Category Archives: Patents

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Permanent Injunctions for Non-Practicing Entities in Patent Cases

Many patent practitioners assume that non-practicing entities cannot obtain permanent injunctions in patent cases.  This is attributed to the belief that NPEs fail the four-factor test set out by the Supreme Court in eBay.  Given that belief, it is surprising for some to learn that a recent decision from the Northern District of California resurrected … Continue reading this entry

Challenging IPR Institutions Following Federal Court Decision in In re: Power Integrations Inc.

Practitioners should be aware that challenging the PTAB’s decision to deny institution of an IPR got even harder after a recent Federal Circuit decision.  While the Supreme Court has already made clear that challenges to denial of an institution decision can only happen in very specific circumstances, the Federal Circuit’s recent precedential decision in In … Continue reading this entry

When Can a Company Be Liable for Its Vendor’s Copyright or Patent Infringement?: Hollywood Studios’ IP Headache

The case of Rearden LLC et al. v. The Walt Disney Company et al., Nos. 3:17-cv-04006, 04191 & 04192 (N.D. Cal.), has been covered more in the Hollywood Reporter than in legal publications, but it is both a “Hollywood story” and a case with intellectual property issues that cover the spectrum of patent, copyright and … Continue reading this entry

Restoring America’s Leadership in Innovation Act of 2018

On June 28, 2018, Representatives Thomas Massie (R-KY-4), Marcy Kaptur (D-OH-9) and Dana Rohrabacher (R-CA-48) introduced H.R. 6264, the “Restoring America’s Leadership in Innovation Act of 2018.” The bill ambitiously seeks to curtail or repeal numerous provisions of the 2011 America Invents Act (“AIA”) as well as certain recent Supreme Court cases. The bill calls … Continue reading this entry

Motions to Disqualify Counsel in PTAB Proceedings

Practitioners may not realize that the Patent Trial and Appeal Board (“PTAB”) has a rule expressly providing the ability to disqualify counsel. See 37 C.F.R. § 42.10(d) (“A panel of the Board may disqualify counsel for cause after notice and opportunity for hearing. A decision to disqualify is not final for the purposes of judicial … Continue reading this entry

When the Words of a Claim Don’t Matter - Federal Circuit Extends Printed Matter Doctrine to Information and Mental Steps in Affirming PTAB’s Obviousness Determination

In Praxair Distribution, Inc. v. Mallinckrodt Hospital Products IP Ltd., 890 F.3d 1024 (Fed. Cir. 2018), the Federal Circuit affirmed the PTAB’s application of the rarely relied on “printed matter doctrine” to conclude that claims directed to a method for providing to a medical provider nitric oxide gas (“NO”) along with “information” concerning i) a recommended … Continue reading this entry

New Types of Section 337 Investigations at the International Trade Commission

Most Section 337 investigations allege violations of intellectual property (“IP”) based rights involving patent, registered trademark, or registered copyright infringement (“statutory IP claims”). In such cases, the complainant must establish that a valid and enforceable U.S. patent, trademark, or copyright is being infringed by the importation into the U.S., the sale for importation, or the … Continue reading this entry

Federal Circuit, USPTO Clarify Subject Matter Eligibility for Methods of Treatment

On June 7, 2018, the USPTO issued new guidance in the form of a memorandum regarding the patentability of methods of treatment. This memorandum, issued in response to the Federal Circuit’s holding in Vanda Pharmaceuticals Inc. v. West-Ward Pharmaceuticals, 887 F.3d 1117 (Fed. Circ. 2018), emphasizes that patent claims directed towards methods of treatment may … Continue reading this entry

Supreme Court Allows Foreign Lost Profits on Domestic Acts of Patent Infringement Under 35 U.S.C. § 271(f)(2)

Today, in WesternGeco LLC v. ION Geophysical Corp., 585 U.S. __ (June 22, 2018), the Supreme Court ruled that recovering foreign lost profits attributable to domestic acts of infringement under 35 U.S.C. § 271(f)(2) does not violate the presumption against extraterritorial application of U.S. statutes.  In reaching its conclusion, the Court determined that the “focus” … Continue reading this entry

SAS "Ground" Rules

In a quartet of recent decisions, the Federal Circuit has confirmed that SAS Institute extends beyond mandating the inclusion of all claims when trial is instituted, and extends to all grounds as well.  These decisions confirm that the Board’s “binary choice” is to institute (or not) on all claims challenged in a petition, as well … Continue reading this entry

Federal Circuit Clarifies Venue Rule for Foreign Defendants Post-TC Heartland

The Federal Circuit today in In re HTC Corp., Misc. 2018-130 (May 5, 2018), followed the holding of the Supreme Court in Brunette Machine Works, Ltd. v. Kockum Industries, Inc., 406 U.S. 706 (1972), that venue is proper as to a foreign defendant in any district.  In so doing, the court found that recent amendments … Continue reading this entry

An Opportunity for Clarity on Assignor Estoppel: Mentor Graphics v. EVE-USA

In patent litigation, assignor estoppel is a common law doctrine that can dramatically alter the rights of both parties involved – when applicable it is dispositive on the issue of patent validity. However, despite the import of this doctrine, there is a lack of clarity of how and to whom this doctrine applies and even … Continue reading this entry

Is the International Trade Commission the Most Patent-Friendly Venue with a Complainant Success Rate Near 90%?

There are many advantages to pursuing relief for patent infringement in the International Trade Commission (ITC) compared to U.S. district court, but one that receives little attention is the success rate for complainants (plaintiffs). The rate has been climbing for years and reached nearly 90% for cases decided on the merits in 2017.  With such … Continue reading this entry

The Public Interest, EPROMs, and Domestic Industry Issues in Component Manufacturer S. 337 Investigations

Since the Supreme Court’s decision in eBay Inc. v. MercExchange, LLC, 547 U.S. 388 (2006), injunctions are an infrequent remedy for patent infringement in federal district courts.  Yet, an exclusion order – the functional equivalent of an injunction – is the remedy issued when a violation of Section 337 is found by the International Trade … Continue reading this entry

Unique Venue and Personal Jurisdiction Challenges of Foreign Corporations

In 2017, the Supreme Court rejected the Federal Circuit’s longstanding interpretation of Personal Jurisdiction and Venue in patent infringement actions against domestic companies. 28 U.S.C. §§ 1391, 1400; see TC Heartland LLC v. Kraft Food Group Brands LLC, 137 S. Ct. 1514 (2017). Under TC Heartland, a domestic corporation can only be sued in its … Continue reading this entry

Federal Circuit Rejects Appeal of Walker Process Claim

In Xitronix Corp. v. KLA-Tencor Corp., No. 2016-2746 (Fed. Cir. Feb. 9, 2018), the Federal Circuit considered whether it or a regional circuit had jurisdiction over an appeal of a case raising only Walker Process antitrust claims. The court held that, in view of the Supreme Court’s decision in Gunn v. Minton, 568 U.S. 251 … Continue reading this entry

Federal Circuit: Rare Guidance on Subject Matter Eligibility of Software Claims

In Core Wireless Licensing S.A.R.L. v. LG Electronics, Inc. et al., the Federal Circuit offered rare guidance on the contours of patent eligible subject matter under § 101. The two related asserted patents, both entitled “Computing device with improved user interface for applications,” are directed to an improved user interface which has a “specific application … Continue reading this entry

Federal Circuit: Pre-IPR Institution Disclaimer of Claims Insufficient to Avoid Adverse Judgment

At this point, several cases have examined the appealability of the Board’s institution decisions in inter partes review (“IPR”) proceedings. See, e.g., Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2142 (2015) (holding that 35 U.S.C. §314 barred judicial review of the Board’s determinations . . . to initiate an inter partes review … Continue reading this entry

Conflict Between Granting a Preliminary Injunction and Staying the Case Pending Appeal of the Injunction

In Fresenius Kabi USA, LLC v. Fera Pharmaceuticals, LLC, et al., Case No. 15-3654 (D.N.J.) the district court recently denied Fresenius’s motion to dismiss Fera’s antitrust counterclaims, but simultaneously decided to sever and stay those claims pending resolution of the patent infringement claims. Additionally, the court denied Fresenius’s motion to stay the patent infringement claims … Continue reading this entry

Recent Guidance from the Federal Circuit on the Doctrine of Equivalents in Cases Involving Chemical Compositions

In Mylan Institutional LLC, et al. v. Aurobindo Pharma Ltd., et al., Case No. 2017-1645, the Federal Circuit affirmed the district court’s grant of a preliminary injunction as to one of three patents-in-suit, while finding that there was error in granting the injunction with respect to the other two patents. The patents-in-suit related to ISB, … Continue reading this entry

Supreme Court Complicates Design Patent Damage Calculation – Apple v. Samsung

On December 6, 2016, the Supreme Court issued a rare unanimous decision on the issue of damages for design patent infringement that continues the Apple v. Samsung smartphone legal odyssey. It also marks only the second time in over 100 years that the court has issued a substantive decision in a design patent case. But … Continue reading this entry

The Decision To Grant Rehearing En Banc In Apple v. Samsung

On October 7, 2016, the Federal Circuit issued another decision in the ongoing patent litigations between Apple and Samsung that began in the Northern District of California. The district court had found at summary judgment that Samsung infringed one of Apple’s patents.  The jury subsequently determined that Samsung infringed two others, and that the asserted … Continue reading this entry

Federal Circuit Finds Claims Implemented on a General Purpose Cellphone Not Patentable

In Alice Corp. v. CLS Bank International, the Supreme Court applied its two-part test for patent eligibility under 35 U.S.C. § 101 – i.e., (1) whether the claims are drawn on a law of nature, natural phenomenon or abstract idea, and (2) whether the claims provide sufficient “inventive concept.” In Alice, the Supreme Court ultimately … Continue reading this entry

Willfulness After Halo: Now What?

The general consensus is that the Supreme Court’s June decision in Halo Electronics v. Pulse Electronics eased the path to proving willfulness, as discussed previously on IP Litigation Current. Many speculated that one result of the Halo decision would be an increase in the value of patents, since a finding of willfulness may lead to trebling of damages. … Continue reading this entry