On Monday, the Supreme Court denied TCL Communication’s certiorari petition, without comment, appealing the Federal Circuit’s ruling that the essentiality of a patent claim is a question for the jury rather than judges to...more
The Federal Circuit yesterday, in a decision likely to be celebrated by holders of standard essential patents (“SEPs”), found that it is appropriate for the jury to decide essentiality of a patent, rather than the judge...more
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
Recent oral arguments at the Fed Circuit suggest that the U.S. may be taking steps which would enhance its attractiveness for SEP patent holders looking to resolve licensing disputes. The Federal Circuit heard oral argument...more
On Wednesday, the Federal Circuit held that while assignor estoppel is applicable in district court proceedings, petitions for inter partes review continue to not be subject to the equitable remedy. Assignor estoppel is an...more
On Thursday, the Federal Circuit ruled that the Patent Trial and Appeal Board (“PTAB”) must give the parties proper notice if considering a sua sponte theory of unpatentability in relation to a motion to amend. In doing so,...more
On Tuesday, March 24, 2020, the Patent Trial and Appeal Board (“PTAB”) designated two inter partes review (“IPR”) decisions as precedential and one as informative. These decisions concern PTAB’s discretion to deny institution...more
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
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