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This Case Is Both Hot and Exceptional—Attorneys’ Fees and Inequitable Conduct

In a second visit to the US Court of Appeals for the Federal Circuit, after the Court affirmed a finding of unenforceability due to inequitable conduct based on “bad faith” non-disclosure of statutory bar prior sales on the...more

New Perspective on Specific Personal Jurisdiction in Patent DJ Venue

The US Court of Appeals for the Federal Circuit concluded that the minimum contacts or purposeful availment test for specific personal jurisdiction was satisfied where a patent owner sent multiple infringement notice letters...more

The Future of Skinny Labeling in Patent Litigation Will be Reconsidered

The US Court of Appeals for the Federal Circuit has now vacated its prior ruling finding induced infringement based on so-called skinny labeling on a pharmaceutical product. GlaxoSmithKline LLC v. Teva Pharmaceuticals USA...more

Too Early to Hang Up on Click-to-Call

In the wake of its six-week-old decision in Thryv, Inc. v. Click-to-Call Technologies, LP, the Supreme Court of the United States has now granted certiorari in an appeal of another case arising from a Federal Circuit appeal...more

Decisions Applying the § 315(b) Time Bar When Instituting IPR Proceedings Nonappealable

Addressing the scope of review of the PTAB’s application of the one-year time bar of 35 U.S.C. § 315(b) in deciding whether to institute an IPR proceeding, the US Supreme Court held that the PTAB’s application of the time bar...more

Federal Circuit Sides with PTO on Applicant Delay in Patent Term Adjustment

In a case explaining what comprises an “applicant delay” in the context of a patent term adjustment (PTA), the US Court of Appeals for the Federal Circuit sided with the US Patent and Trademark Office (PTO) ruling that the...more

No Motivation to Combine Necessary Where Secondary Reference Only Explains Primary Reference

The US Court of Appeals for the Federal Circuit upheld a Patent Trial and Appeal Board (PTAB) finding of obviousness over a patent owner’s challenge to the “combination” of prior art, explaining that no motivation to combine...more

Cert Alert: Cert Granted to Consider Whether Lost Profit Damages May Include Overseas Activities

The Supreme Court of the United States has agreed to consider whether US patent owners can recoup some profits lost because of infringement that occurs outside of the United States. WesternGeco LLC v. ION Geophysical Corp.,...more

Supreme Court Analyzes Key Provisions of Biologics Price Competition and Innovation Act of 2009

In a unanimous decision, the United States Supreme Court has clarified certain portions of the Biologics Price Competition and Innovation Act of 2009 (BPCIA), concluding (1) that biosimilar makers do not have to wait for...more

US Supreme Court Rules Export of Single Component of Patented Combination Does Not Impose Liability under Section 271(f)(1)

On February 22, 2017, in reversing the decision of the US Court of Appeals for the Federal Circuit, an essentially unanimous US Supreme Court ruled that the “supply of a single component of a multi-component invention for...more

En Banc Federal Circuit to Consider AIA Appeals Based on Time Bar Provision

In a September 2015 panel decision, Achates Reference Publishing v. Apple, the US Court of Appeals for the Federal Circuit ruled that under 35 USC 314(b), decisions of the Patent Trial and Appeal Board (PTAB) finding that an...more

Supreme Court to Consider BPCIA Requirements for Biosimilars

The Supreme Court of the United States has granted certiorari in a case involving the Biologics Price Competition and Innovation Act of 2009 (BPCIA) in the context of a biosimilars dispute. Sandoz, Inc. v. Amgen Inc. and...more

No Place Like Home: Supreme Court to Review Whether § 1400(b) Alone Governs Venue

The Supreme Court of the United States has granted a petition for certiorari to consider whether 28 USC § 1400(b) is the sole and exclusive provision governing venue in patent infringement actions in light of amendments made...more

For Design Patent Damages 'Article of Manufacture’ Not Necessarily Entire End Product

A unanimous US Supreme Court held that for purposes of determining damages for design patent infringement under 35 U.S.C. §289, the relevant “article of manufacture” may include either the end product sold to the consumer or...more

Smartphone Patent War: En Banc Federal Circuit Rebukes Earlier Panel Decision and Reinstates Jury Verdicts for Apple against...

In its October 7 en banc decision in Apple v. Samsung, the US Court of Appeals for the Federal Circuit, without benefit of en banc briefing, issued an unusual opinion overturning a panel decision for the purpose of...more

Korea Quarterly - August 2016

Controlling Costs in International Arbitration - Arbitration is an efficient means for resolving business disputes because it offers more flexibility than court proceedings and enables the parties to choose arbitrators...more

Absent Contemporaneous Objection to Order for Single Trial on Subset of Claims, No Due Process Violation - Nuance Communications...

The US Court of Appeals for the Federal Circuit ruled that a patent owner’s due process rights were not violated when a district court found that the defendant did not infringe all of the originally asserted patents, even...more

Federal Circuit Rules Its Precedents on Domestic and International Patent Exhaustion Principles Not Changed by Supreme Court Cases

Lexmark International, Inc., v. Impression Products, Inc., Case Nos. 14-1617, -1619 (Fed Cir, Feb. 12, 2016) (en banc) (Taranto, J., joined by Prost, CJ and Newman, Lourie, Moore, O’Malley, Reyna, Wallach, Chen and Stoll, JJ)...more

PTAB Denies Institution Where Claim Indefiniteness Precludes Application of Prior Art to the Claims

The Patent Trial and Appeal Board (PTAB or Board) denied institution of inter partes review (IPR) after determining that the challenged claims were indefinite and that therefore the Board could not apply the prior art to...more

Supreme Court to Review Federal Circuit Standard for Treble Damage Awards Under § 284 - Halo Electronics, Inc. v. Pulse...

Taking its first IP cases of the current session, the Supreme Court has granted certiorari in two § 284 enhanced fee award patent cases: Halo Electronics, Inc. v. Pulse Electronics, Inc., S.Ct. No. 14-1513 (Oct. 19, 2015) and...more

PTAB Continues to Evolve Its Covered Business Method Patent Jurisprudence - International Internet Technologies, LLC and Red Rock...

In two related decisions, the Patent Trial and Appeal Board (PTAB or Board) determined that patents directed to a personal computer interactive lottery/casino type game that allows players to purchase game tickets in the form...more

PTAB Petition Must Specifically Explain the Grounds for Invalidity - Apple Inc., v. ContentGuard Holdings, Inc.

In a trio of orders addressing the extent of express explanation required in a petition for post-grant review, the Patent Trial and Appeal Board (PTAB or Board) found each petition defective for lack of explanation regarding...more

Expert Testimony Not Always a Guarantee for Appellate Review with Deference - Shire Development v. Watson Pharmaceuticals; Teva...

Addressing the impact of expert testimony used during claim construction, the U.S. Court of Appeals for the Federal Circuit in a case remanded by the U.S. Supreme Court, following its January 5, 2015 decision in Teva...more

No “Apportionment” Requirement for Design Patent Damages - Apple, Inc. v. Samsung Elecs. Am., Inc.

Addressing the issue of damages for trade dress and design patents, the U.S. Court of Appeals for the Federal Circuit upheld the bulk of Apple’s roughly $930 million damages award, noting that there is no apportionment...more

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