U.S. + Germany Patent Update – November 2018

Hogan Lovells

The U.S. and Germany are two of the most important fora in the world for patent litigation. The U.S. has long been one of the largest markets for patent litigation, and Germany has constantly attracted more than 50% of all European patent litigation. Hogan Lovells offers this multi-lingual update on notable recent patent developments across these two countries.

  • 日本語 – Japanese language translation available here


German Federal Patent Court on Filing Auxiliary Requests With Narrower Claims in Patent Nullity Proceedings – “Satellite Based Paging System with Location Transmission,” Federal Patent Court of Germany, 6 NI 69/16 (EP)

…This decision shows that the parties are generally obligated to present all facts, prior art, and auxiliary requests relevant to the proceedings in a complete and timely manner. In particular, when submitting new auxiliary requests, the patent owner should not rely on the GFPC’s preliminary opinion, but should protect its patent by submitting new auxiliary requests within the time limit set by the GFPC—not during the oral hearing. Read more


PTAB Denies Institution as Duplicative Due to Earlier IPR Challenge by Different Petitioner – Shenzhen Silver Star Intelligent Tech. v. iRobot Corp. (5 September 2018)

In the past, the PTAB has denied what it has deemed to be duplicative petitions filed by the same petitioner, but this case presented a more unique circumstance of denying a second IPR file by a different petitioner. In a concurring opinion, one of the PTAB judges suggested that co-defendants in a litigation should file IPR petitions around the same time. That judge went so far as to say there should even be a rebuttable presumption that the later-filed petition will be denied if filed after patent owner files its preliminary response to the first-filed IPR. In view of this, it is important, if in a multiple-defendant litigation, to consider coordinating IPR strategy with other defendants. Or, at the very least, it is important to stay apprised of co-defendant IPR activity and timing of any filings. Read more

USPTO Announces Proposal to Change System for Seeking Amendments in PTAB Proceedings (25 October 2018)

The United States Patent and Trademark Office (PTO) published a “Request for Comments” on its new proposed procedure for motions to amend claims in PTAB proceedings. The PTO has proposed a 2-phase procedure for making claim amendments. In the first phase, the PTAB would issue a preliminary ruling on whether proposed amended claims are valid prior to the final decision, and, in a second phase, patent owners could revise their motion in response. Read more

USPTO Begins Using Same Claim Construction Standard as District Courts (13 November 2018)

The PTO recently published the final rule changing the claim construction standard to be applied in PTAB proceedings on 10 October 2018. The new rule took effect on 13 November 2018. The new rule requires the PTAB to adopt the Phillips standard for claim construction in all PTAB proceedings, discarding the old “broadest reasonable interpretation” (BRI) standard that has been used since the creation of PTAB proceedings in 2012. The Phillips standard is the same standard used in district court litigation, so there is thought that this new rule will harmonize PTAB and district court litigation. Read more

Judge Takes Broad View of New Foreign Lost Profits Standard – Power Integrations, Inc. v. Fairchild Semiconductor (4 October 2018)

In Power Integrations, the judge allowed Power Integrations to seek foreign lost profits for any type of infringement. The judge reasoned that while WesternGeco concerned only a specific type of infringement (one where the infringing act actually occurs outside of the U.S.), the decision nonetheless has “equal applicability” to the direct infringement allegations at-issue in Power Integrations. The judge in Power Integrations immediately certified the issue for appeal, which gives the Federal Circuit the chance to rule on the scope of WesternGeco’s damages standard. Practitioners should take note of this decision, as it arguably expands that standard. If the judge’s ruling is upheld, it could result in a significant increase in damages awards because it would allow patent owners to seek worldwide damages regardless of the type of infringement. Read more

No Personal Jurisdiction Over Foreign Defendant Based on Ownership of U.S. Subsidiary and U.S.-Based Development of Accused Products – Univ. of Mass. Medical Sch. v. L’Oréal S.A. (13 November 2018)

A magistrate judge in Delaware recommended dismissal of a patent infringement case for lack of personal jurisdiction over a foreign defendant. Patent owner University of Massachusetts Medical School and its exclusive licensee sued L’Oréal S.A., a French corporation headquartered in France, and its wholly-owned U.S. subsidiary, L’Oréal USA, for infringement of skin treatment patents. Read more


Federal Supreme Court on Enforcing a Claim of Information and Rendering of Account in Preparation of Damages Claims – “Tool Handle,” Federal Supreme Court, X ZR 76/18 (25 September 2018)

The Federal Supreme Court has issued a decision (X ZR 76/18, 25 September 2018– “Tool handle”) on the enforcement of a claim of information and rendering of account according to Sec. 140b German Patent Act. In its decision, the Court emphasized an overriding interest of the patent holder in the enforcement of the claim for information and rendering of accounts over the threat of irreparable harm to the patent infringer. Read more

Decision of German Federal Constitutional Court on German UPCA Complaint Coming Soon?

While the German Federal Court (FCC) has still not officially announced when it will issue a decision regarding the constitutional complaint against the German law that ratified the Unified Patent Court Agreement (UPCA), rumors about a possible decision in December are circulating the German patent community. The FCC, however, officially has not acknowledged a decision date at this point. Across the channel, in the meantime, two UK patent practitioners argued before the House of Lord’s EU Justice Sub-Committee in favor of a UK participation in the Unitary Patent system during the transitional period agreed upon in a withdrawal agreement following Brexit and beyond that period. Read more

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DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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