You May Be Exhausted Over Standard Essential Patents (And Not Even Know It)
In interpreting a patent license agreement originally drafted in the era of third generation (3G) cellular networks, the US Court of Appeals for the Federal Circuit found that the license agreement covered subsequent wireless...more
Broad Claim Language and Unpredictability in the Art Lead to Non-Enablement - In Enzo Life Sciences, Inc. v. Roche Molecular Systems, Inc., Appeal Nos. 2017-2498, -2499, -2545, -2546, broad patent claims were invalid as...more
• In a relatively rare opinion regarding design patents, the U.S. Court of Appeals for the Federal Circuit weighed in recently on the requirements for design patents in its Automotive Body Parts Association v. Ford Global...more
On July 23, 2019, the U.S. Court of Appeals for the Federal Circuit released its decision affirming summary judgment that the asserted design patents were not invalid for non-ornamentality under 35 U.S.C. § 171, and rejecting...more
The Federal Circuit has ruled that neither the exhaustion nor permissible repair doctrines allow manufacture of new replacement components covered by design patents. The Automotive Body Parts Association (ABPA) sued Ford...more
The Federal Circuit issued a precedential opinion on July 23, 2019, affirming the validity of two design patents related to the Ford F-150 hood and headlamp and sweepingly rejecting arguments that the patents on automotive...more
Arbitration - Waymo v. Uber Technologies, 870 F.3d 1342 (Fed. Cir. 2017) - Waymo sued Uber and others for trade secret misappropriation and patent infringement. Uber contends that Waymo should be compelled to...more
Inter Partes Reexamination Estoppel Attaches On Claim-by-Claim Basis for New Requests and Pending Proceedings - In In re Affinity Labs Of Texas, LLC, Appeal Nos. 2016-1092, 2016-1172, the Federal Circuit held that the...more
Manufacturers have long used patents, licenses and litigation to deter competitive products and restrict secondary markets in their products. The U.S. Supreme Court just dealt these practices a severe blow, confirming that a...more
On May 30, 2017, the U.S. Supreme Court held in Impression Products, Inc. v. Lexmark International, Inc. that “patent exhaustion is uniform and automatic” and that patent exhaustion applies, both domestically (in an 8-0...more
Update to TC Heartland LLC v. Kraft Foods Group Brands LLC, Case No. 16-341 (May 22, 2017) - In an 8-0 opinion written by Justice Thomas (Justice Gorsuch did not participate), the Supreme Court rules that a defendant...more
The Supreme Court of the United States granted a petition for a writ of certiorari appealing a US Court of Appeals for the Federal Circuit en banc decision holding that a patent owner did not exhaust its US patent rights when...more
The en banc U. S. Court of Appeals for the Federal Circuit issued its long awaited (10-2) decision, reaffirming the court’s prior rulings in Mallinckrodt and Jazz Photo that a seller can use its patent rights to block resale...more
In Lexmark International, Inc. v. Impression Products, Inc., the en banc Federal Circuit held that (1) the sale of an article under clearly communicated and otherwise lawful restrictions on use and resale avoids patent...more
Addressing whether an accused defendant infringed patents through the distribution of its software, the U.S. Court of Appeals for the Federal Circuit upheld the district court’s summary judgment that the defendant did not...more
The U.S. Court of Appeals for the Federal Circuit has sua sponte ordered an en banc hearing to consider the issue of international patent exhaustion. Lexmark International, Inc. v. Impression Products, Inc., Case No. 14-1617...more
Patent Office’s Decision To Institute IPR Not Reviewable - In IN RE CUOZZO SPEED TECHNOLOGIES, LLC, the Federal Circuit held it lacks jurisdiction to review the Patent Office’s decision to institute inter partes review....more
In Helferich Patent Licensing LLC v. New York Times Co., 2015 U.S. App. LEXIS 2047 (Fed. Cir. Feb. 10, 2015), the Court of Appeals for the Federal Circuit ("CAFC") concluded that the judicially-created doctrine of patent...more