Co-authored by Sam Cohen, Summer Associate 2024. On May 29, 2024, the Western District of Oklahoma in SIPCO, LLC v. JASCO Prods. Co. dismissed the plaintiff SIPCO’s patent infringement claims against defendant JASCO because...more
To date, the Unified Patent Court (UPC) has not held a trial involving standard-essential patents (SEPs). However, the new forum’s Mannheim Local Division has now authored its first SEP-specific order in a case between...more
On April 17, 2024, a second Texas jury assessed damages of $142 million against Samsung, more than doubling a previous jury award of $67.5 in a protracted standard essential patent (SEP) litigation brought by G+...more
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
A frequent pain point in the realm of patents is being unable to find pertinent patent publications quickly and efficiently. In an attempt to provide the public with better search tools, the United States Patent and Trademark...more
Innovators have long insisted that licensing discussions over standard essential patents (SEP) are one sided: implementers often “hold out” in bad faith by delaying discussions for as long as possible. The theory driving this...more
Even with breakthrough medication that transformed the human immunodeficiency virus (HIV) from a near-certain fatal disease to a manageable but chronic illness, many with HIV still endure debilitating effects. For about...more
Grants of permanent injunctions in U.S. district court patent litigation remain uncommon since the landmark decision in eBay v. MercExchange. LexMachina’s 2021 Patent Litigation Report highlights that courts grant fewer than...more
The United States Supreme Court denied certiorari in the closely observed case American Axle & Manufacturing, Inc., v. Neapco Holdings LLC. The Court’s refusal to hear the case disappointed patent practitioners nationwide—and...more
In two recent decisions, both issued on February 4, 2022, the United States Court of Appeals for the Federal Circuit (the “CAFC”) erased two huge patent damages awards because the underlying expert opinion on damages was...more
In an interesting recent case of first impression, Judge Albright in the Western District of Texas denied a motion for judgement on the pleadings filed by Defendants Google and YouTube because the asserted patent was...more
On Monday, in a highly-anticipated decision, a fractured Supreme Court issued its opinion in United States v. Arthrex, et al., striking a portion of the America Invents Act (AIA) as unconstitutional—but providing an...more
6/25/2021
/ Administrative Patent Judges ,
America Invents Act ,
Appointments Clause ,
Constitutional Challenges ,
Director of the USPTO ,
Inferior Officers ,
Inter Partes Review (IPR) Proceeding ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Principle Officers ,
SCOTUS ,
United States v Arthrex Inc
Entities with patent-related relationships with state universities scored a victory under the rarely implicated (at least for patent practitioners) doctrine of sovereign immunity. For patent holders, sovereign immunity comes...more
7/29/2020
/ Eleventh Amendment ,
En Banc Review ,
Federal Rule 12(b)(1) ,
FRCP 19(a) ,
IP License ,
Joinder ,
License Agreements ,
Patent Infringement ,
Patent Litigation ,
Patents ,
Sovereign Immunity ,
State Universities
A recent Memorandum Order from the District of Delaware edified the protections courts tend to give discovery concerning litigation funding. Because Defendant AT&T failed to carry its burden of demonstrating the specific...more
On December 18, 2019, the United States Court of Appeals for the Federal Circuit, in Fox Factory v. SRAM, Nos. 2018-2024 and 2018-2025, reversed the Board’s Final Written Decision in a pair of inter partes reviews (“IPRs”)...more
When licensing discussions with an intransigent implementer break down, SEP owners face a difficult question: what remedies are available (injunctive relief or damages) in each U.S. court (International Trade Commission and...more
12/24/2019
/ Administrative Law Judge (ALJ) ,
Department of Justice (DOJ) ,
Federal Trade Commission (FTC) ,
FRAND ,
Injunctive Relief ,
International Trade Commission (ITC) ,
Joint Policy Statements ,
NIST ,
Patent Infringement ,
Patents ,
Section 337 ,
Standard Essential Patents ,
USPTO ,
USTR
On December 5, 2019, Judge David C. Godbey of the Northern District of Texas denied the defendant Diebold Nixdorf, Inc.’s (“Diebold”) motion to dismiss under Rule 12(b)(6), in Nautilus Hyosung Inc. v. Diebold, Inc. et al.,...more
12/19/2019
/ Administrative Law Judge (ALJ) ,
Amended Complaints ,
Appeals ,
Cease and Desist Orders ,
Claim Construction ,
Exclusion Orders ,
Federal Rule 12(b)(6) ,
International Trade Commission (ITC) ,
Means-Plus-Function ,
Motion to Dismiss ,
Patent Infringement ,
Patent Invalidity ,
Patent Litigation ,
Patents ,
Section 337
Nearly six years ago, the Supreme Court in Octane Fitness v. ICON Health & Fitness promulgated a “totality of the circumstances test” for awarding reasonable attorney fees to the prevailing party in exceptional cases under 35...more
In a recent decision clarifying the legal standards of the International Trade Commission’s domestic industry requirement, the Commission has upheld, with modified reasoning, Chief Administrative Law Judge Bullock’s initial...more
11/11/2019
/ Administrative Law Judge (ALJ) ,
Domestic Industry Requirement ,
Initial Determination (ID) ,
Intellectual Property Protection ,
International Trade Commission (ITC) ,
Multinationals ,
Patent Infringement ,
Patent Litigation ,
Patents ,
Section 337 ,
Threshold Requirements
Recently, Chief Administrative Law Judge (“CALJ”) Bullock of the U.S. International Trade Commission (“ITC”), in Certain Carburetors and Products Containing Such Carburetors, Inv. No. 337-TA-1123, Order No. 77, suggested that...more
A recent order from International Trade Commission Administrative Law Judge Elliott provides helpful guidance regarding a common ITC discovery dispute: whether a party may withhold from discovery as work product pre-suit test...more
9/10/2019
/ Administrative Law Judge (ALJ) ,
Discovery ,
Discovery Disputes ,
Document Productions ,
Evidence ,
International Trade Commission (ITC) ,
Motion to Compel ,
Patent Litigation ,
Privilege Waivers ,
Section 337 ,
Work-Product Doctrine
A recent decision from the Northern District of New York provides a detailed outline for analyzing venue in patent infringement cases, and may provide facts that companies with equipment installed in other districts should...more
In a decision from the Patent Trial and Appeal Board (“the Board”) issued last week, the Board confirmed that the “enhanced estoppel” provision of 35 U.S.C. § 315(e)(1) applies to co-pending inter partes review (“IPR”)...more
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
On April 25, 2019, in Int’l Designs Corp., LLC, et. al. v. Hair Art Int’l, Inc., Judge George H. Wu in the Central District of California denied Hair Art’s motion for attorneys’ fees under 35 U.S.C. § 285. Judge Wu concluded...more
5/9/2019
/ Attorney's Fees ,
Claim Construction ,
Exceptional Case ,
Frivolous Lawsuits ,
Octane Fitness v. ICON ,
Patent Infringement ,
Patent Litigation ,
Patents ,
Section 285 ,
Summary Judgment ,
Totality of Circumstances Test