Finnegan – Federal Circuit IP Blog

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Federal Circuit Remands For Further Consideration of Proper Irreparable Harm Test for Permanent Injunction

In Genband US v. Metaswitch Networks, No 2017-1148 (Fed. Cir. July 10, 2017), the Federal Circuit clarified that a patentee only need show “some connection” between the patent and sales of infringing products to meet the…more
 /  Intellectual Property, Science, Computers, & Technology

Spotlight on Upcoming Oral Arguments – July 2017

This appeal arises from a Northern District of Illinois decision dismissing Nalco’s infringement complaint with prejudice and denying its motion for reconsideration. Nalco argues that the law does not require pleading all…more
 /  Intellectual Property, Science, Computers, & Technology

USPTO Can Receive Its Attorneys’ Fees for Applicant Appeals to District Court

In NantKwest, Inc. v. Matal, No. 2016-1794 (Fed. Cir. June 23, 2017), the Federal Circuit reversed the district court’s denial of the USPTO’s motion for attorneys’ fees, holding that the “expenses” authorized under 35 U.S.C. §…more
 /  Intellectual Property, Science, Computers, & Technology

The Federal Circuit IP Blog Embarks on “The Terrible Twos” and Finds Patent Law Posts More Popular than Procedural Ones

Federal Circuit Elaborates on § 101 Analysis Under Step Two of the Alice Test – Section 101 remains a hot topic, specifically as the Federal Circuit finds more claims directed toward computer technology patent-eligible subject…more
 /  Intellectual Property, Science, Computers, & Technology

District Court’s Remand of Case Involving Patent Counterclaims to State Court Is Not Reviewable by Federal Circuit

In Preston v. Nagel, No. 16-1524 (Fed. Cir. Jun. 1, 2017), the Federal Circuit dismissed Plaintiffs’ appeal of a district court’s decision to remand a case involving patent counterclaims to state court because 28 U.S.C. §…more
 /  Intellectual Property, Science, Computers, & Technology

Lack of Jurisdiction Flatlines Pulse’s Appeal

The Federal Circuit in Halo Electronics, Inc. v. Pulse Electronics, Inc., No. 16-2006 (May 26, 2017) held that it lacked jurisdiction under 28 U.S.C. §§ 1295(a)(1) and 1292(c)(2) to hear an appeal from a district court’s order…more
 /  Civil Procedure, Intellectual Property, Science, Computers, & Technology

Potential Implications of Supreme Court’s Patent Exhaustion Decision Leaves Uncertainty for Patent Owners

In Impression Products v. Lexmark International, No. 15-1189 (S. Ct. May 30, 2017), the Supreme Court reversed the Federal Circuit’s en banc decision that patent owners may enforce post-sale restrictions that are clearly…more
 /  Civil Procedure, Commercial Law & Contracts, Intellectual Property

Spotlight on Upcoming Oral Arguments – June 2017

In this appeal from the PTAB, the Federal Circuit will address whether the Board exceeded its authority in an inter partes review by sua sponte raising a conception/lack of inurement defense on behalf of Petitioner HTC. Patent…more
 /  Intellectual Property, Science, Computers, & Technology

SAS Institute Inc. v. Lee : For the Love of Administrative Efficiency

On the same day the Supreme Court issued its much-anticipated decision in TC Heartland v. Kraft, the Court also granted a petition for writ of certiorari in SAS Institute Inc. v. Lee. The question presented in that petition is…more
 /  Administrative Law, Intellectual Property

The Hague Service Convention Does Not Prohibit Service of Process by Mail

The Supreme Court held in Water Splash, Inc. v. Menon, No. 16–254 (May 22, 2017), that the Hague Service Convention allows service of process by mail under Article 10(a), when two conditions are met: first, the receiving state…more
 /  Civil Procedure, International Law & Trade

TC Heartland: Supreme Court Makes Venue Shopping More Difficult for Patent Trolls

In the highly anticipated case on patent-venue shopping, TC Heartland LLC v. Kraft Foods Group Brands LLC, No. 16-341 (S. Ct. May 22, 2017), the Supreme Court reversed and remanded the decision of the Federal Circuit, putting a…more
 /  Business Organizations, Civil Procedure, Intellectual Property, Science, Computers, & Technology

Inter Partes Reexamination May Proceed Even If The Requester Has a Change-of-Heart

In In re AT&T Intellectual Property II, LP, No. 16-1830 (Fed. Cir. May 10, 2017), the Federal Circuit held that the Board did not exceed its statutory authority when instituting an inter partes reexamination because a request…more
 /  Intellectual Property

Patent Owner’s Statements in IPR May Constitute a “Disclaimer” of Claim Scope in Litigation

In Aylus Networks, Inc. v. Apple Inc., No. 16-1599 (Fed. Cir. May 11, 2017), the Federal Circuit held that statements made by a patent owner during an IPR proceeding, whether before or after an institution decision, can be…more
 /  Intellectual Property, Science, Computers, & Technology

Spotlight on Upcoming Oral Arguments – May 2017

Intervet v. E.I. DuPont de Nemours, No. 16-2131, Courtroom 402 - In this appeal, the Federal Circuit has been asked to determine whether the AIA eliminated district court review of post-AIA interference decisions, and if…more
 /  Intellectual Property, Science, Computers, & Technology

Different Burdens of Proof and Different Records Allowed Different Conclusions on Validity by the PTAB and District Court

In Novartis AG v. Noven Pharmaceuticals Inc., Nos. 16-1678, -1679 (Fed. Cir. Apr. 4, 2017), the Federal Circuit affirmed the PTAB’s decisions finding obvious certain patents that were previously found nonobvious in district…more
 /  Intellectual Property
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