Co-authored by Sam Cohen, Summer Associate 2024. On May 29, 2024, the Western District of Oklahoma in SIPCO, LLC v. JASCO Prods. Co. dismissed the plaintiff SIPCO’s patent infringement claims against defendant JASCO because...more
To date, the Unified Patent Court (UPC) has not held a trial involving standard-essential patents (SEPs). However, the new forum’s Mannheim Local Division has now authored its first SEP-specific order in a case between...more
On April 17, 2024, a second Texas jury assessed damages of $142 million against Samsung, more than doubling a previous jury award of $67.5 in a protracted standard essential patent (SEP) litigation brought by G+...more
Implementers of standard essential patents (SEPs) continue to hold out in patent licensing discussions with SEP owners, including pursuing the cynical strategy of seeking anti-suit injunctions (ASIs). This failed strategy is...more
Innovators have long insisted that licensing discussions over standard essential patents (SEP) are one sided: implementers often “hold out” in bad faith by delaying discussions for as long as possible. The theory driving this...more
In two recent decisions, both issued on February 4, 2022, the United States Court of Appeals for the Federal Circuit (the “CAFC”) erased two huge patent damages awards because the underlying expert opinion on damages was...more
Entities with patent-related relationships with state universities scored a victory under the rarely implicated (at least for patent practitioners) doctrine of sovereign immunity. For patent holders, sovereign immunity comes...more
7/29/2020
/ Eleventh Amendment ,
En Banc Review ,
Federal Rule 12(b)(1) ,
FRCP 19(a) ,
IP License ,
Joinder ,
License Agreements ,
Patent Infringement ,
Patent Litigation ,
Patents ,
Sovereign Immunity ,
State Universities
A recent Memorandum Order from the District of Delaware edified the protections courts tend to give discovery concerning litigation funding. Because Defendant AT&T failed to carry its burden of demonstrating the specific...more
When licensing discussions with an intransigent implementer break down, SEP owners face a difficult question: what remedies are available (injunctive relief or damages) in each U.S. court (International Trade Commission and...more
12/24/2019
/ Administrative Law Judge (ALJ) ,
Department of Justice (DOJ) ,
Federal Trade Commission (FTC) ,
FRAND ,
Injunctive Relief ,
International Trade Commission (ITC) ,
Joint Policy Statements ,
NIST ,
Patent Infringement ,
Patents ,
Section 337 ,
Standard Essential Patents ,
USPTO ,
USTR
On December 5, 2019, Judge David C. Godbey of the Northern District of Texas denied the defendant Diebold Nixdorf, Inc.’s (“Diebold”) motion to dismiss under Rule 12(b)(6), in Nautilus Hyosung Inc. v. Diebold, Inc. et al.,...more
12/19/2019
/ Administrative Law Judge (ALJ) ,
Amended Complaints ,
Appeals ,
Cease and Desist Orders ,
Claim Construction ,
Exclusion Orders ,
Federal Rule 12(b)(6) ,
International Trade Commission (ITC) ,
Means-Plus-Function ,
Motion to Dismiss ,
Patent Infringement ,
Patent Invalidity ,
Patent Litigation ,
Patents ,
Section 337
In a recent decision clarifying the legal standards of the International Trade Commission’s domestic industry requirement, the Commission has upheld, with modified reasoning, Chief Administrative Law Judge Bullock’s initial...more
11/11/2019
/ Administrative Law Judge (ALJ) ,
Domestic Industry Requirement ,
Initial Determination (ID) ,
Intellectual Property Protection ,
International Trade Commission (ITC) ,
Multinationals ,
Patent Infringement ,
Patent Litigation ,
Patents ,
Section 337 ,
Threshold Requirements
A recent decision from the Northern District of New York provides a detailed outline for analyzing venue in patent infringement cases, and may provide facts that companies with equipment installed in other districts should...more
Recently, in a patent infringement action pending in the Eastern District of Michigan, Webasto Thermo & Comfort N. Am., Inc. v. BesTop, Inc., No. 2:16-cv-13456, Order No. 209 (E.D. Mich. May 20, 2019) (Borman, J.), the court...more
On April 25, 2019, in Int’l Designs Corp., LLC, et. al. v. Hair Art Int’l, Inc., Judge George H. Wu in the Central District of California denied Hair Art’s motion for attorneys’ fees under 35 U.S.C. § 285. Judge Wu concluded...more
5/9/2019
/ Attorney's Fees ,
Claim Construction ,
Exceptional Case ,
Frivolous Lawsuits ,
Octane Fitness v. ICON ,
Patent Infringement ,
Patent Litigation ,
Patents ,
Section 285 ,
Summary Judgment ,
Totality of Circumstances Test
A recent order from the District of Delaware in Evolved Wireless, LLC v. Apple Inc., No. 15-00542 (“Evolved Wireless”) provides interesting guidance regarding the use of future sales in calculating lump-sum damages. This...more
4/1/2019
/ Admissibility ,
Calculation of Damages ,
Cross Examination ,
Damages ,
Evidence ,
Jury Instructions ,
Lump Sum Payments ,
Patent Assertion Entities ,
Patent Infringement ,
Patent Royalties ,
Patents
A recent order from the Northern District of California in AU Optronics Corporation America v. Vista Peak Ventures, LLC, 4:18-cv-04638 (CAND 2019-02-19) (“AU Optronics”), provides further guidance for patent venue analysis...more
The Court of Appeals for the Federal Circuit (CAFC) recently issued a precedential opinion finding that a lower court had improperly incorporated an embodiment from the specification of the asserted patents into the claims....more
A recent opinion from the Northern District of Texas is a reminder to all patent practitioners to heed pleading standards when drafting a complaint for patent infringement. In Lexington Luminance LLC v. Service Lighting and...more
In an Initial Determination finding that Fujifilm violated Section 337 by infringing two patents held by Sony, ALJ Cheney found another patent invalid after ruling that inter partes review (“IPR”) estoppel does not apply to...more
In our continuing post-TC Heartland coverage, Judge Rodney Gilstrap of the Eastern District of Texas recently issued an interesting decision regarding the venue analysis for car companies selling into a particular...more
9/19/2018
/ Automotive Industry ,
BMW ,
Car Dealerships ,
Foreign Defendants ,
Improper Venue ,
Intellectual Property Protection ,
Motion to Dismiss ,
Patent Infringement ,
Patent Litigation ,
Patents ,
Principal Place of Business ,
Venue
A recent decision by the International Trade Commission (“ITC” or the “Commission”) improves intellectual property holders’ ability to prove that they have a “domestic industry” and obtain relief for infringement from the...more
7/17/2018
/ Administrative Law Judge (ALJ) ,
Capital Expenditures ,
Capital Investments ,
Domestic Industry Requirement ,
International Trade Commission (ITC) ,
Manufacturers ,
Manufacturing Equipment ,
Patent Infringement ,
Patents ,
Research and Development ,
Section 337
According to the Eastern District of Texas, no. In our continued post-TC Heartland coverage, for the purpose of establishing venue, courts typically will decline to treat the place of business of one corporation as the place...more
A recent opinion from the District of New Jersey is a cautionary tale for patent practitioners regarding conduct during patent prosecution that can be framed as bad faith. This can become an expensive misstep during...more
6/6/2018
/ Attorney's Fees ,
Bad Faith ,
Exceptional Case ,
Inter Partes Review (IPR) Proceeding ,
Patent Infringement ,
Patent Invalidity ,
Patent Ownership ,
Patent Prosecution ,
Patent Validity ,
Patents ,
Prior Art ,
Section 285 ,
USPTO
A recent order from the Northern District of California provides patent practitioners interesting guidance regarding conduct during licensing discussions—and may be a cautionary tale to potential licensors engaged in...more
In our continuing coverage of the post-TC Heartland landscape, the Federal Circuit recently clarified that venue is proper in only one district per state in In re BigCommerce, Inc., 2018-122 (Fed. Cir. May 15, 2018) (slip...more
5/24/2018
/ Forum Shopping ,
Multidistrict Litigation ,
Patent Infringement ,
Patent Litigation ,
Patents ,
Personal Jurisdiction ,
Principal Place of Business ,
SCOTUS ,
State of Incorporation ,
TC Heartland LLC v Kraft Foods ,
Venue