News & Analysis as of

Patent Litigation Patent Infringement Counterclaims

A&O Shearman

UPC Ruling on amendment of counterclaims in patent revocation

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Sunstar Engineering Europe GmbH v. Ceracon GmbH, Mannheim Local Division, June 6, 2025 (UPC_CFI_745/2024) The UPC has recently clarified its strict approach to amending counterclaims for revocation in patent litigation....more

Knobbe Martens

Claim Construction When Uniformly Referring to Aspects of an Invention

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Chewy, Inc. v. International Business Machines Corporation - Before Moore, Chief Judge, Stoll and Cunningham. Appeal from the United States District Court for the Southern District of New York....more

Haug Partners LLP

A U.S. View on the UPC – Part 8: Challenging the Validity of a Patent

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On June 1, 2023, the new European Unified Patent Court (UPC) opened its doors, and enforcement of European patents in (currently) 17 contract member states is now possible with one action. This series of articles – directed...more

McDermott Will & Schulte

Noncompulsory Counterclaims Don’t Confer Appellate Jurisdiction

The US Court of Appeals for the Federal Circuit determined that it does not have appellate jurisdiction to review noncompulsory patent counterclaims in a case otherwise unrelated to the originally asserted patents. Teradata...more

Haug Partners LLP

A U.S. View on the UPC – Part 1: The Basic Case Structure of an Infringement Action

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On June 1, 2023, the new European Unified Patent Court (UPC) will open its doors, and enforcement of European patents in (currently) 17 contract member states will be possible with one action. This series of articles –...more

Smart & Biggar

Federal Court permits counterclaim as of right against non-asserted patent claims in s. 6(1) PMNOC actions

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On February 17, 2023, the Federal Court ruled that Sandoz and Sun Pharma may counterclaim as of right against non-asserted patent claims in separate actions pursuant to the Patented Medicines (Notice of Compliance)...more

Knobbe Martens

“Filtering” Appropriate Claim Construction Reasoning

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SSI TECHS., LLC v. DONGGUAN ZHENGYANG ELECTRONIC MECHANICAL LTD. Before Reyna, Bryson, and Cunningham.  Appeal from the United States District Court for the Western District of Wisconsin. Summary: The district court...more

Weintraub Tobin

District Court Finds Plaintiff Failed to Meet Pre-Filing Meet and Confer Requirements

Weintraub Tobin on

In SSMiller IP LLC v. Sugar Beets LLC, 2-22-cv-02576 (CDCA Oct. 21, 2022) District Judge George H. Wu of the Central District of California found the parties did not sufficiently meet and confer as required by the Local Rules...more

Robins Kaplan LLP

Bausch Health Ireland Ltd. v. Padagis Israel Pharms. Ltd.

Robins Kaplan LLP on

Case Name: Bausch Health Ireland Ltd. v. Padagis Israel Pharms. Ltd., Civ. No. 2:20-cv-05426-SRC-CLW (consol.), 2021 WL 4593271 (D.N.J. Oct. 6, 2021) (Waldor, J.) - Drug Product and Patent(s)-in-Suit: Bryhali® (halobetasol...more

Goodwin

Litigation Update: AbbVie v. Alvotech hf (Adalimumab)

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We have previously reported on AbbVie’s first and second wave suits against Alvotech hf (Alvotech) in the Northern District of Illinois regarding an adalimumab biosimilar. In the first wave suit, on October 5, 2021 AbbVie...more

Robins Kaplan LLP

Takeda Pharma Co. v. Zydus Pharma Inc.

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Case Name: Takeda Pharma Co. v. Zydus Pharma Inc., No. 18-1994, 2021 WL 3144897 (D.N.J. July 26, 2021) (Wolfson, J.) - Drug Product and Patent(s)-in-Suit: Prevacid® SoluTab™ (lansoprazole delayed-release orally-disintegrating...more

Knobbe Martens

Court Grants Relief From Judgment After Witness Lies About the Bed of Its Own Making

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CAP EXPORT, LLC v. ZINUS, INC. Before Dyk, Bryson, and Hughes. Appeal from the United States District Court for the Central District of California. Summary: A judgment and injunction were properly set aside pursuant to...more

Vinson & Elkins LLP

Western District Of Texas Sanctions Patent Infringement Defendant For Discovery Abuse And Misconduct

Vinson & Elkins LLP on

On April 6, 2021, the Western District of Texas ordered that preliminary injunction relief was appropriate to prevent irreparable harm to the plaintiff due to the defendant’s “discovery abuse and related misconduct.”...more

Patterson Belknap Webb & Tyler LLP

Judge Tiscione Rules Patent Misuse Is Purged When Infringement Tainted Lawsuit Is Dismissed

On February 16, 2021, U.S. Magistrate Judge Steven L. Tiscione (E.D.N.Y.) recommended granting plaintiff Nationwide Sales and Services Inc.’s (“Nationwide”) motion for judgment on the pleadings as to patent misuse...more

Jones Day

Invalidity Counter Against Unasserted Claim Does Not Implicate §315(a)

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It is well-established that a counterclaim for invalidity in a district court litigation does not trigger the 35 U.S.C. § 315(a) bar. See 35 U.S.C. § 315(a)(3). See also our previous posts discussing strategies for...more

Akin Gump Strauss Hauer & Feld LLP

Can ‘Loophole’ in IPR Statute Lead to Resurgence of DJ Actions?

Declaratory judgment (“DJ”) actions have fallen out of favor in patent cases in recent years. In 2011, DJ complaints made up approximately 11 percent of all patent cases filed that year. Last year, they made up less than 5...more

McDonnell Boehnen Hulbert & Berghoff LLP

Amneal Pharmaceuticals LLC v. Almirall, LLC  (Fed. Cir. 2020)

In Amneal Pharmacueticals LLC v. Almirall, LLC, the Federal Circuit professed to address a question it had not considered before: whether attorney's fees and a exceptional case determination was available for fees and costs...more

Akin Gump Strauss Hauer & Feld LLP

Due to “Apparent Loophole” in Statutory Framework, District Court Permits Invalidity Challenge that Does Not Foreclose Later IPR

When bringing a lawsuit for a declaratory judgment of non-infringement of a patent, careful pleading may allow plaintiffs to avoid the restrictions against later seeking inter partes review (IPR) of that patent, while also...more

Goodwin

Coherus and Amgen Stipulate to Dismissal of Adalimumab Infringement Case

Goodwin on

As we previously reported, earlier this year Coherus filed a complaint against Amgen in the District of Delaware alleging infringement of patents claiming “stable aqueous pharmaceutical compositions” comprising adalimumab and...more

Robins Kaplan LLP

Duke Univ. v. Akorn, Inc.

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THE COURT GRANTED PLAINTIFFS’ MOTION TO DISMISS DEFENDANT’S ANTITRUST AND PATENT MISUSE COUNTERCLAIMS AND RELATED AFFIRMATIVE DEFENSES. Case Name: Duke Univ. v. Akorn, Inc., Civ. No. 3:18-cv-14035-BRM-TJB, 2019 U.S. Dist....more

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases - December 2019

PATENT CASE OF THE WEEK - TCL Communication Technology Holdings Ltd. v. Telefonaktiebolaget LM Ericsson, Appeal Nos. 2018-1363, et al. (Fed. Cir. Dec. 5, 2019) - In these appeals from the United States District Court...more

Robins Kaplan LLP

ANDA Litigation Settlements - Fall 2019

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Please see full Chart below for more information....more

Holland & Knight LLP

Fed. Cir. Examines Expert Declarations and Unasserted Claims in Recent § 101 Decision

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Earlier this month, the Federal Circuit ruled on an interesting case that discussed (1) when a case or controversy exists as to unasserted patent claims, and (2) the extent expert declarations affect a patent eligibility...more

Fish & Richardson

EDTX & NDTX Monthly Wrap-Up – October 2019

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This post summarizes some of the significant developments in the Northern District of Texas and the Eastern District of Texas for the month of October 2019....more

Jones Day

Preemptive Declaratory Judgment Invalidity Counterclaims Trigger Statutory Bar

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Last year, this blog discussed various strategic considerations for litigants seeking declarations of invalidity in district court actions to avoid being precluded from also seeking inter partes or other post-grant review...more

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