News & Analysis as of

District Court Action Dismissed Without Prejudice Does Not Bar Filing of IPR Petition - Nautique Boat Co., Inc. v. Malibu Boats,...

Addressing whether a district court action dismissed without prejudice bars a filing of an inter partes review (IPR) petition under 35 U.S.C. § 315(a)(1), the U.S. Patent and Trademark Office’s (PTO) Patent Trial and Appeal...more

Prior Declaratory Judgment Action Fatal to CBM Petitioner - GTNX, Inc. v. INTTRA, Inc.

In a decision bringing four instituted covered business method (CBM) review proceedings to a full stop, the Patent Trial and Appeal board (PTAB or Board) reiterated that a petitioner’s declaratory judgment action filed before...more

Sandoz Inc. v. Amgen Inc.,

Case Name: Sandoz Inc. v. Amgen Inc., No. 2014-1693, 2014 U.S. App. LEXIS 22903 (Fed. Cir. Dec. 5, 2014) (Circuit Judges Dyk, Taranto, and Chen presiding; Opinion by Taranto, J.) (appeal from N.D. Cal, Chesney, J.) (A...more

District Court Grants Stay Before The PTO Institutes An IPR

In MLC Intellectual Property, LLC v. Micron Technology, Inc., Case No. 14-cv-3657 (N.D. Cal.), MLC filed its lawsuit on August 12, 2014, accusing Micron of infringing U.S. Patent No. 5,764,571 ("the '571 patent"). On October...more

Biosimilars Update

Novartis came one step closer to becoming the first company to offer a biosimilar drug for sale in the United States. Last month, an independent panel voted 14-0 to recommend FDA approval of Sandoz’s (Novartis’ generics...more

Protegrity Loses Bid to Centralize in Connecticut Brendan Cox

The Judicial Panel on Multidistrict Litigation ordered nearly twenty patent cases pending across six districts (including Connecticut, Oklahoma, Oregon, Texas, and the Northern and Southern districts of California) and...more

The BPCIA’s framework for patent dispute resolution counsels against the exercise of declaratory judgment jurisdiction

Celltrion Healthcare Co., Ltd. et al. v. Kennedy Trust for Rheumatology Research; Hospira, Inc. v. Janssen Biotech, Inc. et al. Case Number: 1:14-cv-02256; 1:14-cv-07049 On the same day, Judge Crotty granted two...more

Myriad Throws in the Towel

In the aftermath of the Supreme Court's decision in AMP v. Myriad Genetics in 2013, Myriad (paradoxically to those either not paying attention or who over interpreted the scope of the Court's holding in its opinion) filed...more

Challenge to Patent Validity by a Licensee

The United States Supreme Court has issued a decision which some commentators believe may increase the risk that patent licensees will challenge the validity of patents under which they are licensed....more

Intellectual Property 2014 Year In Review

There were a number of notable developments in patent case law in 2014. Key decisions from the Federal Circuit and Supreme Court tackled a variety of key issues, including patent eligibility of software and business methods,...more

Judge Forrest rejects Leveraged Innovations’ second bite at the apple in seeking to enforce its patented technology because of its...

Direxion Shares, ETF Trust v. Leveraged Innovations L.L.C. Case Number: 1:14-cv-01777-KBF - On March 14, 2014, Direxion Shares, ETF Trust (“Direxion”) filed a declaratory judgment action against Leveraged...more

Federal Circuit’s Sandoz v. Amgen Decision Forecloses Early Declaratory Judgment Suits by Biosimilars Applicants

On December 5, in the closely watched Sandoz v. Amgen case, the Federal Circuit held that a biosimilars applicant cannot use the Declaratory Judgment Act to challenge a reference product sponsor's patent prior to filing a...more

Federal Circuit Rules Against Patent Declaratory Judgment Actions Before Biosimilar Application Is Filed

On December 5, 2014, the Federal Circuit issued its opinion in Sandoz Inc. v. Amgen Inc. et al. In a unanimous panel opinion (Judges Dyk, Taranto and Chen), the Court held that clinical trials initiated to support a possible...more

Sandoz Inc. v. Amgen Inc. (Fed. Cir. 2014)

Last year, Sandoz filed a declaratory judgment action against Amgen and Roche related to its etanercept biosimilar drug product, which it developed to compete with Amgen's Enbrel® TNF inhibitor. Specifically, Enbrel® is a...more

Sandoz and Celltrion Decline the Invitation to Dance: Biosimilars Challenge the Applicability of the BPCIA’s Exchange Provisions...

In our blog post of November 18, 2013 (“No Avoiding BPCIA For Biosimilars: No Patent Declaratory Judgment Before Biosimilars Application is Filed”), we discussed the decision of the U.S. District Court for the Northern...more

Court Denies Declaratory Judgment Defendant's Request to Re-Align Parties as Realignment Would Frustrate the Purpose of the...

Plaintiffs filed the declaratory judgment complaint in this patent case after receiving a letter from defendants alleging that Plaintiffs' products infringe two of defendants' patents. Plaintiffs sough declaratory judgment...more

Losing The Home-Team Advantage – The Supreme Court’s Narrowing of the Doctrine of General Personal Jurisdiction and its Impact on...

A recent Supreme Court opinion in a non-patent case, Daimler AG v. Bauman, likely will have a far-reaching impact on the prevalence of patent declaratory judgment actions. In the past, an accused patent infringer often could...more

On Remand, Federal Circuit Comes Around to Supreme Court’s Way of Thinking

Medtronic Inc. v. Boston Scientific Corp. - On a remand from the Supreme Court, the U.S. Court of Appeals for the Federal Circuit, addressing the issue of the sufficiency of infringement evidence, affirmed a district...more

Federal Circuit Review - StoneEagle, Vederi, and Ancora Technologies (April 2014)

Inventor Cannot Use Declaratory Judgment Jurisdiction - In StoneEagle Services, Inc. v. Gillman, Appeal No. 13-1248, the Federal Circuit vacated a declaratory judgment and remanded with instructions to dismiss based on...more

The ‘‘Burden’’ of Patent Infringement: Supreme Court Holds That Burden of Proof Remains With Patentee Even in Declaratory Judgment...

The Supreme Court of the United States has made it clear that the traditional canons of litigation — including those involving jurisdiction and which party bears the burden of proof — hold true in patent cases, even those...more

Pre-Issuance Conduct May Support Declaratory Judgment Jurisdiction

On March 11, 2014, in Danisco US Inc. v. Novozymes A/S, No. 2013-1214 (Fed. Cir.), the Federal Circuit held that pre-issuance conduct can be considered when determining whether a declaratory judgment defendant has instigated...more

The Burden is on You: A Defendant Patent Holder Still Bears the Burden of Proving Infringement in a Declaratory Judgment Action...

For nearly 150 years, it has been established that a patent holder (“patentee”) ordinarily bears the burden of proving infringement. The U.S. Supreme Court’s recent decision in Medtronic v. Mirowski Family Ventures, LLC, 571...more

Unanimous Supreme Court to Federal Circuit: Burden of Proof on Infringement on Patentee, Even in Declaratory Judgment - Medtronic,...

A unanimous Supreme Court of the United States, in a decision authored by Justice Breyer, reversed the U.S. Court of Appeals for the Federal Circuit, holding that the patentee bears the burden of persuasion on the issue of...more

Declaratory Judgment Claimants: Which Products Are You Saying Don’t Infringe?

Declaratory judgment plaintiffs and counterclaimants in patent cases have long been accustomed to filing boilerplate claims that either do not identify an accused technology, or that do so in a cursory manner. Noninfringement...more

Supreme Court Finds Patent Owner Have Burden of Proving Infringement in a Declaratory Judgment Case

The Supreme Court has unanimously ruled that a patent owner always has the burden of proving infringement, even if the case is brought by a licensee asking for a declaration that the licensed patents were not invalid. ...more

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