The District of Delaware granted-in-part Shopify’s motion for judgment as a matter of law, or alternatively a new trial, citing gaps in the evidentiary record resulting in an insufficient basis for the jury verdict of...more
In a highly anticipated decision, the en banc Federal Circuit overruled the longstanding Rosen-Durling test for assessing obviousness of design patents. The challenged framework, derived from two cases, In re Rosen, 673 F.2d...more
In a patent infringement case, the district court granted plaintiff’s motion to strike portions of defendant’s technical expert’s rebuttal report on the basis that defendant failed to timely disclose non-infringing...more
A district court recently precluded a patent attorney from testifying as an expert in a patent infringement lawsuit where the proposed expert lacked the requisite technical expertise to assist the trier of fact in...more
In response to the recent concentration of patent cases filed in a single court in Waco, Texas, all new patent cases filed in the Western District of Texas’s Waco Division will be distributed among the district’s various...more
The USPTO recently issued new guidance on how the Patent Trial and Appeal Board (PTAB) will apply Apple Inc. v. Fintiv Inc., a 2020 precedential decision which laid out considerations for denying institution of a post-grant...more
Key Points -
On June 21, 2022, USPTO Director Katherine K. Vidal issued a memorandum titled “Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings With Parallel District Court Litigation.”
Under...more
In the weeks preceding a recent Hatch-Waxman bench trial, a district court excluded portions of an expert’s opinion on obviousness that addressed internal documents and inventor testimony concerning the “inventors’ path” to...more
Administrative Law Judge (ALJ) Cameron Elliot recently found no violation of Section 337 in part because the claims recite patent-ineligible subject matter under 35 U.S.C. § 101. The patents are directed to polycrystalline...more
The United States District Court for the District of Delaware recently held that claims covering methods for evaluating organ transplant rejection are invalid under 35 U.S.C. § 101.
The patents at issue disclose methods...more
10/21/2021
/ Extrinsic Evidence ,
Patent Applications ,
Patent Infringement ,
Patent Invalidity ,
Patent Litigation ,
Patent-Eligible Subject Matter ,
Patents ,
Section 101 ,
Section 112 ,
Summary Judgment ,
USPTO
Inter partes review (IPR) proceedings can give rise to statutory and collateral estoppel. But these two bases for estoppel attach at different times, which can lead to asymmetrical outcomes in related district court...more
On January 28, 2020, the Northern District of Alabama granted-in-part a defendant’s motion for summary judgment, holding that the plaintiff could not recover damages based on a theory of lost profits because the plaintiff...more
A Central District of California judge recently granted summary judgment of no obviousness based on inter partes review (IPR) estoppel because the only prior art references used to challenge patent validity could have been...more
1/31/2020
/ Estoppel ,
Final Written Decisions ,
Inter Partes Review (IPR) Proceeding ,
Obviousness ,
Patent Infringement ,
Patent Litigation ,
Patent Validity ,
Patents ,
Printed Publications ,
Prior Art ,
Summary Judgment
Chief Judge Rodney Gilstrap of the Eastern District of Texas issued a decision addressing motions to stay a patent infringement case under the “customer-suit exception” to the general first-to-file rule. Judge Gilstrap...more
In Sound View Innovations, LLC v. Hulu, LLC, a district court denied Hulu’s motion to quash a subpoena directed to its trial-supervising in-house attorney. The court agreed that Sound View may question Hulu’s attorney live,...more
12/27/2019
/ Compelled Testimony ,
Corporate Counsel ,
Depositions ,
Hulu ,
Motions to Quash ,
Non-Infringing Alternatives (NIAs) ,
Outside Counsel ,
Patent Infringement ,
Patent Litigation ,
Patents ,
Subpoenas ,
Trial Preparation ,
Unduly Prejudicial ,
Unfair Prejudice ,
Willful Infringement ,
Witnesses
The Federal Circuit vacated a PTAB decision invalidating all challenged claims of U.S. Patent No. 8,908,842 (’842 Patent) and ordered the PTAB to reconsider whether the patent should have been disqualified from covered...more
10/17/2019
/ America Invents Act ,
Claim Construction ,
Claim Limitations ,
Covered Business Method Patents ,
Covered Business Method Proceedings ,
Patent Trial and Appeal Board ,
Patent-Eligible Subject Matter ,
Patents ,
Prior Art ,
Remand ,
Section 101 ,
Section 103 ,
Technology
The Federal Circuit affirmed a district court decision barring Amgen from asserting an infringement claim under the doctrine of equivalents against Coherus Biosciences because Amgen disclaimed all combinations not identified...more
The Federal Circuit vacated and remanded a decision by the District Court for the Northern District of California when it failed to consider joining the patent owner before dismissing a case in which the licensee possessed...more
6/25/2019
/ Article III ,
Dismissals ,
Exclusive Licenses ,
FRCP 19 ,
Joinder ,
Patent Infringement ,
Patent Litigation ,
Patent Ownership ,
Patents ,
Precedential Opinion ,
Remand ,
Standing ,
Subject Matter Jurisdiction ,
Transfer of Rights ,
Vacated
The Federal Circuit recently upheld a district court’s decision to tax a patent infringement plaintiff with its opponent’s attorneys’ fees based on an inadequate presuit investigation into infringement, even though the patent...more
In Limestone Memory Systems LLC v. Micron Technology, Inc. et al., the Discovery Master ruled that, under 9th Circuit law, pre-suit, patent analysis documents qualified for immunity from discovery under the work product...more
4/18/2019
/ Acquisitions ,
Attorney-Client Privilege ,
Discovery ,
Discovery Disputes ,
Document Productions ,
Dual Purpose ,
Immunity ,
Intellectual Property Protection ,
Litigation Strategies ,
Patent Litigation ,
Patents ,
Pre-Suit Investigation ,
Supplemental Evidence ,
Work-Product Doctrine
A district court in the Western District of Washington denied Adaptics Ltd.’s (“Adaptics”) motion for summary judgment of patent exhaustion, which was based on a theory that an authorized sale by a downstream reseller can...more
4/15/2019
/ Downstream Agreements ,
Manufacturers ,
Motion for Summary Judgment ,
Patent Exhaustion ,
Patent Infringement ,
Patent Litigation ,
Patents ,
Resales Agreements ,
Retailers ,
Settlement Agreements ,
Stream of Commerce
On January 3, 2019, following a jury’s award of $145 million in damages to Wi-LAN, the Southern District of California granted Apple’s motion for a conditional order of remittitur to a $10 million damages award. In granting...more
1/15/2019
/ Apple ,
Apportionment ,
Damages ,
Expert Testimony ,
iPhone ,
Jury Verdicts ,
Method Claims ,
Patent Litigation ,
Patents ,
Remittitur ,
Technology Sector
The Federal Circuit recently affirmed a decision from the District Court for the Northern District of California granting appellee Cepheid’s summary judgment motion against appellant Roche Molecular Systems (“Roche”) and held...more
On September 10, 2018, the Federal Circuit affirmed a decision by the Patent Trial and Appeal Board (PTAB) determining that there was no interference in fact between the University of California’s (“UC”) U.S. Patent...more
9/24/2018
/ Appeals ,
CRISPR ,
Interference Claims ,
Life Sciences ,
Nonobvious ,
Patent Applications ,
Patent Litigation ,
Patent Ownership ,
Patent Trial and Appeal Board ,
Patents ,
Prior Art ,
Reaffirmation ,
Standard of Review ,
Substantial Evidence Standard ,
University of California
In an order issued on May 4, 2018, a Western District of Wisconsin Court addressed venue issues relating to subsidiaries of the same parent. Plaintiff Unity Opto Technology Co. (“Unity”) sued defendants Lowe’s Home Centers,...more