News & Analysis as of

Intellectual Property Protection Patent Infringement Evidence

Sheppard Mullin Richter & Hampton LLP

Federal Circuit Touches on Appellate Standing and Prior Art Determinations in the Context of Post-Grant Review Proceedings

In CQV Co. Ltd. v. Merck Patent GmbH, the Federal Circuit addressed (1) the interaction of indemnification agreements with Article III standing for appeals of post-grant review decisions of the Patent Trial and Appeal Board;...more

Akin Gump Strauss Hauer & Feld LLP

District Court: Incorporation by Reference for Purposes of Anticipation Requires More than a Parenthetical

In a series of rulings on a motion in limine, the District of Delaware recently distinguished between what qualifies as being incorporated by reference and what does not for the purposes of an anticipation defense. In short,...more

Jones Day

Speculative IPR Discovery Request Not in the Interest of Justice

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“Because Congress intended inter partes reviews to serve as a faster and more cost-effective alternative to litigating validity in district courts, discovery in inter partes reviews is limited.” See Garmin Int’l, Inc. v....more

Vorys, Sater, Seymour and Pease LLP

The Precendent: U.S. Court of Appeals for the Federal Circuit Reaffirms Standard of Proof for Correcting Inventorship in BearBox...

In this edition of The Precedent, we outline the recent federal circuit decision in BearBox LLC v. Lancium LLC. The United States Court of Appeals for the Federal Circuit recently affirmed that parties seeking correction of...more

McDermott Will & Emery

Judicial Bias and Erroneous Admission of Expert Testimony Prompt Case Reassignment

McDermott Will & Emery on

The US Court of Appeals for the Federal Circuit reversed a district court’s decision to admit expert testimony and remanded the case to a different judge, noting that “from the moment this case fell in his lap, the trial...more

McDermott Will & Emery

Bottling the Truth: Equivalence and Reverse Equivalence

McDermott Will & Emery on

The US Court of Appeals for the Federal Circuit ruled that the “substantially the same way” comparison in connection with a doctrine of equivalents (DOE) analysis involving a means-plus-function claim limitation should focus...more

Patterson Belknap Webb & Tyler LLP

There’s an Exception to Every Rule: Judge Schofield Finds a Comparison of the Plaintiff’s Patented System and the Accused System...

In a recently published opinion, Judge Lorna G. Schofield (S.D.N.Y.) found that it was appropriate to compare the accused system to a plaintiff’s commercial system embodying the asserted patent claims, rather than the patent...more

Jones Day

Thickness Arguments Cross the Line for Federal Circuit

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When issued patent drawings are not explicitly made to scale, the Federal Circuit recently confirmed that arguments relying solely or predominately on the features of those drawings, such as line thickness, are “unavailing.” ...more

Jones Day

“First Available” Date Alone Is Insufficient Evidence of Disclosure

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The Patent Trial and Appeal Board (“PTAB”) denied institution in an inter partes review (“IPR”), finding that an online store’s assertion regarding when a product was “first available” is by itself insufficient evidence of...more

Akin Gump Strauss Hauer & Feld LLP

PTAB Refuses to Ignore Reference Where Patent Owner Fails to Overcome Prima Facie Evidence of ‘Different Inventive Entity’

The Patent Trial and Appeal Board determined that a reference could be used as prior art because patent owner failed to provide sufficient evidence that the prior art’s disclosure was invented by all four named inventors, and...more

Jones Day

Petitioner Mistakenly Ignores Not-So-Optional Claim Limitation

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The PTAB recently excluded a portion of Duration Media LLC’s (Petitioner) reply declaration for containing improper new evidence in an inter partes review petition filed against Rich Media Club LLC (Patent Owner) challenging...more

Akin Gump Strauss Hauer & Feld LLP

PTAB Denies Motion to Compel Discovery of Evidence from Parallel ITC Investigation Due to Lack of Inconsistency

The PTAB denied a petitioner’s motion to compel routine discovery that sought information from a parallel ITC investigation for alleged inconsistent positions taken by patent owner in the IPR. The board found that patent...more

Jones Day

Secondary Considerations Arguments Precluded By Prior Nexus Testimony

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On June 6, 2024, the PTAB issued a Final Written Decision concluding claims 1-6 of U.S. Patent No. 8,899,655 B1 (“the ’655 patent”) unpatentable. Yita LLC v. MacNeil IP LLC, IPR2023-00172, Paper 70 (PTAB Jun. 6, 2024)...more

Sheppard Mullin Richter & Hampton LLP

The Importance of Reasonable Particularity in a Doctrine of Equivalents Argument

In VLSI Technology LLC v. Intel Corporation, No. 22-1906 (Fed. Cir. 2023), VLSI sued Intel for infringement of U.S. Patent Nos. 7,523,373 (the “’373 patent”) and U.S. Patent No. 7,725,759 (the “’759 patent”). After a jury...more

Troutman Pepper Locke

How Much Claim Construction ‎Significance? – Extrinsic Evidence and Significant Figures

Troutman Pepper Locke on

In almost every claim construction, the courts make their claim construction ruling largely based on the intrinsic evidence – the claims, specification and prosecution history. However, the Federal Circuit (CAFC) bucked this...more

Sheppard Mullin Richter & Hampton LLP

Cyntec Company, Ltd. v. Chilisin Electronics Corp., Chilisin America Ltd. Nos. 2022-1873, (Fed. Cir. October 16, 2023)

This case is primarily about the Daubert standard as applied to expert testimony on damages. The Federal Circuit reversed the Northern District of California’s admission of expert testimony on damages, which relied on...more

American Conference Institute (ACI)

[Event] 21st Annual Life Sciences IP Summit - September 27th - 28th, Munich, Germany

Hosted by C5 Group, the 21st Annual Life Sciences IP Summit returns for another exciting year with curated programming with speakers from the pharma, biotech and medical device industries that will provide practical insights...more

Knobbe Martens

Low-Bar for Corroboration

Knobbe Martens on

MEDTRONIC, INC. v. TELEFLEX INNOVATIONS S.A.R.L. Before Moore, Lourie, and Dyk. Appeal from the Patent Trial and Appeal Board - Summary: Federal Circuit confirms low bar for evidence corroborating prior inventorship...more

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

Federal Circuit Appeals from the PTAB and ITC: Summaries of Key 2022 Decisions

As part of the recovery from the global COVID-19 pandemic, the U.S. Court of Appeals for the Federal Circuit took steps to return to normal operations. It began requiring live oral arguments in August 2022 and, by November,...more

Haug Partners LLP

Foresight in Patent Litigation: How Adherence to Local Rules Can Make or Break a Case

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On September 7, 2022, the Court of Appeals for the Federal Circuit issued a precedential opinion in Arendi S.A.R.L v. LG Electronics, Inc., offering an important reminder to patent litigators of the necessity of following the...more

Knobbe Martens

Expert Testimony That Contradicts Patent Specification Fails to Create a Genuine Issue of Fact in a Patent Eligibility Dispute

Knobbe Martens on

CAREDX, INC. V. NATERA, INC. Before Lourie, Bryson, and Hughes - Summary: Expert testimony that steps of challenged patent claims were unconventional failed to preclude summary judgment of ineligibility where...more

Knobbe Martens

Sounding Off: Prosecution Disclaimer Requires Unambiguous Intrinsic Evidence

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GENUINE ENABLING TECHNOLOGY LLC V. NINTENDO CO., LTD - Before Newman, Reyna, and Stoll. Appeal from the Western District of Washington. Summary: A finding of prosecution disclaimer must be supported by an unambiguous...more

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

2021 PTAB Year in Review: Analysis & Trends

[co-author: Jamie Dohopolski] Love it or hate it, ignore the USPTO Patent Trial and Appeal Board (PTAB) at your peril. The introduction of the PTAB as part of the America Invents Act over ten years ago has forever changed...more

Knobbe Martens

When an Unmet Need May Not Be Enough

Knobbe Martens on

ADAPT PHARMA OPERATIONS LTD. V. TEVA PHARMS. USA, INC. Before Newman, Prost, and Stoll. Appeal from the United States District Court for the District of New Jersey. Summary: Recent attempts by competitors to achieve...more

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

Federal Circuit Appeals from the PTAB and ITC: Summaries of Key 2021 Decisions

[co-author: Jamie Dohopolski] Last year, the continued global COVID-19 pandemic forced American courts to largely continue the procedures set in place in 2020. The U.S. Court of Appeals for the Federal Circuit was no...more

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