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Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases - October 2024 #2

AlexSam, Inc. v. Aetna, Inc., Appeal No. 2022-2036 (Fed. Cir. Oct. 8, 2024) In the Court’s only precedential patent opinion last week, a panel of the Federal Circuit granted appellant AlexSam a second chance to hold...more

McDermott Will & Emery

Reasonable Royalty Available for Foreign Activities (But Not This Time)

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The US Court of Appeals for the Federal Circuit affirmed a district court’s decision to preclude a patent owner from seeking damages based on method claims infringed outside of the United States but confirmed that reasonable...more

Sunstein LLP

Trial Court Ruling Threatens Patent Portfolio Development

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A recent decision by a San Francisco federal district court judge imperils the way many significant patent portfolios are developed. In Sonos v. Google, Judge William Alsup held that two patents asserted by Sonos against...more

A&O Shearman

Half an hour for a bifurcation: UPC Central Division rejects preliminary objection after first oral hearing

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The decision concerns the time of filing and admissibility of a revocation action at the Central Division when a parallel infringement action is filed at a local division (Art. 33(4) UPCA). Art 33(4) UPCA states that...more

Proskauer - Law and the Workplace

Lessons Learned From 2022’s Trade Secret Verdicts

Before closing the book on 2022, we look back at the most significant verdicts issued in trade secret trials this past year. In 2022, several juries awarded extraordinary verdicts to plaintiffs. These verdicts suggest a...more

Smart & Biggar

Canadian Patent law 2022: A Year in Review

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2022 was an active year in Canadian patent law. Claim fees were introduced for the first time; changes were made to regulations providing remedies for excessive pricing of patented medicines; and a range of court decisions...more

Knobbe Martens

Reasonable Or Not, Make Sure You Don’t Believe You Infringe

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TECSEC, INC., v. ADOBE INC. Before Prost, Reyna, and Taranto. Appeal from the U.S. District Court for the Eastern District of Virginia. Summary: Even if it would be objectively reasonable to view a defendant’s conduct as...more

McDermott Will & Emery

One Claim Construction Error Is Enough to Trigger New Trial on Infringement

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The US Court of Appeals for the Federal Circuit re-affirmed that incorrect construction of even a single claim element can be grounds for a new trial on infringement. Network-1 Technologies, Inc. v. Hewlett-Packard Company,...more

McDonnell Boehnen Hulbert & Berghoff LLP

IBSA Institut Biochimique, S.A. v. Teva Pharmaceuticals USA, Inc. (Fed. Cir. 2020)

The Federal Circuit has spent the past few years applying the Supreme Court's most recent precedent, Nautilus, Inc. v. Biosig Instruments, Inc., on the indefiniteness standards in the patent statute.  35 U.S.C. § 112(b).  The...more

Knobbe Martens

Federal Circuit Review - June 2020

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Non-Infringement Need Not Be “Actually Litigated” To Shield Accused Products From Infringement Liability In Subsequent Actions - In In Re Personal Web Technologies LLC, Appeal No. 19-1918, the Federal Circuit ruled that the...more

Knobbe Martens

A Patentee Cannot Circumvent the Marking Requirement by Proving Separate Infringement of Method Claims

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PACKET INTELLIGENCE LLC v. NETSCOUT SYSTEMS, INC. Before Lourie, Reyna, and Hughes. Appeal from U.S. District Court for the Eastern District of Texas - Summary: The defendant’s infringement of method claims through...more

Mintz - Intellectual Property Viewpoints

The Federal Circuit Broadens Application of the Kessler Doctrine

Last week, the Federal Circuit invoked the Kessler doctrine in ruling that a district court’s dismissal of the plaintiff’s patent infringement suit against Amazon barred the plaintiff’s subsequent lawsuits against Amazon and...more

Jones Day

District Courts Find PTAB Statements Constitute Disclaimer

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In Linksmart Wireless Tech., LLC v. Caesars Entm’t Corp., Case No. 2:18-cv-00862-MMD-NJK (D. Nev. May 8, 2020) the Court addressed disputed claim terms in U.S. Reissued Patent No. RE46,459 (the “’459 Patent”), Linksmart had...more

Smart & Biggar

Federal Court dismisses ViiV’s action for patent infringement re: Gilead’s BIKTARVY following summary trial on claim construction

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Update: see our article here regarding the dismissal of ViiV’s appeal. On April 6, 2020, the Federal Court granted Gilead’s motion for summary trial and dismissed ViiV’s action: ViiV Healthcare Company v Gilead Sciences...more

Smart & Biggar

First decision under amended PMNOC Regulations: Federal Court finds Amgen’s filgrastim patent obvious

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UPDATE: On November 3, 2020, the Federal Court of Appeal dismissed Amgen’s appeal. See our article here. On April 16, 2020, Justice Southcott of the Federal Court issued the first decision under the amended Patented...more

Fenwick & West LLP

Express License for “Uncle” Patent Leads to Implied License for Asserted Patent

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In Cheetah Omni v. AT&T Services, the U.S. Court of Appeals for the Federal Circuit recently issued a decision that stresses the importance of meticulously drafting license agreements. In February, the court denied an...more

Smart & Biggar

Federal Court of Appeal dismisses Pfizer’s appeal of interlocutory decision in pregabalin section 8 case: infringement not a...

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UPDATE: On December 10, 2020, the Supreme Court of Canada dismissed Pfizer’s application for leave to appeal (Docket No. 39150)... As previously reported, Justice O’Reilly of the Federal Court granted Pharmascience’s...more

Knobbe Martens

The ITC Can Exclude Products That Do Not Infringe At The Time of Importation | Firm Alert

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On March 2, 2020, the Federal Circuit issued Comcast v. ITC and held that the International Trade Commission (ITC) can block the importation of products that do not infringe a U.S. patent at the time of importation. The case...more

Fenwick & West LLP

Federal Circuit Rules Presence of Google Servers in District Insufficient to Establish Venue

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On February 13, 2020, the U.S. Court of Appeals for the Federal Circuit reversed the Eastern District of Texas’ ruling that venue was proper in In re Google, 2019-126, halting for now the line of precedent finding that...more

Smart & Biggar

Federal Court maintains $100M+ award in cefaclor infringement damages reconsideration decision

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On November 20, 2019, the Federal Court (FC) issued its reconsideration decision on the quantum of damages owed by Apotex for its infringement of eight Eli Lilly process patents related to the antibiotic cefaclor:  Eli Lilly...more

Knobbe Martens

Wells Fargo Twice Found Guilty of Willfully Infringing Patents on Remote Check Depositing Technology

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USAA filed multiple patent infringement lawsuits against Wells Fargo, alleging widespread infringement of USAA’s patented technologies on remote check deposits for mobile banking systems. Last November, a jury in a first case...more

WilmerHale

Unprecedented State Law on Pharmaceutical “Reverse Payments” Goes Into Effect

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A new California law, Preserving Access to Affordable Drugs, AB-824 (the Act), which is aimed at curbing reverse-payment patent settlements, took effect on January 1. The Act codifies a presumption that any transfer of value...more

Smart & Biggar

Federal Court of Appeal confirms obviousness finding in section 8 bortezomib action against Teva

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As previously reported, the Federal Court granted Teva’s claim for compensation under section 8 of the Patented Medicines (Notice of Compliance) Regulations relating to Teva’s bortezomib product (Janssen markets bortezomib as...more

McCarter & English, LLP

License To Sell Kills Patent: Supreme Court Holds Confidential Sales May Invalidate Patents In Helsinn Healthcare S.A. V. Teva...

Can a confidential agreement between a pharmaceutical company and a distributor constitute a patent-invalidating offer for sale of a pharmaceutical product, even if information about the product is never revealed to the...more

Fenwick & West LLP

Intellectual Property Bulletin - Summer 2018

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In This Issue - US Taxation of IP After Tax Reform - U.S. taxation of intellectual property has become astoundingly more complex after the Tax Cuts and Jobs Act. The new rules are so complex that the IRS and Treasury...more

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