Delaware Judges Are Finding Patent Claims Indefinite Post-Nautilus

It has been a little more than a year since the Supreme Court rendered its decision in Nautilus, lowering the standard for finding patent claim terms indefinite. Many commentators at that time predicted the decision would have broad implications for all patent cases where definiteness is at issue. Two recent cases from the District of Delaware demonstrate the accuracy of those predictions as judges in Delaware have seized upon the holding in Nautilus to find patent claim terms indefinite. Practitioners asserting or defending against patent claims would do well to acquaint themselves with the strategies and pitfalls raised by the recent decisions to ensure they provide the best advocacy. Continue reading this entry

A Royalty By Any Other Name: Post-Expiration Payments After Kimble v. Marvel

Patent holders and accused infringers will need to continue being creative in drafting license agreements after the Supreme Court’s recent decision in Kimble v. Marvel, No. 13-720, 2015 U.S. Dist. LEXIS 4067, at *6 (June 22, 2015). Kimble upholds the prohibition on charging royalties for use of a patented invention after the patent expires. The rule originated in Brulotte v. Thys Co., 379 U.S. 29 (1964), and has been criticized for restricting the ability of patent holders and potential licensees to reach mutually agreeable terms after arms-length negotiations. Continue reading this entry

Two Bites, Taken Together: Parallel and Serial IPR Petitions

As the body of institution and final decisions in inter partes review (IPR) trials grows, useful trends at both decision stages can be identified. One emerging trend is the relative likelihood that two petitions attacking one or more of the same claims will be more likely granted if filed in parallel (multiple petitions, simultaneously, on the same patent) as compared to when filed serially (multiple petitions, consecutively, on the same patent).

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Federal Circuit: Lack of Bona Fide Intent to Use at the Time of Filing Fatal to Trademark Application

In a recent ruling the Federal Circuit affirmed the decision of the Trademark Trial and Appeal Board (TTAB) sustaining an opposition against a trademark application on the grounds that the applicant failed to prove that it had a “bona fide” intent to use the mark in commerce at the time he filed the application. M.Z. Berger & Co. v. Swatch AG, No. 2014-1219, 2015 U.S. App. LEXIS 9276 (Fed. Cir. 2015). While the TTAB has frequently sustained oppositions based on an applicant’s lack of bona fide intent to use the mark in commerce, this is the first time the Federal Circuit has addressed this issue. Continue reading this entry

Supreme Court on Induced Infringement: Good-Faith Belief of Invalidity Not a Defense and Knowledge of Infringement Required

In a 6-2 decision this week, the United States Supreme Court in Commil USA, LLC v. Cisco Systems, Inc., 575 U.S. ____ (2015) held that an accused infringer’s good-faith belief of patent invalidity is not a defense to a claim of induced infringement and stressed that induced infringement requires knowledge of infringement (as opposed to mere knowledge of a patent). Justice Kennedy wrote the majority opinion. Justice Scalia dissented, joined by Chief Justice Roberts, and Justice Breyer took no part in the decision.

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