Jones Day Talks: Women in IP: The Supreme Court's "Copyright Day"
This case addresses whether attorney’s fees are warranted due to an inequitable conduct and conflict of interest defense. Background - UCANN filed suit in the District of Colorado in July 2018, accusing Pure Hemp of...more
In 2018, United Cannabis Corporation (“UCANN”) sued Pure Hemp Collective (“Pure Hemp”) for infringement of U.S. Patent No. 9,730,911 (the “‘911 patent”), entitled “Cannabis Extracts and Methods of Preparing and Using the...more
The Patent Act provides that “[t]he court in exceptional cases may award reasonable attorney fees to the prevailing party.” 35 U.S.C. § 285. In a recent denial of a motion for attorney fees pursuant to § 285, an Ohio...more
The US Court of Appeals for the Federal Circuit updated its earlier opinion to remove language ascribing motive to a prolific inventor’s actions before the US Patent & Trademark Office (PTO). Hyatt v. Hirshfeld, Case Nos....more
Since the Supreme Court’s 2014 decision in Octane Fitness, LLC v. ICON Health & Fitness, Inc., district courts have had expanded discretion to award prevailing party attorney’s fees in “exceptional cases” under the Patent...more
In Hytera Communications Corp. Ltd. v. Motorola Solutions, Inc., 1-17-cv-01794 (NDOH 2021-04-29, Order) (Donald C. Nugent), the District Court denied defendant’s motion for attorney fees under 35 U.S.C. § 285, determining...more
By Memorandum Opinion entered by The Honorable Maryellen Noreika in Mixing & Mass Transfer Technologies, LLC v. SPX Corporation et al., Civil Action No. 19-529-MN (D.Del. November 4, 2020), the Court denied the SPX...more
Last week, the Federal Circuit, in a precedential decision, reinforced that an accused infringer can be a “prevailing party” for the purposes of seeking attorneys’ fees under 35 U.S.C. § 285 when it successfully invalidates...more
A defendant facing a newly filed lawsuit has options when deciding how to respond to the complaint. Some responses automatically excuse the defendant from answering the complaint temporarily (e.g., a motion to dismiss under...more
In her September 2018 summary judgment decision, U.S. District Judge Alison J. Nathan (S.D.N.Y.) found that one of seven patents asserted by Plaintiff Seoul Viosys Co. ("SVC") was invalid, and that SVC was not entitled to a...more
PATENT CASE OF THE WEEK - HZNP Medicines LLC v. Actavis Laboratories UT, Inc., Appeal Nos. 2017-2149, et al. (Fed. Cir. Oct. 10, 2019) - In a lengthy decision following a bench trial, the Court addressed a matter of...more
Inter partes review (“IPR”) proceedings often arise in the context of high-stakes patent infringement litigation, and district courts frequently stay litigation pending parallel IPRs, which may fully resolve a...more
The federal patent laws provide for an award of attorneys’ fees to the prevailing party in exceptional patent infringement cases. 35 U.S.C. §285. An exceptional case is determined based on the totality of the circumstances....more
On March 25, 2018, the District Court in Nichia Corporation v. VIZIO, Inc., Case No. 8-16-cv-00545 (CACD 2019-03-25, Order), granted defendant’s motion to preclude plaintiff’s damages expert from testifying that plaintiff...more
On Monday, the Supreme Court of the United States granted certiorari in Iancu v. NantKwest to resolve a circuit split concerning “expenses” a patent applicant must pay when challenging the United States Patent and Trademark...more
Among the more interesting EDTX/NDTX opinions last month was a decision by Magistrate Judge Payne regarding §285 attorneys’ fees. As a reminder, 35 U.S.C. §285 provides that, in an action for patent infringement, “[a] court...more
Federal Circuit Summaries - Before PROST, Wallach, and Taranto. Appeal from the Southern District of Indiana. Summary: In determining whether a party’s actions were “exceptional” under Octane Fitness, the District...more
PATENT CASE OF THE WEEK - Droplets, Inc. v. E*TRADE Bank., Appeal No. 2016-2504 (Fed. Cir. 2018)?- In an appeal from an inter partes review, the Federal Circuit affirmed a decision by the PTAB invalidating a patent...more
By Memorandum Order entered by The Honorable Leonard P. Stark in Reckitt Benckiser LLC v. Aurobindo Pharma Limited et al., Civil Action No. 14-1203-LP (D.Del. October 16, 2017), the Court denied Defendants motion for...more
In the 2014 case of Octane Fitness, LLC v. Icon Health & Fitness, Inc. (and a companion case), the Supreme Court articulated a standard for courts to use when deciding whether to award attorneys’ fees in patent cases. As we...more
Defend Trade Secrets Act of 2016: An Overview - Why it matters: The Defend Trade Secrets Act of 2016 (DTSA) was signed into law on May 11, 2016 and gives trade secret owners a federal cause of action for injunctive...more
In most litigation, each party pays its own attorney fees and costs, regardless of the outcome of the case. The Patent Act of 1952, however, allowed for an award of fees to the prevailing party in patent litigation in...more
On February 5, 2015, Rep. Robert Goodlatte (R-VA) introduced H.R. 9, entitled the “Innovation Act.” Among other things, the bill would direct courts to award attorneys’ fees and litigation-related expenses to prevailing...more
SSL Services, LLC v. Citrix - The U.S. Court of Appeals for the Federal Circuit, in an opinion that broached issues of claim construction, non-infringement, willful infringement, invalidity, the legal implications of a...more