The Patent Trial and Appeal Board instituted an inter partes review over patent owner’s objections that the petition did not timely identify all real parties-in-interest (RPI) and was filed by a phantom legal entity after...more
7/29/2024
/ California ,
Delaware ,
Inter Partes Review (IPR) Proceeding ,
Jurisdiction ,
Limited Liability Company (LLC) ,
Patent Infringement ,
Patent Litigation ,
Patent Ownership ,
Patent Trial and Appeal Board ,
Patents ,
Reorganizations
The district court in a patent infringement case granted plaintiff’s ex parte request to strike defendant’s prior use defense under 35 U.S.C. § 273. Because defendant failed to plead the defense and did not raise it until...more
In a Hatch-Waxman case, the District Court for the District of New Jersey recently found that a generic label that included an allegedly infringing permissive use did not induce infringement where the label cautioned against...more
The Central District of California denied a defendant’s motion for leave to amend to allege inequitable conduct due to the defendant’s delay in deposing a key inventor until the end of fact discovery. The district court held...more
The District Court for the District of Delaware recently held on summary judgment that a patent with 2,295 days of combined patent term adjustment (PTA) and patent term extension (PTE) was not invalid for obviousness-type...more
12/20/2023
/ Generic Drugs ,
Hatch-Waxman ,
Intellectual Property Protection ,
Obviousness ,
Obviousness-Type Double Patenting (ODP) ,
Patent Infringement ,
Patent Litigation ,
Patent Term Adjustment ,
Patents ,
Pharmaceutical Patents ,
Safe Harbors
The District Court for the District of Delaware recently held a patentee waived its right to seek JMOL on infringement following a jury verdict of non-infringement because the patentee’s Rule 50(a) motion focused solely on...more
In the wake of her October 4, 2022 Precedential OpenSky decision, the United States Patent and Trademark Office Director Katherine Vidal issued another precedential decision further clarifying the actions that should be...more
The U.S. District Court for the District of Colorado granted a motion in limine to preclude testimony from corporate executives about their “business understanding” regarding infringement because the defendant previously...more
A judge in the Eastern District of Virginia recently held that cancellation of independent claims in an inter partes review (IPR) did not preclude the plaintiff from asserting infringement based on the doctrine of equivalents...more
The Federal Circuit recently vacated a district court’s construction of the terms “antibody” and “antibody fragment.” The court’s constructions were not consistent with the claim language, and nothing in the specification or...more
The U.S. District Court for the District of Delaware recently rejected a plaintiff’s attempt to add to its complaint claims of induced infringement and enhanced damages based on pre-suit conduct. Specifically, the court held...more
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
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
- The Supreme Court ruled 7-2 in Thryv, Inc. v. Click-to-Call Technologies, LP, that the PTAB’s application of the one-year time limit for petitions for inter partes review, set out in 35 U.S.C. § 315(b), is not subject to...more
4/23/2020
/ § 314(d) ,
§ 315(b) ,
§314(a) ,
§314(b) ,
America Invents Act ,
Appeals ,
Dissenting Opinions ,
Inter Partes Review (IPR) Proceeding ,
Judicial Review ,
Non-Appealable Decisions ,
Patent Infringement ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
SCOTUS ,
Thryv Inc v Click-To-Call Technologies LP ,
Time-Barred Claims ,
Vacated
A federal judge in the Eastern District of Virginia granted defendant Amazon.com, Inc.’s motion for attorneys’ fees under 35 U.S.C. § 285, ordering plaintiff Innovation Sciences, LLC to pay over $700,000 in fees that accrued...more
A federal judge in the Northern District of California recently rejected an argument that would have expanded inter partes review (IPR) estoppel seemingly beyond the plain reading of 35 U.S.C. § 315(e)(2). The plaintiff had...more
On January 28, 2020, the Northern District of Alabama granted-in-part a defendant’s motion for summary judgment, holding that the plaintiff could not recover damages based on a theory of lost profits because the plaintiff...more
In Sound View Innovations, LLC v. Hulu, LLC, a district court denied Hulu’s motion to quash a subpoena directed to its trial-supervising in-house attorney. The court agreed that Sound View may question Hulu’s attorney live,...more
12/27/2019
/ Compelled Testimony ,
Corporate Counsel ,
Depositions ,
Hulu ,
Motions to Quash ,
Non-Infringing Alternatives (NIAs) ,
Outside Counsel ,
Patent Infringement ,
Patent Litigation ,
Patents ,
Subpoenas ,
Trial Preparation ,
Unduly Prejudicial ,
Unfair Prejudice ,
Willful Infringement ,
Witnesses
For nearly two decades, the Eastern District of Texas has been a hotbed of patent litigation. Even after the Supreme Court’s 2017 TC Heartland decision narrowed a plaintiff’s venue options, the Eastern District of Texas still...more
A district court in the Western District of Washington denied Adaptics Ltd.’s (“Adaptics”) motion for summary judgment of patent exhaustion, which was based on a theory that an authorized sale by a downstream reseller can...more
4/15/2019
/ Downstream Agreements ,
Manufacturers ,
Motion for Summary Judgment ,
Patent Exhaustion ,
Patent Infringement ,
Patent Litigation ,
Patents ,
Resales Agreements ,
Retailers ,
Settlement Agreements ,
Stream of Commerce
FEDERAL CIRCUIT CASES -
“Bust!” — Federal Circuit Deals Tough News to Inventors of Card Game -
The Federal Circuit affirmed the Patent Trial and Appeal Board’s (PTAB) determination of unpatentability for claims...more
SUPREME COURT CASES -
The Supreme Court Upholds Prohibition on Charging Royalties After Patent Expiration -
In Kimble v. Marvel Entertainment LLC, 576 U.S. ---- (2015), the Supreme Court declined to overrule its 1964...more
8/31/2015
/ Akamai Technologies ,
Brulotte ,
Certiorari ,
Claim Construction ,
Contract Termination ,
Contract Terms ,
Direct Infringement ,
En Banc Review ,
Inter Partes Review (IPR) Proceeding ,
IP License ,
Kimble v Marvel Enterprises ,
Limelight Networks ,
Limelight v Akamai ,
Mayo v. Prometheus ,
Obviousness ,
Patent Infringement ,
Patent Trial and Appeal Board ,
Patent-Eligible Subject Matter ,
Patents ,
Pharmaceutical Industry ,
Pharmaceutical Patents ,
Prior Art ,
Remand ,
Royalties ,
SCOTUS ,
Section 101
FEDERAL CIRCUIT CASES -
Subjective Term Not Indefinite when Intrinsic Record Provides Reasonably Certain Scope -
On remand from the Supreme Court, on April 27, 2015, the Federal Circuit reassessed whether...more
DISTRICT COURT CASES -
District Court Awards Attorney Fees Under its Inherent Powers Rather than 35 U.S.C. § 285 -
On October 10, 2013, plaintiff MyMedicalRecords, Inc. (MMR) sued defendants claiming...more
Federal Circuit: Licensor Has No Standing to Sue Where it Has Transferred “All Substantial Rights” to Its Licensee -
The Federal Circuit affirmed a decision by Judge Schneider in the Eastern District of Texas to...more