Category Archives: Patents

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Design Patents and Copyrights for Designs on Useful Articles

Two recent cases illustrate the potential benefits of protecting intellectual property rights with both design patents and copyrights, particularly for an article that has both utility and a design, including because a design patent infringement analysis may sometimes be more straightforward to apply. In a design patent case, Columbia Sportswear North America, Inc. v. Seirus … Continue reading this entry

The Evolving Standard for Pleading Direct Patent Infringement

It has been a little more than half a year since the amendments to the Federal Rules of Civil Procedure abrogated Rule 84 and put an end to the Form 18 bare-bones style patent complaint.  The question on the minds of many patent litigators has been: What standard would emerge for pleading direct patent infringement … Continue reading this entry

Two Recent Decisions Put Alice "Step One" on Center Stage at The Federal Circuit

On May 12 and May 17, 2016, the Federal Circuit issued decisions in two § 101 cases, EnFish, LLC v. Microsoft Corp. and In re TLI Communications, LLC. Both authored by Judge Hughes, the decisions illustrate the difficult process of determining where to draw the line between a claim that is directed to an “abstract idea” under step … Continue reading this entry

In re: TC Heartland LLC: Status Quo for Venue Selection in Patent Suits (For Now)

The Federal Circuit, in In re: TC Heartland LLC (No. 2016-105), recently issued an opinion denying TC Heartland’s petition for a writ of mandamus to direct the U.S. District Court for the District of Delaware to either dismiss or transfer the patent infringement suit filed against it by Kraft Foods Group Brands LLC (“Kraft”).  This … Continue reading this entry

It’s a Jungle Out There: A Reexamination Certificate Containing Amended Claims May Be Insufficient to Vacate a Prior Judgment of Invalidity

In a case with a unique procedural history the Federal Circuit addressed whether claims amended during an ex parte reexamination proceeding required vacating a prior judgment of invalidity (on patent eligibility grounds) on the original claims. While stressing the discretion of the district court, the Federal Circuit in Cardpool, Inc. v. Plastic Jungle, Inc. (Fed. … Continue reading this entry

What "Reasonably" Could Have Been Raised in an Inter Partes Review?

Since their introduction, inter partes review (“IPR”) proceedings have had a close association with district court litigation. Indeed, litigation defendants are often the petitioners who initiate IPR proceedings. Therefore, the effect that an IPR can have on concurrent or potential litigation is an important consideration for petitioners. Among the factors that petitioners must consider are … Continue reading this entry

Patent Venue Legislation Could Have A Dramatic Impact on Popular Patent Venues

This month, three United States Senators introduced the “Venue Equity and Non-Uniformity Elimination Act of 2016.”  The bill would dramatically narrow the venue statute that applies to patent cases and, it appears, prevent most cases from being litigated in the popular venues for patent cases, such as the Eastern District of Texas.… Continue reading this entry

No Due Process Violation Where Judgment Entered on Patents Not Asserted at Trial

A recent case reminds litigators to be diligent in protecting their clients’ due-process rights when narrowing a case for trial or risk forfeiting the right to trial altogether.  In Nuance Communications v. ABBYY USA Software House, Inc., the Federal Circuit ruled that due process rights were not violated when a district court entered judgment of … Continue reading this entry

Important Decisions on the Scope of the ITC's Authority

In the latter half of 2015, the Federal Circuit in Suprema v. ITC and ClearCorrect v. ITC issued two decisions addressing the scope of the International Trade Commission’s (“ITC”) authority to exclude infringing articles.  In Suprema v. ITC (2012-1170) (en banc), the Federal Circuit ruled that the ITC’s authority included the authority to address induced … Continue reading this entry

The Threshold of Exceptionality: There Is a Line, and It Can Be Crossed

Non-practicing entity (“NPE”) plaintiffs beware and NPE defendants be delighted: sanctions for objectively unreasonable claims and conduct are alive and well. Defendants in NPE litigations, particularly in the Eastern District of Texas, received encouraging news recently when Judge Gilstrap granted $390,829 in fees to more than 20 defendants in response to motions for attorneys’ fees on … Continue reading this entry

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 … 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 … 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 … 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 … Continue reading this entry

The Importance of Contracts for Joint Infringement in Patent Cases

It has been about a year since the Supreme Court rendered its decision in Limelight v. Akamai regarding induced infringement for methods performed by two or more actors. At that time, commentators predicted that attention would shift to contract analysis for determining direct, rather than induced, infringement in these multi-actor method situations, known as joint or divided infringement.  … Continue reading this entry

Deposition Practice Tips: PTAB Guidance for Dealing With Suspected Witness Coaching

Question: What can you do when you suspect that opposing counsel engaged in inappropriate witness coaching during a PTAB deposition?  Answer: Ask the witness about the suspected off-the-record discussions and call the Board from the deposition, if necessary. In FLIR Systems, Inc. v. Leak Surveys, Inc., IPR2014-00434, Paper 12 (Feb. 10, 2015), in a post-conference … Continue reading this entry

Federal Circuit Finds Disclaimer Based on “Object of Invention” Language

The Federal Circuit’s recent decision in Pacing Technologies, LLC v. Garmin International, Inc.  (No. 2014-1396) provides patent litigators with a new tool for claim construction arguments and may make patent prosecutors reconsider their drafting techniques. The Federal Circuit held that a patent specification’s characterization of disclosed “objects of the invention”—a phrase commonly used by patent … Continue reading this entry

Federal Circuit Limits Patent Exhaustion Doctrine for Complementary Technology

In its 2013 decision in Keurig, Inc. v. Sturm Foods, Inc., the Federal Circuit held that a purveyor of coffee cartridges did not infringe Keurig’s coffee brewing patents because Keurig had already made an unrestricted sale of its brewing machines to end users, such that any further use of those machines was protected by the … Continue reading this entry

Patent Eligibility Under Alice: Reliance on Lack of Routine or Conventional Use

Federal courts have continued to wrestle with the standard for patent eligibility under 35 U.S.C. § 101 set by the Supreme Court’s ruling in Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347 (2014). This is illustrated, for example, in two decisions – one from a district court and one from the … Continue reading this entry

Has the Machine-or-Transformation Test Returned to Prominence in Patent Cases?

The machine-or-transformation test was once the gatekeeper of patent eligibility, but that reign ended in 2010 when the Supreme Court stated in Bilski that it is not the sole test for determining patentability. By 2013 the test became largely ignored, for example in the Federal Circuit’s Ultramercial opinion. When that opinion was vacated and remanded by the Supreme … Continue reading this entry

U.S. Supreme Court Modifies Federal Circuit’s Standard of Review for Claim Construction in Teva v. Sandoz

On January 20, 2015, resolving a long debated issue, the U.S. Supreme Court set aside the Federal Circuit’s de novo review of every aspect of a lower court’s claim construction decision, rejecting that form of review where the district court has resolved factual disputes and made factual findings about the extrinsic evidence. Teva Pharms. USA, … Continue reading this entry

Pre-Trial Consolidation May Run Afoul of the America Invents Act

The America Invents Act introduced a new statute, 35 U.S.C. § 299, which provides that “accused infringers may not be joined in one action as defendants or counterclaim defendants, or have their actions consolidated for trial, based solely on allegations that they each have infringed the patent or patents in suit.” In the years since … Continue reading this entry