Bot M8 LLC, a patent assertion entity, was unsuccessful in its effort to have the Federal Circuit reverse the lower court’s invalidity finding related to one of six different patents asserted against Sony in Northern District...more
As the Federal Circuit made clear a few years ago in Nalco Co. v. Chem-Mod, LLC, a plaintiff “need not ‘prove its case at the pleading stage.’” The Federal Rules of Civil Procedure do not require a plaintiff to plead facts...more
Contrary to some predictions, assignor estoppel did not suffer the same fate in the hands of the Supreme Court as licensee estoppel in Lear v. Adkins. In fact, the doctrine, which essentially boils down to limiting an...more
Last spring in Hologic, Inc. v. Minerva Surgical, Inc., the Federal Circuit ruled that the doctrine of assignor estoppel does not prevent an assignor from lodging a validity challenge of either patent in an IPR proceeding. In...more
When the Court of Appeals for the Federal Circuit reversed the lower court’s award of attorney fees in Munchkin, Inc. v. Luv n’ Care, Ltd. last month, we were reminded that, while a district court has wide latitude to...more
Let’s face it, any litigation is expensive and a defendant that finds itself spending money battling claims against it only to have those claims later dismissed by the plaintiff is likely going to want to try to recoup the...more
Late last week, the U.S. Court of Appeals for the Federal Circuit delivered ShoppersChoice.com the affirmation it ordered in Electronic Communication Technologies, LLC (ECT) v. ShoppersChoice.com, LLC. In doing so, the court...more
The Federal Circuit has affirmed infringement under the doctrine of equivalents in a number of cases over the last few years. Briefly, the judicially created doctrine of equivalents is intended to expose those who adopt the...more
By reversing the lower court’s ruling that the asserted claims were not patent-eligible under 35 U.S.C. § 101 in Uniloc v. LG Electronics, the Federal Circuit resurrected Uniloc’s infringement suit against LG Electronics. It...more
Assignor estoppel is “an equitable doctrine that prevents one who has assigned the rights to a patent (or patent application) from later contending that what was assigned is a nullity.” Makes sense, right? After all, an...more
Last week, the Federal Circuit decided that claims related to a method of fishing that involved evaluating the water to be fished were not patent-eligible under 35 U.S.C. § 101. It is a bit of a head scratcher as to why this...more
In a precedential decision last week, the Federal Circuit held that CBS will not have to pay a $1.3 million infringement award because a podcasting patent was invalidated in an inter partes review (IPR) at the Patent Trial...more
1/20/2020
/ Audio Recording ,
CBS ,
Constitutional Challenges ,
Inter Partes Review (IPR) Proceeding ,
Jurisdiction ,
Jury Verdicts ,
Patent Infringement ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Seventh Amendment
Last week, a divided panel of the Federal Circuit extinguished Molon Motor and Coil Corporation’s hopes of going forward with a patent infringement suit against its electric motor industry competitor Nidec Motor Corporation....more
1/16/2020
/ Appeals ,
Contract Terms ,
Corporate Counsel ,
Covenant Not to Sue ,
De Novo Standard of Review ,
Exclusive Licenses ,
Integration Clauses ,
IP License ,
Merger Clause ,
Patent Litigation ,
Patents ,
Summary Judgment
On Wednesday, the Federal Circuit held that infringement under 35 U.S.C. § 271(g) does not require a single entity to perform, direct, or control all of the steps of a patented process for infringement liability to arise from...more
On Thursday of last week in Telefonaktiebolaget LM Ericsson v. TCL Corporation, the Federal Circuit affirmed two Patent Trial and Appeal Board (PTAB) decisions (IPR2015-01584 and IPR2015-01600) finding that a single claim in...more
11/14/2019
/ Appeals ,
Declaration ,
Evidence ,
Inter Partes Review (IPR) Proceeding ,
Obviousness ,
Patent Infringement ,
Patent Invalidity ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Prior Art ,
Public Information ,
Substantial Evidence ,
Supplemental Evidence
Last week, the Federal Circuit confirmed that Idenix Pharmaceuticals will not be the proud recipient of what was previously regarded as the largest damages award ever recorded in a U.S. patent case. In fact, the majority’s...more
In a precedential decision that was unsealed last week by the Federal Circuit, the Patent Trial and Appeals Board (PTAB) was told that it erred in not considering evidence of copying when rendering its decision on obviousness...more
11/7/2019
/ Breach of Contract ,
Inter Partes Review (IPR) Proceeding ,
L'Oreal ,
Misappropriation ,
Nonobvious ,
Patent Applications ,
Patent Infringement ,
Patent Trial and Appeal Board ,
Precedential Opinion ,
Prior Art ,
Trade Secrets ,
USPTO
Last week, the Federal Circuit revived a patent infringement suit brought by Fraunhofer-Gesellschaft zur Forderung der angewandten Forschung E.V. against Sirius XM Radio Inc. in the District of Delaware when it vacated the...more
10/24/2019
/ Commercial Bankruptcy ,
Extrinsic Evidence ,
Failure To State A Claim ,
Federal Rule 12(b)(6) ,
IP License ,
Motion to Dismiss ,
Patent Infringement ,
Patent Litigation ,
Patents ,
Remand ,
SiriusXM ,
Sublicenses ,
Termination Rights
The legal meaning of the transition language “consisting essentially of” is well-established in Federal Circuit case law and is generally construed to mean that the composition or formulation (a) necessarily includes the...more
10/21/2019
/ Claim Construction ,
Definiteness ,
Indefiniteness ,
Nautilus Inc. v. Biosig Instruments ,
Novelty ,
Patent Infringement ,
Patent Litigation ,
Patents ,
Prior Art ,
SCOTUS ,
Section 112
As discussed in a previous blog post, since Mayo v. Prometheus, critics of medical treatment patents have advocated that such patents should be banned from patenting. While such arguments seemed futile based on the consistent...more
9/3/2019
/ CAFC ,
Diagnostic Method ,
Intellectual Property Protection ,
Inventions ,
Myriad-Mayo ,
Patent Invalidity ,
Patent Litigation ,
Patent-Eligible Subject Matter ,
Patents ,
Personalized Medicine ,
Pharmaceutical Patents ,
Section 101 ,
Treatment Method Patents
Earlier this week, the United States Supreme Court reversed the Federal Circuit’s finding that the government is a “person” eligible to petition for post-issuance AIA review proceedings. This 6-3 decision, Return Mail, Inc....more
6/14/2019
/ Administrative Agencies ,
America Invents Act ,
Congressional Intent ,
Covered Business Method Proceedings ,
Ex Partes Reexamination ,
Government Entities ,
Intellectual Property Protection ,
Inter Partes Review (IPR) Proceeding ,
Patent Trial and Appeal Board ,
Patent Validity ,
Patents ,
Post-Grant Review ,
Return Mail Inc v United States Postal Service ,
Reversal ,
SCOTUS ,
Statutory Interpretation ,
USPS
The Federal Circuit’s decision last week in Lone Star Silicon Innovations LLC v. Nanya Technology Corporation, et al. (in addition to previous decisions from the court on this issue) emphasizes exactly how fact-specific the...more
The Federal Circuit recently reversed a lower court’s ruling of validity under the § 112 written description requirement effectively opening the door for a number of generic drug manufacturers to enter the market with a...more
5/24/2019
/ Abbreviated New Drug Application (ANDA) ,
Claim Construction ,
Patent Infringement ,
Patent Validity ,
Patents ,
Pharmaceutical Industry ,
Pharmaceutical Patents ,
Precedential Opinion ,
Prior Art ,
Section 103 ,
Section 112 ,
Written Descriptions
In a precedential decision delivered this week, the Federal Circuit shot down arguments from Appellants BTG International Limited; Janssen Biotech, Inc.; Janssen Oncology, Inc.; and Janssen Research & Development, LLC (BTG),...more
5/17/2019
/ Appeals ,
Collateral Estoppel ,
Generic Drugs ,
Inter Partes Review (IPR) Proceeding ,
Obviousness ,
Patent Infringement ,
Patent Invalidity ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Pharmaceutical Patents ,
Prior Art ,
USPTO
In a precedential decision delivered recently, the Federal Circuit shot down arguments from Neptune Generics, LLC, Mylan Laboratories Ltd., and Fresenius Kabi USA, LLC that the Patent Trial and Appeals Board (PTAB) erred in...more
5/6/2019
/ Clinical Trials ,
Food and Drug Administration (FDA) ,
Inter Partes Review (IPR) Proceeding ,
Nonobvious ,
Obviousness ,
Patent Trial and Appeal Board ,
Patent-Eligible Subject Matter ,
Pharmaceutical Patents ,
Precedential Opinion ,
Prior Art ,
Section 101