News & Analysis as of

Patent Litigation Intellectual Property Protection Declaratory Judgments

Sheppard Mullin Richter & Hampton LLP

Federal Circuit Finds Personal Jurisdiction in an Amazon Product Dispute

In SnapRays, d/b/a SnapPower v. Lighting Defense Group, the Federal Circuit found that a district court could exercise personal jurisdiction over a declaratory judgment defendant based on the defendant’s sending an Amazon...more

McDermott Will & Emery

Prime Delivery: Amazon Program Now Offers Personal Jurisdiction to Patent Holders

McDermott Will & Emery on

Addressing the issue of personal jurisdiction in the context of a declaratory judgment case involving a program for resolving patent infringement claims, the US Court of Appeals for the Federal Circuit concluded that a patent...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

Amazon’s Patent Evaluation Express (APEX) Program Has Declaratory Judgment Action Risks for Patent Owners

Amazon’s Patent Evaluation Express (APEX) program provides an expedited and low-cost tool for patent owners to stop the sale of infringing products on Amazon’s platform. But low cost does not mean low risk. The U.S. Court of...more

Jones Day

“Eleventh Hour” Sotera Stipulation Sufficient to Avoid Denial

Jones Day on

The PTAB recently declined to exercise its discretion to deny IPR, instituting review in BMW of North America, LLC v. NorthStar Systems LLC, IPR2023-01017, Paper 12 (Dec. 8, 2023). There, the PTAB held that (1) a Sotera...more

Fish & Richardson

Minnesota Patent Litigation Wrap-Up: Q2 2023

Fish & Richardson on

This post continues our summary of substantive orders in patent litigation in the District of Minnesota. It includes a judgment on the pleadings in Hatch-Waxman cases and a declaratory judgment of invalidity....more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

MarkIt to Market® - January 2023

Thank you for reading the January 2023 issue of Sterne Kessler's MarkIt to Market® newsletter. This month, we discuss an ongoing trademark dispute between the band OK Go and cereal company Post, how to stay vigilant about...more

AEON Law

Patent Poetry: Patent License Communications Can Be Basis for Personal Jurisdiction

AEON Law on

The Federal Circuit has held that communications related to buying or licensing patents can form the basis for personal jurisdiction in a patent infringement lawsuit. The case of APPLE INC. v. ZIPIT WIRELESS, INC....more

Knobbe Martens

Notice Letters and Communications May Form a Basis for Personal Jurisdiction

Knobbe Martens on

APPLE INC. v. ZIPIT WIRELESS, INC. [OPINION]- PRECEDENTIAL - Before Hughes, Mayer and Stoll.  Appeal from the United States District Court for the Northern District of California. Summary: Notice letters and related...more

International Lawyers Network

Parties to exploratory agreements beware: Contractual restrictions on IPR patent challenges are enforceable!

On February 8, 2022, the U.S. Court of Appeals for the Federal Circuit determined that certain restrictions on the ability to challenge the validity of patents are enforceable. Without such restrictions, companies that are...more

Knobbe Martens

Intrinsic Record Thwarts Theory of Interchangeability

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APPLE INC. V. WI-LAN INC. Before Moore, Chief Judge, Bryson, and Prost.  Appeal from the United States District Court for the Southern District of California. Summary: Construing a broad claim term to be re-defined as...more

Jones Day

Use Caution When Mapping Multi-Forum Patentability Attack

Jones Day on

A recent PTAB decision in Sattler Tech Corp. v. Lyu represents an important reminder to carefully review the procedural and substantive requirements for filing a petition for an AIA trial, especially when dealing with...more

Knobbe Martens

Be Careful What You Agree To: Incorporated Rules Clearly and Unmistakably Delegate Determining Arbitrability

Knobbe Martens on

ROHM SEMICONDUCTOR USA, LLC v. MAXPOWER SEMICONDUCTOR, INC. Before Lourie, O’Malley, and Chen.  Appeal from the U.S. District Court for the Northern District of California. Summary:  An arbitration agreement, which...more

Knobbe Martens

Enforcing a Patent Known to be Invalid Can Trigger Attorneys’ Fees

Knobbe Martens on

ENERGY HEATING, LLC v. HEAT ON-THE-FLY, LLC - Before Moore, Prost, and Stoll.  Appeal from the U.S. District Court for the District of North Dakota. Summary: Enforcing a patent with knowledge that it is invalid can...more

Jones Day

Chinese Supreme Court IP Tribunal Plugs Loophole in Patent Infringement Litigation

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Similar to the laws in the United States and Europe, Chinese law allows those accused of patent infringement to commence actions for declaring non-infringement of patents to clear away the uncertainties. A key precondition...more

Akin Gump Strauss Hauer & Feld LLP

Action Seeking Judgment of Compliance with FRAND Obligations Survives Only Insofar as it Relates to U.S. Patent Rights

Optis Wireless Technology, LLC filed a declaratory judgment action in the Eastern District of Texas seeking judgment that it complied with its fair, reasonable and non-discriminatory (FRAND) obligations when it offered a...more

Kramer Levin Naftalis & Frankel LLP

CAR T-Cell Therapy Takes Off and Brings on Patent Litigation

CAR T-Cell therapy, a new biologic therapy, is taking off. As companies continue to develop this new and promising therapy, patent litigation inevitably follows.  ...more

Robins Kaplan LLP

Valeant Pharms. N. Am. LLC v. Zydus Pharms. (USA) Inc.

Robins Kaplan LLP on

BECAUSE PLAINTIFFS FAILED TO SHOW SPECIFICALLY HOW DEFENDANTS COMMITTED ANY ACT OF INFRINGEMENT IN NEW JERSEY—PARTICULARLY BY FILING AN ANDA IN WEST VIRGINIA WITH THE FDA IN MARYLAND—OR THAT ANY FUTURE, INTENDED ACTS WERE A...more

Polsinelli

One-Year Time Bar Triggered After the Service of a Complaint, Regardless of Whether the Serving Party Lacked Standing to Sue

Polsinelli on

On August 23, 2019, the Precedential Opinion Panel (POP) of the Patent Trial and Appeal Board (PTAB) issued a precedential opinion relating to the one-year time bar under 35 U.S.C. § 315(b). ...more

McDermott Will & Emery

Texas Court Declares Licensing Offer Based on End Device Is FRAND, Diverges from California Court in Qualcomm

Standard-essential patent holders and implementers may face uncertainty regarding licensing practices following a May 23 Texas court ruling. In the ruling, a Texas federal judge reached a conclusion different from a recent...more

Jones Day

No IPR Institution Due to a District Court Trial Eleven Months Away

Jones Day on

Our previous blog post on NHK Spring Co. v. Intri-Plex Techs., Inc., No. IPR2018-00752, Paper 8 (PTAB Sept. 12, 2018) (precedential), noted the PTAB’s exercise of its § 314(a) discretion to deny IPR institution, despite the...more

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases - December 2018 #2

PATENT CASE OF THE WEEK - Jack Henry & Associates, Inc. v. Plano Encryption Technologies LLC, Appeal No. 2016-2700 (Fed. Cir. Dec. 7, 2018) On Friday, the Federal Circuit reversed a district court’s dismissal of a...more

Shook, Hardy & Bacon L.L.P.

GEMSA’s Patent Onslaught Against Cloud Computing Customers

Global Equity Management (SA) Pty. Ltd. (“GEMSA”), a foreign non-practicing entity (“NPE”) organized under the laws of Australia, filed almost 40 patent lawsuits in five batches in 2015 and 2016. The majority of these...more

Proskauer - New England IP Blog

No Stay Pending IPR in Brewing Patent Dispute

District court patent defendants often request a parallel inter partes review (“IPR”) proceeding at the U.S. Patent Office to challenge the validity of the patent at issue. As such IPR proceedings have the potential to kill...more

Dorsey & Whitney LLP

Using Design Patents to Claim Functional Elements???

Dorsey & Whitney LLP on

A recent opinion from the United States Court of Appeals for the Federal Circuit in Sport Dimension, Inc. v. The Coleman Co., No. 2015-1553, 7 (Fed. Cir. 2016), held that design patents can provide protection for ornamental...more

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