-Standard Monitoring and Copying of a Product Does Not Support a Finding of Willful Infringement of Method...

Despite evidence that defendants monitored plaintiffs’ product development and attempted to match its dosing intervals, the District Court of Delaware found no willful infringement because that activity took place before the...more

Federal Circuit Decision Provides Opening for Preparation Methods in Diagnostic Space, But Not for Diagnostic Claims

The Federal Circuit held that two patents directed to methods of preparing samples for use in diagnostic methods are patent eligible under Section 101, reversing a decision from the District Court for the Northern District of...more

Withholding of Evidence Related to Offer for Sale, Filing False Declaration and Coercion by Patentee Support Finding of...

The Federal Circuit upheld a district court’s finding of inequitable conduct on the basis that appellants and its lawyers intentionally withheld material information involving the on-sale bar from the United States Patent &...more

Federal Circuit Upholds a Jury Instruction on Willfulness Despite Erroneous Portions That May Have Improperly Steered the Jury...

A recent decision from the Federal Circuit highlights the critical role that particular words can play in a jury instruction, as well as the extreme care that litigants should take in scrutinizing and objecting to a trial...more

Federal Circuit Reverses District Court Anticipation Decision Combining Two Prior Art References

The Federal Circuit reversed a decision from the District Court for the District of Delaware invalidating three patents on anticipation grounds, finding the district court improperly relied on disclosures from multiple...more

Bases, and Esters, and Salts, Oh My! Limits on PTE Benefits Provide a Drug Applicant with a Winning Non-Infringement Position

Chief Judge Stark granted a defendant’s Rule 12(c) motion for judgment on the pleadings based on non-infringement, holding that plaintiff’s patent term extension (PTE) did not extend to the accused product because the PTE was...more

Federal Circuit: Time-Bar Challenge to IPR Doomed by Patent Owner’s Conclusory and Newly Raised Arguments

The Federal Circuit rejected a patent owner’s time-bar challenge to an inter partes review (IPR) proceeding, holding that the patent owner failed to provide sufficient details to establish proper service of a complaint for...more

Federal Circuit Holds Ambiguity in License Terms Precludes Dismissal on the Pleadings

Although a valid license can provide a complete defense to patent infringement, the tangled web created when the defense is predicated on a sublicensee’s rights following bankruptcy of the sublicensor may preclude resolution...more

Federal Circuit: Statutory Disclaimer Results in No Case or Controversy

The Federal Circuit ruled that statutory disclaimer terminates the case or controversy between the parties in an infringement suit as to those claims, and immediately deprives the district court of the authority to take...more

Prosecution History Estoppel Bars Amgen’s Infringement Claim Under the Doctrine of Equivalents

The Federal Circuit affirmed a district court decision barring Amgen from asserting an infringement claim under the doctrine of equivalents against Coherus Biosciences because Amgen disclaimed all combinations not identified...more

PTAB Must Consider Privity and Real Party-in-Interest Relationships Arising After Filing but Before Institution for Time-Bar...

The Federal Circuit vacated a PTAB decision invalidating claims of U.S. Patent No. 6,212,079 (the “’079 Patent”) on the grounds that the inter partes review (IPR) petition was time-barred as a result of a merger between the...more

District Court Must Consider Joining Patent Owner Prior to Dismissal Where Licensee Lacks Substantial Rights to Bring Suit, but...

The Federal Circuit vacated and remanded a decision by the District Court for the Northern District of California when it failed to consider joining the patent owner before dismissing a case in which the licensee possessed...more

Attorneys’ Fees Award for Plaintiff’s Inadequate Pre-Suit Infringement Investigation Affirmed Even Though Trial Court Never...

The Federal Circuit recently upheld a district court’s decision to tax a patent infringement plaintiff with its opponent’s attorneys’ fees based on an inadequate presuit investigation into infringement, even though the patent...more

Federal Circuit Decision Clarifies When an ANDA Filer May Appeal an Adverse IPR Ruling

In Amerigen Pharmaceuticals Limited v. UCB Pharma GmbH, generic drug manufacturer Amerigen appealed a decision of the Patent Trial & Appeal Board finding UCB’s patent to certain chemical derivatives of diphenylpropylamines...more

A Claimed Parameter Range That Overlaps with Ranges in the Prior Art Creates a Burden-Shifting and Rebuttable Presumption of...

The Federal Circuit has reversed a decision by the Patent Trial and Appeal Board (PTAB) that certain claims of U.S. Patent No. 8,865,921 (the “’921 Patent”) were not shown to be obvious, finding that the PTAB applied the...more

Federal Circuit Dismisses IPR Petitioner’s Appeal of Final Written Decision for Lack of Standing

Earlier this month, the Federal Circuit dismissed for lack of standing an appeal filed by an inter partes review (IPR) petitioner of a final written decision issued by the Patent Trial and Appeal Board (PTAB) that held two...more

Corporate Defendant in Patent Infringement Suit Does Not Necessarily Reside in All of the Judicial Districts in a State with...

The Federal Circuit ruled that when a defendant is incorporated in a state that has multiple judicial districts, the defendant will reside in only one of the districts for venue purposes under the patent venue statute, 28...more

Ten-Year Silence After Initial Cease-and-Desist Letter Is Sufficiently Misleading as to Provide Basis for Equitable Estoppel

The District Court for the Central District of California recently found that plaintiff Akeso Health Sciences, LLC’s 10-year delay in filing its patent infringement claims justified granting defendant Designs for Health,...more

Summary Judgment Denied on Reverse Doctrine of Equivalents Defense

On April 28, 2017, the District Court for the District of Delaware denied AVM Technologies’ motion for summary judgment because Intel’s non infringement defense based on the reverse doctrine of equivalents requires the Court...more

Supreme Court Grants Cert in BPCIA Case

On January 13, 2017, the Supreme Court granted certiorari to two related petitions brought by Amgen, Inc. and Sandoz, Inc. to resolve disputes regarding the interpretation of the Biologics Price Competition and Innovation Act...more

Federal Circuit Applies Prosecution History Estoppel to Issued Claims Based on Amendments Made to Previously Canceled Claims

On September 8, 2016, the Federal Circuit affirmed a decision from the Eastern District of Virginia in which the district court held that UCB, Inc.’s Cimzia® antibody does not infringe Yeda’s U.S. Patent No. 6,090,923 (“the...more

Applying New Halo Standard, the Federal Circuit Reverses Course and Affirms Finding of Willful Infringement

Upon remand by the Supreme Court following its decision in Halo Electronics, Inc. v. Pulse Electronics, Inc., 136 S. Ct. 1923 (2016), a panel of the Federal Circuit reconsidered its previous decision to vacate a jury’s...more

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