Polsinelli Podcasts - Hedge Funds Now Using IPR Challenges
Polsinelli Podcasts - Hear How the SCOTUS Ruling May Impact Patent-Eligible Subject Matter for Software
Is the Patent Litigation Boom Coming to an End?
Intellectual Property Law Issues for Health Care Providers
IP|Trend: Inter Partes Review: What to Consider When Filing Your Petition
Inter-Partes Review of Patents: The Case So Far (CLE)
IP|Trend: New Era in Protection of Software by Intellectual Property Law?
Inter Partes Review: Validity Before the PTAB
IP|Trend: Discovering Source Code
Ropes & Gray: Advantages of the Patent Trial and Appeal Board
Post-Grant Insights: The Significance of a Three-Judge Panel
IP|Trend: The Importance of Consumer Surveys in Patent Litigation
Post-Grant Insights: The Need for Seamless Coordination of District Court & PTAB Litigation
IP|Trend: Inter Partes Review: Is it Litigation or Something Else?
Post-Grant Insights: The Preparation and Pace of the PTAB
Controlling the Cost of Patent Litigation
Post-Grant Insights: The Impact of PTAB Appeals on the Federal Circuit
Post-Grant Insights: Key Considerations in PTAB Oral Hearings
Post-Grant Insights: What claims to include in your PTAB petition
What are the Implications of Alice v. CLS?
Fifty years ago, the Supreme Court held in Brulotte v. Thys Co., 379 U.S. 29 (1964) that a license agreement requiring royalty payments for use of a patented invention after expiration of the patent term is unlawful per se. ...more
Teva Pharmaceuticals USA, Inc. v. Sandoz, Inc.
Patent – Decided: January 20, 2015 -
Holding: When reviewing a district court’s resolution of subsidiary factual matters made during its construction of a patent claim,...more
On Friday the Solicitor General filed an amicus brief in Kimble v. Marvel Enterprises. As we previously noted, in Kimble, the Supreme Court will consider whether to overturn Brulotte v. Thys Co., a 50-year-old precedent...more
Patent exhaustion, or "the first sale doctrine," requires that the initial authorized sale of a patented item by a patent owner or licensee, terminates their ability to subsequently use their patent rights against that item....more
The assertion of standard essential patents (SEPs) by patent-holders has raised patent, contract, and competition issues in jurisdictions around the world. One SEP holder, Qualcomm, has faced particular scrutiny with respect...more
The District Court of Colorado recently denied Defendant Garmin International’s motions to dismiss and to stay pending arbitration, concluding that Plaintiff MSPBO was not bound by an arbitration agreement to which it was not...more
Kimble v. Marvel Enterprises -
The U.S. Court of Appeals for the Ninth Circuit, in affirming a district court decision that toy maker Marvel was not required to make payments after the expiration of a patent,...more
Patents claiming inventions which must be used to comply with certain technical standards (for example, the Wi-Fi standard or standards for 3G) are referred to as standards-essential patents or “SEPs”. There has,...more
KIMBLE V. MARVEL ENTERPRISES, INC.
Patent Licensing - Cert. Pending -
Issue: Whether the Supreme Court should overrule Brulotte v. Thys Co., which held “a patentee’s use of a royalty agreement that projects...more
Fifty years ago, in Brulotte v. Thys Co., the U.S. Supreme Court held that the collection of royalties after a patent’s expiration constitutes per se patent misuse. Although criticized by scholars, antitrust agencies, and the...more
Endo Pharmaceuticals, Inc. v. Roxane Laboratories, Inc.
Case Number: 1:13-cv-03288-TPG -
Defendant Roxane Laboratories, Inc. (“Roxane”) was sued by Endo Pharmaceuticals, Inc. (“Endo”) when Endo learned that...more
On average, the U.S. Supreme Court historically hears fewer than one patent case each term. For example, in the 14 years between 1982 and 1995, the Court decided only five patent cases. In the seven years between 1995 and...more
The U.S. Supreme Court Friday agreed to revisit a longstanding precedent that bars patent owners from collecting royalties after their patents have expired, even if those post-expiration payments represent compensation for...more
On Friday, December 12, 2014, the U.S. Supreme Court granted certiorari on Kimble v. Marvel Enterprises, Inc., No. 13-720, opening the possibility that the Supreme Court will overturn Brulotte v. Thys Co., 379 U.S. 29 (1964),...more
The Grigoleit Co. v. Whirlpool Corp. -
Addressing a lower court’s reasonable royalty determination that chose not to rely on the Georgia Pacific factors, the U.S. Court of Appeals for the Seventh Circuit recently...more
BNB Health Grades, Inc. ("Health Grades") filed a patent infringement action against MDx Medical, Inc., d/b/a Vitals.com ("MDx"). During the litigation, Health Grades identified licensing agreements and associated systems...more
Federal Circuit: Licensor Has No Standing to Sue Where it Has Transferred “All Substantial Rights” to Its Licensee -
The Federal Circuit affirmed a decision by Judge Schneider in the Eastern District of Texas to...more
Determining inventorship is answering the question: who contributed enough to an invention to be named as an “inventor” on the patent application? It’s critical, as reviewed by my colleague Shohini Bagchee in her article...more
A recent decline in patent litigation has been attributed to the evolving patent eligibility standard, as well as to an increase in post-grant review proceedings at the Patent Office, now reported to be “the second-biggest...more
Finjan, Inc. v. Blue Coast Sys., 2014 WL 5321095 (N.D. Cal. Oct. 17, 2014).
In this patent infringement case, the plaintiff company moved the court to compel the defendant to produce archival emails from eight...more
Earlier this year, I wrote about efforts to reform the patent system to curtail abuses by “patent trolls.” Patent trolls do not manufacture anything. Rather, they often buy up patents and then bring lawsuits against...more
Plant patents are often overshadowed by their more well-known utility and design patent counterparts under U.S. law. Yet, with the increasing branding and differentiation of agricultural commodities, plant patent rights...more
It is sometimes tempting when entering into a joint research agreement to agree that both parties will jointly own any patent rights arising from the collaboration. However, unless the rights of each party are clearly set out...more
Parties regularly opt to keep terms, conditions and licensing agreements confidential when settling patent infringement disputes. Often, patentees do not want the license terms to serve as precedent in other assertions of the...more
For a drug discovery start-up, patent protection of the intellectual property underlying the commercialization pursuit is critically important. If the company is a university or research institution spin-out that obtained...more
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