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Morrison & Foerster LLP

MoFo Japan Disputes Newsletter – 1st Quarter 2021

Welcome to Morrison & Foerster’s quarterly newsletter on dispute resolution. In this newsletter, we address recent developments in arbitrations, investigations, and commercial and intellectual property litigation that may...more

Spilman Thomas & Battle, PLLC

Decoded: Technology Law Insights - Issue 9, October 2020

VIDEO: New Developments in the World of Section 230 - Nick Mooney and Joseph Schaeffer, Spilman Technology Law Practice Group Chairs, discuss proposed amendments from the Department of Justice, a recent statement from...more

International Lawyers Network

Patent Disputes in Life Sciences

Having vast expertise in providing legal protection to large Russian and international pharmaceuticals and healthcare companies, Lidings has put together a Legal Digest highlighting the most notable patents disputes in Life...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

MarkIt to Market - January 2019: Korea Amends Various IP Rights Guidelines

The beginning of 2019 brought some notable amendments to Korea’s intellectual property rights guidelines. On the trademark side, effective January 1, 2019, Korea’s Trademark Examination Guidelines were amended to include...more

Orrick, Herrington & Sutcliffe LLP

Intellectual Property - Patents - The World in U.S. Courts: Summer - Fall 2018

Dutch Parent Exercises Insufficient Control over US Subsidiary to be Deemed its "Alter Ego" - Britax Child Safety, Inc. v. Nuna International B.V., US District Court for the Eastern District of Pennsylvania, July 26, 2018....more

Sunstein LLP

July 2018 IP Update: In Limited Circumstances, the Supreme Court Permits Businesses to Recover Patent Damages for Sales Made...

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The Supreme Court recently answered the question whether a patent owner can collect damages caused by an infringer’s sales outside the U.S. Federal law typically reaches only conduct within the country, but the justices made...more

Knobbe Martens

Federal Circuit Review - July 2018

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Determining Whether a Claim Element or Combination of Elements Would Have Been Well-Understood, Routine, and Conventional Is a Question of Fact - In Aatrix Software, Inc. v. Green Shades Software, Inc., Appeal No....more

Jackson Walker

Extraterritorial Reach Of Patents— Impact Of Recent Supreme Court Decisions

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Jackson Walker partner Leisa Talbert Peschel spoke at the 14th Annual Advanced Patent Litigation Course on Thursday, July 12, at the U.S. Patent and Trademark Office’s Rocky Mountain Regional Office in Denver, Colorado. ...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

WesternGeco v. ION Geophysical

Lost Foreign Profits Awarded as Damages - It is an act of infringement under U.S. patent law to supply “in or from the United States” certain components of a patented invention with the intent that they “will be combined...more

Nutter McClennen & Fish LLP

WesternGeco LLC v. ION GeoPhysical: U.S. Supreme Court Issues Decision on Patent Damages

On June 22, the Supreme Court issued its opinion in WesternGeco LLC v. ION GeoPhysical, which addresses the ability of a patent owner to collect lost profits from sales abroad for infringement under 35 U.S.C. § 271(f)(2)....more

Eversheds Sutherland (US) LLP

Component vs. Complete - the US Supreme Court imposes extraterritorial lost profits damages on parties that violate section...

On June 22, 2018, the US Supreme Court clarified the scope of permissible patent damages awards by holding that when a party is found liable under 35 U.S.C. § 271(f) for exporting components of a patented invention, foreign...more

Verrill

Foreign Companies Pursuing Business in China: Proceed with Caution

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The trade relationship between the United States and China is top of mind for many business owners, especially within the technology sector. Recently, Chinese President Xi Jinping denied the U.S. Government’s request to end...more

Womble Bond Dickinson

Is the Federal Circuit’s Holding that the Presumption Against Extraterritoriality Making Unavailable Damages Based on a Patentee’s...

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Case at a Glance: The Court will consider whether the text of 35 U.S.C. § 271(f) imposes liability on those supplying from the United States components of a patented invention “in such a manner as to actively induce the...more

Mintz - Intellectual Property Viewpoints

WesternGeco v. ION Geophysical Corp. and Lost Profit Damages under § 271(f)

An introduction to § 271 - Section 271 of Title 35 of the United States Code is the statute that codifies unlawful acts of patent infringement. The most commonly asserted provisions are § 271(a) (direct infringement), §...more

Smart & Biggar

Rx IP Update - 2017 Highlights in Canadian Life Sciences IP

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The year 2017 was one of the most significant years for Canadian Life Sciences IP and Regulatory Law in Canada’s history. The year saw major developments in patent linkage, patent term, and substantive patent issues. As we...more

McDonnell Boehnen Hulbert & Berghoff LLP

Patent Exhaustion: Supreme Court Expands Patent-Limiting Doctrine

The U.S. Supreme Court at the end of the past term handed down a decision, Impression Products, Inc. v. Lexmark International, Inc., that greatly expanded the doctrine of patent exhaustion. This equitable doctrine prevents a...more

Ladas & Parry LLP

United States Supreme Court Decision In Impression Products Inc. V Lexmark International Inc.

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In 1628, Lord Coke in his “Institutes of the laws of England” summarized the common law on restraints on the alienation of chattels stating that any attempt by a seller to restrict resale or use of the chattel after selling...more

Sands Anderson PC

“First Sale” Exhausts Patent Rights

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In a case of keen importance to sellers of refurbished products such as auto parts and medical devices, last month, in Impression Products, Inc. v. Lexmark International, Inc., ___ U.S. ___ (2017), the Supreme Court of the...more

Jackson Walker

Supreme Court Holds Sale of Patented Product Exhausts All Patent Rights

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In a nearly unanimous opinion issued recently, the U.S. Supreme Court held “a patentee’s decision to sell a product exhausts all of its patent rights in that item, regardless of any restrictions the patentee purports to...more

Perkins Coie

First Impressions: New Strategies in the New Era of Patent Exhaustion After Impression Products v. Lexmark International

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In Impression Products, Inc. v. Lexmark International, No. 15–1189, 137 S. Ct. ___, 2017 WL 2322830 (May 30, 2017), the U.S. Supreme Court held that a patentee’s sale of a product exhausts all of its U.S. patent rights in...more

Stinson LLP

Supreme Court Expands Scope of Patent Exhaustion

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In Impression Products, Inc. v. Lexmark International, Inc., the U.S. Supreme Court recently held that a patent owner's initial sale of a product, in the U.S. or in a foreign country, exhausts all of the U.S. patent rights in...more

Hogan Lovells

U.S. - The Supreme Court grants purchasers free “use and enjoyment” of patented items… mostly

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An authorized sale exhausts all patent rights in the item sold. In Impression Products Inc. v. Lexmark International, Inc. No. 15-1189, May 30, 2017, the Supreme Court found that patent exhaustion is “uniform and...more

Foley Hoag LLP

Supreme Court Limits Patent Owners’ Ability to Control Post-Sale Use of Patented Products

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The Supreme Court last week issued its long-awaited decision regarding patent exhaustion in Impression Products, Inc. v. Lexmark International. The decision, which overturns longstanding Federal Circuit precedent, curtails...more

Burr & Forman

Supreme Court Clarifies Patent Exhaustion Doctrine and Limits Post-Sale Control

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In Impression Products, Inc. v. Lexmark International, Inc., the Supreme Court held that after a patent holder sells a patented product, the patent holder cannot control the product by way of patent rights. United States...more

Foley & Lardner LLP

Supreme Court Finds Patent Rights Exhausted Overseas

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In Impression Products, Inc. v. Lexmark International, Inc., the Supreme Court reversed the en banc decision of the Federal Circuit, and held U.S. patents rights exhausted by the patent owner’s sale of a patented article...more

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