News & Analysis as of

Patents Discovery Appeals

Knobbe Martens

Inaction Can Lead To Argument Forfeiture on Appeal

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ALIVECOR, INC. v. APPLE INC. Before Hughes, Linn, and Stark. Appeal from Patent Trial and Appeal Board - A party in a PTAB proceeding forfeits the ability to challenge an opposing party’s discovery obligation violation...more

Schwabe, Williamson & Wyatt PC

Latest Federal Court Case: Kroy IP Holdings, LLC v. Groupon Inc.

After an inter partes review finds certain claims of a patent unpatentable, may the patentee assert other claims, immaterially different, in district court without being collaterally estopped? This was the question presented...more

McDermott Will & Emery

Judicial Bias and Erroneous Admission of Expert Testimony Prompt Case Reassignment

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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

Kilpatrick

5 Key Takeaways | Building a Winning Evidentiary Record at the PTAB (and Surviving Appeal)

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Kilpatrick partners John Alemanni and Justin Krieger recently presented a CLE addressing “Building a Winning Evidentiary Record at the PTAB (and Surviving Appeal).”...more

Baker Botts L.L.P.

Third Quarter 2024 Federal Circuit Law Update

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Since serving as a Federal Circuit clerk, Michael Hawes has monitored that court's precedential opinions and prepares a deeply outlined index by subject matter (invalidity, infringement, claim construction, etc.) of relevant...more

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases - April 2024

Harris Brumfield v. IBG LLC, Appeal No. 2022-1630 (Fed. Cir. Mar. 27, 2024) In our case of the week, the Federal Circuit addressed three issues in a dispute that dates back to 2010, and has been to the Court on three...more

Haug Partners LLP

A U.S. View on the UPC – Part 7: “Discovery”

Haug Partners LLP on

On June 1, 2023, the new European Unified Patent Court (UPC) opened its doors, and enforcement of European patents in (currently) 17 contract member states is now possible with one action. This series of articles – directed...more

WilmerHale

Federal Circuit Patent Watch: Federal Circuit Affirms Decision to Impose Discovery Sanctions Against Defendant for Late Disclosure...

WilmerHale on

Precedential Federal Circuit Opinions - 1.  ADASA INC. v. AVERY DENNISON CORPORATION [OPINION] (2022-1092, 12/16/2022) (Moore, Hughes, and Stark) - Moore, C.J. The Court affirmed in part, vacated in part, and remanded...more

McDermott Will & Emery

Tag, You’re It: Sanctions Award Must Reflect Violative Conduct

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The US Court of Appeals for the Federal Circuit determined that an accused infringer was entitled to a new trial relating to validity issues but still faced sanctions for its continuous disregard of its discovery obligations....more

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases - December 2022 #3

ADASA Inc. v. Avery Dennison Corporation, Appeal No. 2022-1092 (Fed. Cir. Dec. 16, 2022) - In the Federal Circuit’s only precedential opinion this week, the Court considered issues arising from infringement litigation...more

Schwabe, Williamson & Wyatt PC

Latest Federal Court Case - July 2022

Static Media LLC v. Leader Accessories LLC, Appeal No. 2021-2303 (Fed. Cir. June 28, 2022)‎ - In last week’s only precedential opinion issued in a patent case, the Federal Circuit reversed contempt and sanctions orders...more

McDermott Will & Emery

Claim Construction and Jurisdictional Discovery Are More Than Skin Deep

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Referencing the use of antecedents from a “wherein” clause, the US Court of Appeals for the Federal Circuit reversed a district court’s claim construction and vacated its summary judgment ruling of indefiniteness that relied...more

McDermott Will & Emery

Lost and “Found”: Fourth Circuit Interpretation of Discovery in Support of Foreign Litigation Opens Circuit Split

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The US Court of Appeals for the Fourth Circuit held that a corporation that is not physically present in a district is not “found” in the district for purposes of the federal statute that authorizes courts to order discovery...more

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases - August 2021 #5

MLC Intellectual Property, LLC v. Micron Technology, Inc., Appeal No. 2020-1413 (Fed. Cir. Aug. 26, 2021) - For those interested in an important Section 112 written description case, we recommend reading the Juno...more

McDermott Will & Emery

Eight-Month Delay on Transfer Motion Ruling Is “Egregious,” Warrants Stay

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The US Court of Appeals for the Federal Circuit issued a rare grant of a mandamus petition directing a district court to stay proceedings until ruling on a pending motion to transfer, stating that the district court’s...more

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases - November 2020 #3

C.R. Bard Inc. v. AngioDynamics, Inc., Appeal No. 2019-1756, -1934 (Fed. Cir. Nov. 10, 2020) - Our Case of the Week is one of two cases decided this week in which the Federal Circuit finds that a district court jumped the...more

Knobbe Martens

Non-Expert Testimony on Obviousness Is Inadmissible

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HVLPO2, LLC v. OXYGEN FROG, LLC - Before Newman, Moore, and Chen. Appeal from the United States District Court for the Northern District of Florida. Summary: It is an abuse of discretion to permit a witness to testify...more

Jones Day

PTAB Abused Discretion in Denying Request to File Motion for Additional Discovery

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In a recent appeal of two inter partes review (“IPR”) decisions from the Patent Trial and Appeal Board (“Board”), The Court of Appeals for the Federal Circuit (“CAFC”) held that the Board abused its discretion in denying...more

Knobbe Martens

Federal Circuit Review - May 2018

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Priority Claims Cannot Be Incorporated by Reference - In Vanda Pharmaceuticals Inc. v. West-Ward Pharmaceuticals International Limited, Appeal Nos. 2016-2707 and 2016-2708, the Federal Circuit held that when a patent for a...more

Smart & Biggar

Rx IP Update - April 2018

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Standing Committee on Health proposes National Pharmacare program, modifications to prescription and generic drug pricing - While common among member countries of the Organisation for Economic Co-operation and Development...more

Jones Day

PTAB Revokes Filing Privileges For Repeated Rules Violations

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In September 2017, Saint Regis Mohawk Tribe moved to dismiss six instituted trials on petitions filed by Mylan Pharmaceuticals Inc. Those petitions challenged six patents that, at the time the petitions were filed, belonged...more

Schwabe, Williamson & Wyatt PC

Fresh From the Bench: Precedential Patent Cases From the Federal Circuit

In Allied v. OSMI, the Circuit affirms dismissal of a declaratory judgment action even though Allied’s Mexican distributors had been sued in Mexico on a corresponding Mexican patent. In a first Waymo v. Uber case, the panel...more

Knobbe Martens

Federal Circuit Review - August 2017

Knobbe Martens on

District Court Abused Discretion in Ignoring Federal Circuit Mandate to Reconsider Attorneys’ Fees Under Octane Fitness - In Adjustacam, LLC v. Newegg, Inc., Appeal No. 2016-1882, the Federal Circuit held that a district...more

Mintz - Intellectual Property Viewpoints

Federal Circuit Says PTO Submissions can Waive Privilege to Future Communications

On July 20, 2017, the United States Court of Appeals for the Federal Circuit in In re OptumInsight denied OptumInsight’s petition for writ of mandamus on privilege waiver. The court held that the District Court for the...more

Foley & Lardner LLP

Federal Circuit Finds Regeneron Transgenic Mouse Patent Invalid For Inequitable Conduct With Intent Inferred From Litigation...

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In a 38 page decision with a 19 page dissent by Judge Newman, the Federal Circuit determined that Regeneron’s transgenic mouse patent is unenforceable due to inequitable conduct. The decision was rendered in Regeneron...more

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