Archives: Patent

Federal Circuit Disregards ‘Manipulative Activities’ of Plaintiffs in Deciding Venue Transfer

By Jeffrey Lyons on July 14, 2021 Posted in Patent

The U.S. Court of Appeals for the Federal Circuit recently issued a precedential opinion discussing plaintiffs’ attempts to influence venue through reliance on a licensing agreement that purported to limit where a patent infringement suit “might have been brought.” See In re Samsung Electronics Co., Case Nos. 2021-139, 2021-140 (Fed. Cir. June 30, 2021). In … Continue Reading

Appellate Hot Potato: Which Circuit Court Will Hear a ‘Walker Process’ Appeal?

By Jeffrey Lyons on July 13, 2021 Posted in Patent

In the latest round of appellate hot potato, the U.S. Court of Appeals for the Federal Circuit transferred to the U.S. Court of Appeals for the Fifth Circuit an appeal from a decision by the U.S. District Court for the Northern District of Texas regarding antitrust claims associated with enforcement of a patent found unenforceable … Continue Reading

Can a Plaintiff in the United States Recover Foreign Patent Damages?

By Michael Gannon on April 5, 2021 Posted in Patent

In 2018, the U.S. Supreme Court held that a plaintiff was entitled to lost foreign profits under 35 U.S.C. § 284 based on direct acts of infringement in the United States under 35 U.S.C. § 271(f)(2). WesternGeco LLC v. ION Geophysical Corp., 138 S.Ct. 2129 (2018) (WesternGeco). The question is: Did WesternGeco effectively overrule the Federal Circuit’s … Continue Reading

2020 Patent Litigation: Year in Review

By Derek Freitas on March 24, 2021 Posted in Patent

2020 was a year of turmoil and unexpected events. While many businesses struggled throughout the year, patent litigation experienced an uptick across the board. According to Docket Navigator, 2020 was the first year to see an increase in the total annual number of patent cases since 2015.[1] Compared to 2018 and 2019, this past year … Continue Reading

Recent Trends of Pilot-Eligible MTAs and Complementary Post Grant Strategies

By Tayan Patel on February 18, 2021 Posted in Patent

The USPTO’s Motion to Amend (MTA) Pilot Program has been in effect for nearly two years. The Pilot Program applies to all AIA trials instituted on or after March 15, 2019. Broadly, the Pilot Program’s objective is to provide patent owners with the additional options of requesting Preliminary Guidance from the Patent Trial and Appeal … Continue Reading

Federal Circuit Addresses Printed Publications Under 35 U.S.C. § 102 and the APA Notice Requirement in Inter Partes Reviews

By Charles Carson on February 17, 2021 Posted in Patent

In a precedential opinion, M&K Holdings, Inc. v. Samsung Electronics, Inc. (Fed. Cir. Feb. 1, 2021), the Federal Circuit further clarified the scope of prior art printed publications under 35 U.S.C. § 102. The Federal Circuit affirmed a Patent Trial and Appeal Board (PTAB) decision that the prior art at issue in an inter partes review … Continue Reading

Baked-In Apportionment

By Jared Brandyberry on February 9, 2021 Posted in Patent

In Vectura, the Federal Circuit recently reiterated that the entire market value of an accused multicomponent product may serve as the royalty base if the patent damages analysis is built on sufficiently comparable licenses. Vectura Limited v. Glaxosmithkline LLC, 981 F.3d 1030, 1040-1042 (Fed. Cir. 2020). Pursuit of the entire market value of a multicomponent … Continue Reading

Election Ballot Verification – A Patent Subject Matter Eligibility Analysis

By Gabriel Applegate on January 12, 2021 Posted in Patent

In light of recent events, technologies directed toward verifying voter ballots may sound like attractive investment opportunities. However, potential investors often seek to ensure a technology is protected by one or more valid patents before opening their checkbooks. Interestingly, a Federal Circuit case from 2018, Voter Verified, Inc. v. Election Systems & Software, invalidated issued … Continue Reading

The Sun Has Set on CBM Review

By Jennifer M. Kurcz and Alaina J. Lakawicz on September 23, 2020 Posted in Patent

Earlier this month, on September 16, 2020, the Transitional Program for Covered Business Method (CBM) Review expired.[1] Enacted as part of the AIA and spanning eight years, CBM Review was promoted within Congress as a vehicle to challenge weak patents, i.e., patents that should not have been issued in view of the Supreme Court’s Bilski … Continue Reading

Justice Ginsburg’s Dissents – in Patent Law

By Jason Hoffman on September 21, 2020 Posted in Patent

As the country collectively mourns the passing of Justice Ruth Bader Ginsburg, I am reminded of the inspiring book “I Dissent: Ruth Bader Ginsburg Makes Her Mark” (which I have read to my children many times). While the justice was famous for her dissents on other issues, what about in patent law? From Markman v. … Continue Reading

Booking.com Remand on USPTO Attorney Fee Issue Portends Closure on Circuit Split

By Lesley Grossberg on July 16, 2020 Posted in Patent

As followers of this blog may recall, in December 2019, the Supreme Court resolved a circuit split as to whether the United States Patent and Trademark Office (USPTO) may recover its “attorneys’ fees” (effectively, the pro rata salaries of its legal personnel) in appeals from the Patent Trial and Appeal Board (PTAB) and Trademark Trial … Continue Reading

Patent-demic: How COVID-19 Has Affected Patent Litigation

By Harrison Rose on June 18, 2020 Posted in Patent

As it has almost every industry and business around the world, the COVID-19 pandemic has altered the practice of law. While these unprecedented times present myriad problems, patent attorneys are among the best equipped to adapt and embrace the changes. Because of the global nature of patent law, which often necessitates regular travel to appear … Continue Reading

The Potential Patent Risks Associated with COVID-19 Collaborations

By Fabian Koenigbauer on June 15, 2020 Posted in Patent

As researchers at universities and pharmaceutical companies rush to find treatments for COVID-19, new potential patent risks arise. While owners of existing patents that may be useful for COVID-19 treatments may have agreed to free up access to their patent rights through licensing or initiatives like Open COVID Pledge (U.S.) or the Open COVID-19 Declaration, … Continue Reading

Child Artists, Rejoice: Federal Circuit Affirms Noninfringement and Invalidity Judgments Against Designer of Chalk Holders

By Robert Razzano on June 4, 2020 Posted in Patent

The COVID-19 pandemic has caused sweeping changes to our daily lives and the way we interact with one another. Many of these changes have been rather unwelcome. But one pleasant change I have noticed is a significant increase in driveway chalk art. Children across the country now can rest easy knowing they have not infringed … Continue Reading

Something on Which Even Patent Litigators Can Agree: McRO v. Bandai, Inc. Clarifies the Framework for Enablement Challenges and for Enablement Defenses

By Aaron Rabinowitz on June 1, 2020 Posted in Patent

In McRO, Inc. v. Bandai Namco, Inc. et al., No. 2019-1557, __ F.3d __ (Fed. Cir. May 20, 2020), the Federal Circuit reversed a judgment of invalidity and in doing so provided needed clarity concerning the application of the enablement requirement. This guidance is useful to patent owners and patent challengers, as the decision explains … Continue Reading

Are Federal Reserve Banks People Too? Federal Circuit Clarifies ‘Persons’ Capable of Petitioning for Post-Grant Patent Review Under the America Invents Act

By Jason Oliver on April 16, 2020 Posted in Patent

The Federal Reserve has been at the forefront of daily news in connection with its efforts to revive the national economy in the wake of the COVID-19 pandemic. At the same time, the U.S. Court of Appeals for the Federal Circuit in Bozeman Financial LLC v. Federal Reserve Bank of Atlanta et al. recently ruled … Continue Reading

Federal Circuit’s COVID-19 Response Brings Public Telephonic Oral Arguments and Patent Cases Decided on the Briefs

By John Murphy on April 13, 2020 Posted in Patent

The Federal Circuit’s April court week, held amid the COVID-19 pandemic, was like no other in the court’s history. Instead of hearing 12 oral arguments per day in its three courtrooms, the Circuit held a handful of telephonic oral arguments and decided the great majority of this month’s cases on the briefs. As a side … Continue Reading

Invoking Equity in the Time of COVID-19

By Christina Moser on March 31, 2020 Posted in Patent

Talk about bad timing. On Friday, March 6, 2020, non-practicing patent holding company Labrador Diagnostics formed in Delaware and obtained a patent portfolio directed to testing patients for the presences of coronavirus—when the United States had 282 cases. Three days later, Labrador Diagnostics decided to file a lawsuit seeking damages and injunctive relief against a … Continue Reading

Patent Portfolio Considerations During Times of Financial Uncertainty

By Erin Caldwell on March 27, 2020 Posted in Patent

In response to the economic effects of the COVID-19 pandemic, many companies are reevaluating their expenditures. Some may look to their intellectual property portfolios as a place to cut costs. But any decisions to scale back on investments in patents should be driven by business considerations and not by panic. In order for a well-informed … Continue Reading

Be Sure to Ask Your Scientists the Right Questions or Risk Losing Patent Protection

By Fabian Koenigbauer and Stephanie Lodise on January 27, 2020 Posted in Patent

Welcome to the IP Intelligence Blog. We have merged the Copyright, Content, and Platforms blog into the IP Intelligence Blog to provide a single source for IP updates. We hope you enjoy our thought provoking posts on Intellectual Property related topics. Under the first-to-file patent system in place in the U.S. and globally, a publication … Continue Reading

POP Addresses IPR Printed Publication Standard

By Timothy Doyle on December 26, 2019 Posted in Patent

The Precedential Opinion Panel (POP) of the Patent Trials and Appeals Board (PTAB) recently answered the question, “What is required for a petitioner to establish that an asserted reference qualifies as a ‘printed publication’ at the institution stage?” According to the POP, “[f]or institution of an inter partes review, a petitioner must establish a reasonable … Continue Reading

Settlement Offers Can Be Used Against You (in a Patent Case)

By Jason Hoffman on December 23, 2019 Posted in Patent

Rule 408 of the Federal Rules of Evidence protects settlement communications. The language of the rule is clear. Such communications are “not admissible . . . to prove or disprove the validity . . . of a disputed claim.” However, there are exceptions to this rule. And in a recent patent infringement case, the Federal Circuit … Continue Reading

Hussein Akhavannik, Fabian Koenigbauer Article Examines Lessons to Learned from “Pharma Tech” Decision

By Hussein Akhavannik and Fabian Koenigbauer on December 20, 2019 Posted in Patent

Partner Hussein Akhavannik and Counsel Fabian Koenigbauer authored an article published Dec. 19, 2019, by IAM.com. The article, “Federal Circuit Ruling Marks Out Dangers of Doctrine of Equivalents Estoppel,” discusses how the Federal Circuit’s ruling in Pharma Tech Solutions Inc. v. Lifescan Inc. underscores the importance of carefully crafting claim amendments and arguments during prosecution … Continue Reading

Can the USPTO Recover the Salaries of its Legal Personnel in Challenges to Adverse Decisions?

By John Hilten on December 13, 2019 Posted in Patent

Can the U.S. Patent and Trademark Office (USPTO) recover the salaries of its legal personnel in challenges to adverse decisions? Not surprisingly, the answer was a quick and unanimous no. More specifically, on Wednesday, Dec. 11, the U.S. Supreme Court concluded that the USPTO cannot recover the pro rata salaries of its legal personnel. The … Continue Reading