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Unified Patent Court to Officially Open in Europe

A Unified Patent Court (UPC) is expected to officially open its doors in Europe in late 2022 or early 2023. The UPC is a patent‑specific court established by 24 participating European Union (EU) member states, with the goal...more

District Court Granted Summary Judgment of Invalidity Because the Patent Recited a Patent-Ineligible Abstract Idea Executed in a...

Judge Orrick in the Northern District of California recently granted a motion for summary judgment of invalidity for patent-ineligible subject matter under 35 U.S.C. § 101. The court found that the claims recited the abstract...more

Sufficiently Pleading Claims of Indirect and Willful Infringement: Alleging that Defendant Generally Monitored Competitors’...

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

Federal Circuit Snubs Extrinsic Evidence in Reversing Ruling on 12(b)(6) Motion Arguing Invalidity Under § 101

In CardioNet, LLC, et al. v. InfoBionic, Inc., the Federal Circuit reversed a district court’s ruling that affirmed a defendant’s 12(b)(6) motion that the asserted claims are invalid under 35 U.S.C. § 101, based on step one...more

PTAB Institutes Later-Filed IPR and Consolidates with Earlier-Filed IPR Challenging Different Claims of Same Patent

The Patent Trial and Appeal Board (PTAB or Board) denied a patent owner’s request for discretionary denial of a second petition to the same patent as the first petition where patent owner itself asserted the claims of the...more

District Court Awards Post-Markman Attorneys’ Fees After Plaintiff Continued to Litigate Claims That Became Baseless in Light of...

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

Only an Expert Can Offer Opinions on Obviousness

In a precedential decision in HVLPO2, LLC v. Oxygen Frog, LLC, the Federal Circuit held that non-expert testimony on obviousness is inadmissible, further finding that the district court abused its discretion by allowing a lay...more

Federal Circuit Addresses Indefiniteness and Mean-Plus-Function Claiming in Inter Partes Review Proceedings at the PTAB

The Federal Circuit reversed and remanded a Patent Trial and Appeal Board (the “Board”) decision declining to analyze patent claims as anticipated or obvious in an inter partes review (IPR) where the Board found the...more

Common Interest Doctrine and Attorney-Client Privilege Protect Distributor’s Email Communication with Defendant

In a January 14, 2020, order, the Northern District of Illinois granted in part and denied in part, a plaintiff’s motion to compel the production of documents withheld as privileged. The court found that an email between the...more

PTAB Designates as Informative Three Decisions on Obviousness and Patent Eligibility

The Patent Trial and Appeal Board (PTAB) recently designated three more decisions as informative, bringing the total number of informative decisions to 13 for 2019. Two decisions—one final and one on institution—address...more

Challenge to a Named Inventor’s Credibility on Case-Dispositive Issue Warrants Live Testimony in IPR

The Patent Trial and Appeal Board allowed live testimony in MPOWERED INC. v. LuminAID Lab, LLC, IPR2018-01524, on November 1, 2019, where a panel granted Patent Owner’s Motion for Live Testimony from a named inventor of the...more

Federal Circuit Holds Ambiguity in License Terms Precludes Dismissal on the Pleadings

Although a valid license can provide a complete defense to patent infringement, the tangled web created when the defense is predicated on a sublicensee’s rights following bankruptcy of the sublicensor may preclude resolution...more

“Consisting Essentially Of:” Expanding the Scope of Indefiniteness

The Federal Circuit recently affirmed a district court’s determination, holding a group of patents invalid for indefiniteness. In December 2014, HZNP Medicines LLC (“Horizon”) brought suit against Actavis Laboratories UT,...more

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