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Patents Intellectual Property Protection Standing

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

A&O Shearman

Standing & Product Development: Platinum Optics Tech. Inc. v. Viavi Sols. Inc.

A&O Shearman on

In Platinum Optics Tech. Inc. v. Viavi Sols. Inc., the U.S. Court of Appeals for the Federal Circuit (CAFC) issued a precedential decision on the requirements for standing to appeal from an inter partes review (IPR) final...more

Sheppard Mullin Richter & Hampton LLP

Understanding Constitutional Standing: A Review of a Recent Federal Circuit Decision

In Intellectual Tech v. Zebra Technologies 2022-2207 (Fed. Cir. May 1, 2024), the Federal Circuit addressed a district court’s determination that the patent owner plaintiff lacked constitutional standing because it was...more

Pillsbury Winthrop Shaw Pittman LLP

Constitutional Standing Not Required for 337 Investigations

While a complainant does not need to have constitutional standing to bring a complaint in the International Trade Commission (ITC), at least one complainant must be the owner or exclusive licensee of the underlying asserted...more

Irwin IP LLP

Who Really Owns Your Patent?  You or Your Bank?

Irwin IP LLP on

Intell. Tech LLC v. Zebra Techs. Corp., No. 2022-2207 (Fed. Cir. May 1, 2024) On May 1, the Federal Circuit reversed a district court’s dismissal of Intellectual Tech’s (“IT’s”) patent infringement claims against Zebra...more

McDermott Will & Emery

Section 337 Doesn’t Require Article III Standing for Claimant but Claimant Must Be “Patentee”

The US Court of Appeals for the Federal Circuit vacated and remanded a district court’s grant of summary judgment, finding that the language used in an invention assignment clause was subject to more than one reasonable...more

McDermott Will & Emery

Getting to the Core of It: Assignment Clause Is Ambiguous

McDermott Will & Emery on

The US Court of Appeals for the Federal Circuit vacated and remanded a district court’s grant of summary judgment, finding that the language used in an invention assignment clause was subject to more than one reasonable...more

Womble Bond Dickinson

Federal Circuit Reversal in Assignment Clause Case Highlights Importance of Contract Language in Intellectual Property Ownership

Womble Bond Dickinson on

In a split opinion issued Tuesday, and based on language in an assignment clause of a contract, the Federal Circuit overturned a district court's summary judgment that Core Optical lacked standing to sue Nokia, Cisco, and...more

McDermott Will & Emery

Standing Ovation…Denied!

The US Court of Appeals for the Federal Circuit reversed a district court’s decision in a patent dispute for a lack of subject matter jurisdiction because the plaintiff lacked constitutional and statutory standing....more

McDermott Will & Emery

R&D Expenditures Need Only Relate to Subset of Domestic Industry Product

Addressing a decision by the US International Trade Commission finding a violation of Section 337 based on importation of certain TV products, the US Court of Appeals for the Federal Circuit agreed that the patent holder had...more

Knobbe Martens

Federal Circuit Review - November 2023

Knobbe Martens on

Federal Circuit Orders District Court to Consider Extrinsic Evidence in Claim Construction - In Actelion Pharmaceuticals Ltd. v. Mylan Pharmaceuticals Inc., Appeal No. 22-1889, the Federal Circuit held that where a...more

McDermott Will & Emery

Speculative Injury from Rulemaking Petition Denial Doesn’t Confer Standing

McDermott Will & Emery on

The US District Court for the District of Columbia affirmed the dismissal of a case alleging that the US Patent & Trademark Office (PTO) violated the Administrative Procedure Act (APA) by denying the plaintiffs’ rulemaking...more

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

Federal Circuit Appeals from the PTAB and ITC: Summaries of Key 2022 Decisions: Intel Corp. v. Qualcomm Inc., 21 F.4th 801 (Fed....

Intel filed three IPR petitions against Qualcomm’s ’949 patent, which is directed to “boot code” in a multi-processor system. Apple, who was not a party to any of the IPRs, uses Intel’s baseband processors in certain iPhone...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

Dechert LLP

UK Court of Appeal rules on the rights of licensees to bring patent infringement claims

Dechert LLP on

The UK Court of Appeal has issued its judgment in one of the latest hearings in Neurim Pharmaceuticals v Generics (UK) relating to Neurim’s insomnia drug, Circadin. The Court of Appeal ruled that an exclusive licensee has...more

McDonnell Boehnen Hulbert & Berghoff LLP

University of South Florida Research Foundation, Inc. v. Fujifilm Medical Systems U.S.A., Inc. (Fed. Cir. 2021)

The issue of standing can be outcome-determinative:  without it, no matter how worthy a party's position or arguments, a court will not consider them without standing.  The vagaries of standing and its importance were...more

Jones Day

Expired Patents Can Be Challenged

Jones Day on

Although it may seem counterintuitive, the PTAB has jurisdiction over expired patents, and patent owners may need to defend their expired patents in inter partes review. The PTAB recently reiterated this in Apple, Inc. v....more

Knobbe Martens

Federal Circuit Review - November 2021

Knobbe Martens on

Venue and Pleading Infringement in Hatch-Waxman Litigation Turn on Location and Identity of ANDA Filer - In Celgene Corp. v. Mylan Pharm. et al., Appeal No. 21-1154, the Federal Circuit held that in Hatch-Waxman...more

Jones Day

Leahy-Corbin Proposals for “Restoring the America Invents Act”

Jones Day on

We recently reported on bipartisan legislation introduced by Senators Patrick Leahy (D) and John Cornyn (R) to significantly revamp certain features of the America Invents Act (AIA), ten years after its debut.  This proposed...more

Morgan Lewis

USPTO Codifies Burden of Persuasion Rules for AIA Amendments at the PTAB

Morgan Lewis on

It has been argued that the Patent Trial and Appeal Board (PTAB or Board) cannot engage in rulemaking through decisions made by its administrative patent judges (APJs), even if those decisions are made precedential, as APJs...more

Polsinelli

One-Year Time Bar Triggered After the Service of a Complaint, Regardless of Whether the Serving Party Lacked Standing to Sue

Polsinelli on

On August 23, 2019, the Precedential Opinion Panel (POP) of the Patent Trial and Appeal Board (PTAB) issued a precedential opinion relating to the one-year time bar under 35 U.S.C. § 315(b). ...more

Troutman Pepper Locke

A Party Who Lacks Standing Can Still Trigger the Section 315(b) Time Bar

Troutman Pepper Locke on

GoPro, Inc. v. 360Heros, Inc., IPR2018-01754 (Precedential Opinion Panel, August 23, 2019) - Section 315(b) of Title 35 prohibits institution of an IPR where the petition is filed more than one year after service of a...more

McDermott Will & Emery

Standing Is Unaffected by Patent Licensee’s Failure to Join

Addressing the issue of standing in a patent infringement case, combined with the requirements of joinder under Fed. R. Civ. P. 19, the US Court of Appeals for the Federal Circuit vacated a dismissal based on lack of standing...more

Fenwick & West LLP

Still No Shortage of Viewpoints as Eligibility Debate Moves to the Hill

Fenwick & West LLP on

Back in March, I reported on the breadth of comments the USPTO received in response to its new Guidance on patent subject matter eligibility. Now, Congress has taken up the issue with a proposed draft of a new bipartisan,...more

Hogan Lovells

U.S. + Germany Patent Update – July 2019

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Hogan Lovells’ U.S. + German Patent Update reports on recent patent news and cases from Germany and the United States. United States - - U.S. Congress Introduces Bill Addressing Patent Subject Matter Eligibility -...more

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