News & Analysis as of

Noninfringement

Gibney Anthony & Flaherty, LLP

Jack Daniel’s Harmed, but Not Infringed, by Chewy Dog Toy: Key Trademark Takeaways from the Latest VIP Products and Jack Daniel’s...

JACK DANIEL'S HARMED, BUT NOT INFRINGED, BY CHEWY DOG TOY- The latest ruling in ‘Bad Spaniels’ finds the whiskey brand’s marks were diluted-but not infringed by a dog toy parody, explain Brian Brokate and Jacqueline...more

WilmerHale

Federal Circuit Patent Watch: FDA Filing Can Create Personal Jurisdiction; “Compelling” Arguments that Reverse Doctrine of...

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Precedential and Key Federal Circuit Opinions - STEUBEN FOODS, INC. v. SHIBUYA HOPPMANN CORPORATION [OPINION] (2023-1790, 1/24/2025) (Moore, Hughes, Cunningham) - Moore, Chief J. The Court reversed the district...more

Alston & Bird

Patent Case Summaries | Week Ending January 24, 2025

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Steuben Foods, Inc. v. Shibuya Hoppmann Corp., et al., No. 2023-1790 (Fed. Cir. (D. Del.) Jan. 24, 2024). Opinion by Moore, joined by Hughes and Cunningham. Steuben sued Shibuya for infringement of three patents relating to...more

WilmerHale

Federal Circuit Patent Watch: Deterrence Sanctions Affirmed for Bad Faith Filings of Meritless Lawsuits

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Precedential and Key Federal Circuit Opinions - 1. CYTIVA BIOPROCESS R&D AB v. JSR CORP. [OPINION] (2023-2074, 12/4/2024) (Prost, Taranto, Hughes) - Prost, J. The Court affirmed the PTAB’s IPR determination that...more

McDermott Will & Emery

Change Between Provisional and Nonprovisional Application Is Lexicography

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The US Court of Appeals for the Federal Circuit affirmed a district court judgment of noninfringement, finding that deleting a portion of a definition between a provisional application and a nonprovisional application was...more

McDermott Will & Emery

The Devil Is in the Details: Bioequivalence, In Vitro Testing Not Enough to Establish Infringement

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Addressing for the first time the issue of whether bioequivalence data and in vitro testing can show that an abbreviated new drug application (ANDA) product with different immediate and delayed release portions infringed on a...more

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases - December 2024 #2

DDR Holdings, LLC v. Priceline.com LLC, Appeal Nos. 2023-1176, -1177 (Fed. Cir. Dec. 9, 2024) In our Case of the Week, the Federal Circuit affirmed a stipulated non-infringement judgment from Delaware’s district court,...more

A&O Shearman

Federal Circuit Affirms Non-Infringement At Summary Judgment On “Document Stream” Patents In Mirror Worlds Technologies, LLC v....

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Mirror Worlds Technologies, LLC ("Mirror Worlds") owns U.S. Patent Nos. 6,006,227; 7,865,538; and 8,255,439, which claim methods for storing, organizing, and presenting data in time-ordered streams on a computer system. In...more

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases - December 2024

Mirror Worlds Technologies, LLC v. Meta Platforms, Inc., Appeal Nos. 2022-1600, -1709 (Fed. Cir. Dec. 4, 2024) In this appeal from the United States District Court for the Southern District of New York, the Federal...more

WilmerHale

Federal Circuit Patent Watch: Expert’s “Word Salad” Testimony Not Sufficient to Support a Finding of Infringement under the...

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Precedential and Key Federal Circuit Opinions - NEXSTEP, INC. v. COMCAST CABLE COMMUNICATIONS, LLC [OPINION] (2022-1815, 2022-2005, 2022-2113, 10/24/2024) (Reyna, Taranto, Chen) - Chen, J. The Court affirmed the...more

Sheppard Mullin Richter & Hampton LLP

Slicing Through Insufficient Evidence of Infringement, Willfulness, and Damages

The sufficiency of evidence required to support a denial of a motion for judgment as a matter of law and a motion for a new trial for infringement, willful infringement, and damages....more

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases - October 2024 #4

Telefonaktiebolaget LM Ericsson, Ericsson AB, Ericsson, Inc. v. Lenovo (United States), Inc. et. al., Appeal No. 2024-1515 (Fed. Cir. Oct. 24, 2024) In our Case of the Week, the Federal Circuit clarified that, for an...more

Goodwin

PTAB Institutes Eight More IPRs Filed by Merck on Johns Hopkins Pembrolizumab Patents

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​​​​​​​In the last few weeks, the PTAB has granted institution of eight IPRs filed by Merck on Johns Hopkins patents directed to methods of treatment using pembrolizumab. The eight patents are generally directed to methods...more

Patterson Belknap Webb & Tyler LLP

Half-Zipped: Judge Chen Grants Summary Judgment of Non-Obviousness and Partial Summary Judgment of Non-Infringement on Garment...

United States District Judge Pamela K. Chen (E.D.N.Y.) recently granted Plaintiff Shaf International, Inc. (“Shaf”)’s motion for summary judgment of validity of U.S. Patent No. 10,433,598 (the “’598 Patent”) and Defendant...more

Fenwick & West LLP

Key Federal Circuit Patent Rulings Impacting Your Business - Recent Rulings

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In Wisconsin Alumni Research Foundation v. Apple, the Federal Circuit expanded the preclusive effect of non-infringement rulings. It ruled that prior judgments of non-infringement can prevent follow-on lawsuits involving...more

Axinn, Veltrop & Harkrider LLP

Literal Infringement Is Identical to Infringement Under DOE … for Issue Preclusion

On August 28, 2024, the Federal Circuit issued a precedential decision regarding issue preclusion in Wisc. Alumni Research Found. v. Apple Inc., Nos. 2022-1884, 2022-1886. For issue preclusion to apply, “the issue actually...more

J.S. Held

Case Law Update: Timing of Technical Expert Analysis of Non-Infringing Alternatives in Smart Path Connections

J.S. Held on

Recent case law may impact the timing of defendant technical expert analysis and opinion regarding non-infringing alternatives in patent infringement litigation. On March 13, 2024, Magistrate Judge Roy S. Payne, in the United...more

Farella Braun + Martel LLP

Bay Bridge Series Second Inning: Oakland Doubles to Right With Countersuit in "San Francisco" Airport Trademark Dispute

After being sued for trademark infringement, Oakland has hit back at San Francisco with a countersuit for declaratory relief. The declaratory relief decision will similarly answer the question of whether Oakland's use of the...more

Akin Gump Strauss Hauer & Feld LLP

Noninfringement Defense Based on Prior Commercial Use Under 35 U.S.C. § 273 Must Be Timely and Expressly Pleaded

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

Snell & Wilmer

Supreme Court Asked to Clarify Activities that Give Rise to Specific Personal Jurisdiction

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In Impossible X LLC v. Impossible Foods Inc., Impossible Foods recently filed an opposition to Impossible X’s petition for certiorari, which asks the Supreme Court to decide (1) whether some disputes should require so-called...more

Akin Gump Strauss Hauer & Feld LLP

District Court: Accused Infringer Bears the Burden of Timely Raising a Non-Infringing Alternatives Theory

In a patent infringement case, the district court granted plaintiff’s motion to strike portions of defendant’s technical expert’s rebuttal report on the basis that defendant failed to timely disclose non-infringing...more

Akin Gump Strauss Hauer & Feld LLP

Section 271(e)(1) Safe Harbor Applies to Importation Regardless of Intent or Actual Use

A divided panel of the Federal Circuit affirmed a district court’s grant of summary judgment of noninfringement, holding that importation of two product samples into the U.S. was reasonably related to obtaining FDA approval...more

Axinn, Veltrop & Harkrider LLP

Going Global on Polymorphs

We were so pleased to have the opportunity to address InformaMarkets’ 13th Annual Pharma IPR Conference in Mumbai on legal challenges to polymorph patents. Patents covering one or more crystalline forms of a drug substance at...more

McDermott Will & Emery

I Hear Ya: Claim Terms Not as Narrow as Features in Specification

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The US Court of Appeals for the Federal Circuit vacated a district court’s final judgment of noninfringement, finding that the district court improperly narrowed the constructions of certain claim terms to particular features...more

Fitch, Even, Tabin & Flannery LLP

Government’s Royalty-Free Licensing Rights Affirmed Over USF Patent

On February 9, in University of South Florida Board of Trustees v. United States, the Federal Circuit upheld royalty-free license rights of the U.S. government over a University of South Florida (USF) patent directed to...more

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