Tag Archives: patent infringement

Intellectual Ventures v. Motorola: Use = Benefit for the Purposes of System Claims Infringement

On Sept. 13, 2017, the United States District Court for the Federal Circuit clarified the meaning of the term “use” as it applies to system claims in patent infringement actions. In doing so, the court held that an infringer must benefit from all elements of a system claim in order to infringe, reversing and remanding … Continue Reading

Federal Circuit Suggests Solution to Patent Owner’s Dilemma When Applicant for Biosimilar Product Refuses Discovery

In Amgen, Inc. v. Hospira, Inc., Appeal No. 2016-2179 (Fed. Cir. Aug. 10, 2017), the Federal Circuit suggested what an owner of a reference product suing an applicant for a biosimilar under the Biologics Price Competition and Innovation Act of 2009 (BPCIA) must do when the applicant refuses discovery that the patent owner needs to … Continue Reading

Supreme Court Announces ‘Uniform and Automatic’ Rule for Patent Exhaustion

The Supreme Court on Tuesday, May 30, issued an opinion in Impression Prods., Inc. v. Lexmark Int’l, Inc., No. 15–1189 (S. Ct. May 30, 2017), [hereafter “Lexmark”], reversing the Federal Circuit on two aspects of the patent exhaustion doctrine and redefining the boundaries of the rights afforded a patentee under the Patent Act. Chief Justice … Continue Reading

In Case of First Impression, Federal Circuit Rules that a Patent Owner’s Statements in an IPR Proceeding Can Create Prosecution Disclaimer

  In Aylus Networks, Inc. v. Apple Inc., Appeal No. 2016-1599 (Fed. Cir. May 11, 2017), the Federal Circuit ruled that a patent owner’s statements during an inter partes review (IPR), even if before an institution decision, can create prosecution disclaimer. After the patent owner filed suit, the defendant filed two petitions for IPR. In … Continue Reading

The Continuing “Evolution” of Alice: a GUI Example

On January 18, 2017, the Federal Circuit, in Trading Technologies International, Inc. v. CQG, Inc., No. 2016-1616 (Fed. Cir. Jan. 18, 2017) (NEWMAN, J.), issued a non-precedential decision affirming the district court’s holding that claims directed to “[a] method for displaying market information relating to and facilitating trading of a commodity being traded in an … Continue Reading

Federal Circuit Provides Guidance on Divided Infringement, Inducement of Infringement, and Indefiniteness

Patent owners will applaud the Federal Circuit’s latest pronouncement on divided infringement, inducement of infringement, and claim definiteness under 35 U.S.C. § 112. Eli Lilly & Co. v. Teva Parenteral Medicines, Inc., Appeal No. 2015-2067 (Fed. Cir. Jan. 12, 2017). On all three issues, the opinion, authored by Chief Judge Prost and joined by Circuit Judges … Continue Reading

Apportioning for the Standard When Valuing Standards-Essential Patents

Commonwealth Scientific and Industrial Research Organisation (CSIRO), a national research organization of Australia, recently filed a petition for certiorari with the Supreme Court. CSIRO presents the following question: Is the Federal Circuit’s promulgation of rigid legal rules to control the weight to be given by the trier of fact to evidence of patent infringement damages … Continue Reading

Court Decides that ANDA Approved Before Patent Issued Cannot Infringe 35 U.S.C. § 271(e)(2)(A)

Although the Hatch-Waxman Act was passed by Congress decades ago, it still produces new questions. Despite vigorous argument by the patent owner, a district court dismissed a count alleging that the ANDA-filer infringed under 35 U.S.C. § 271(e)(2)(A), leaving in place the unchallenged count for infringement under § 271(a). Ferring B.V. v. Actavis, Inc., Civil Action No. … Continue Reading

Supreme Court to Consider Patent Laches in Wake of Copyright Laches Decision

When we last discussed patent laches here, the Federal Circuit had voted to rehear, en banc, SCA Hygiene Products’ patent infringement claim, which invoked a laches defense. At that time, the Supreme Court had recently decided in Petrella v. Metro-Goldwyn-Mayer, Inc.[1] that laches was not a defense to a copyright infringement claim brought within the … Continue Reading

FTC’s Latest “Pay for Delay” Action Focuses on Noncash “Payments” and New “Product Hopping” Theory of Harm

The Federal Trade Commission (FTC) filed an antitrust complaint this week against Endo Pharmaceuticals and several generic companies, alleging that these companies entered into anticompetitive “reverse payment” settlements of patent infringement litigation under the Hatch-Waxman Act. In its 2013 FTC v. Actavis opinion, the U.S. Supreme Court held that certain settlements involving “reverse payments” may … Continue Reading

Filing an ANDA May Expose Generic Manufacturers to Nationwide Personal Jurisdiction in Patent Infringement Suits

On March 18, 2016, the Federal Circuit affirmed the District of Delaware’s ruling in two companion cases that West Virginia-based defendant Mylan Pharmaceuticals is subject to specific personal jurisdiction in Delaware. Acorda Therapeutics Inc. v. Mylan Pharm. Inc., 2015-1456 (Fed. Cir. Mar. 18, 2016); AstraZeneca AB v. Mylan Pharm. Inc., 2015-1460 (Fed. Cir. Mar. 18, … Continue Reading

Federal Circuit Upholds Inequitable Conduct Ruling in Ohio Willow Wood Company

In the latest iteration of Ohio Willow Wood Company[1] (OWW), the Federal Circuit upheld a district court ruling of inequitable conduct against OWW despite the presence of a litigation screen. The Federal Circuit had affirmed summary judgment on invalidity, reversed a summary judgment ruling of no inequitable conduct, and remanded the case to the Southern … Continue Reading

Addition Through Subtraction, Broadening Reissue Upheld in Zoltek Corp. v. U.S., 2014-5082 (Fed. Cir. 2016)

The Zoltek versus the United States case might be characterized as if at first you don’t succeed, try, try again…and then try one more time. Zoltek took three trips to the Federal Circuit before having the validity of its patent for materials used in the B-2 bomber and F-22 fighter planes confirmed. Even before filing … Continue Reading

Federal Circuit Tasked With Analyzing Evidence For Proof That Defendant Had the State of Mind Necessary For Induced Infringement

On January 19, 2016, the Supreme Court issued a grant-vacate-remand order in a dispute between rival medical device companies Medtronic and NuVasive. The order directs the Federal Circuit to revisit its decision in light of the Supreme Court’s ruling in Commil USA, LLC v. Cisco Systems, Inc., 135 S. Ct. 1920 (2015). Commil clarified that … Continue Reading

Momenta Pharma., Inc. v. Teva Pharma. USA Inc.

In Momenta Pharma., Inc. v. Teva Pharma. USA Inc., Nos. 2014-1274, -1277, -1276, and -1278 (Fed. Cir. Nov. 10, 2015) (“Momenta II”), the Federal Circuit found that, pursuant to 35 U.S.C. § 271(g), “made” is limited to steps directly related to manufacturing products and excludes isolated quality control steps. The court also revisited its prior … Continue Reading

Methods of treating a subset of patients are likely nonobvious if the subset exhibits unexpected results

In Prometheus Laboratories, Inc. v. Roxane Laboratories, Inc.,[1] a recent decision involving methods of treating a specific subset of patients, the Court of Appeals for the Federal Circuit (“Federal Circuit”) ruled that, although the claims of the patent at issue were invalid as obvious, singling out a particular subset of patients for treatment can still … Continue Reading

Denial of a Preliminary Injunction Against Twilio

Twilio, Inc. is a cloud communications company that earlier this year raised $100 million in funding, a figure that placed it in the Unicorn Club—those startup companies with valuations over a billion dollars. Twilio has made a name for itself as a cloud-based communications platform. But Twilio faced a problem when it was sued by … Continue Reading

Attorney Fees for Post-Grant Patent Challenge Proceedings Before the USPTO May Be Recoverable in Exceptional Cases Under 35 U.S.C. § 285

Parties accused of patent infringement are turning more and more to post-grant challenge proceedings at the United States Patent and Trademark Office (“USPTO”) as a faster and cheaper means for invalidating the asserted claims. A recent federal district court order indicates that the fees and costs associated with such proceedings may be recoverable if the … Continue Reading

Does ‘Raging Bull’ Deliver Knockout to Patent Laches Defense?

Under Federal Circuit case law, patent-infringement defendants may assert the laches defense – an equitable defense barring claims brought after an unreasonable delay. But the doctrine will soon square off in the Federal Circuit against a heavy hitter: “Raging Bull.” In 2014, the Supreme Court decided a copyright case about the popular boxing movie “Raging … Continue Reading

Federal Circuit Affirms Finding of Infringement in SynQor v. Artesyn Techs.

“This court also sees no reason why [the plaintiff’s] decision not to argue pre-verdict willful infringement at trial should preclude the district court from finding willful infringement for post-verdict sales.” On March 13, 2013, in SynQor, Inc. v. Artesyn Techs., Inc., the U.S. Court of Appeals for the Federal Circuit (Rader,* Lourie, Daniel) affirmed the … Continue Reading
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