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Patents Voluntary Dismissals Patent Litigation

McDermott Will & Emery

A Lesson in Judicial Principles: No Dismissal After Decision

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The US Court of Appeals for the Federal Circuit denied a patent owner’s motion to voluntarily dismiss the appeal following the Federal Circuit’s decision to vacate and remand the case to the Patent Trial & Appeal Board but...more

Jones Day

American Rule Applied to PTAB Attorney’s Fees

Jones Day on

In Amneal Pharmaceuticals LLC v. Almirall, LLC, the Federal Circuit recently found 35 U.S.C. § 285 did not authorize the Court awarding attorney’s fees for conduct occurring at the PTAB. No. 2020-1106, 2020 WL 2961939, at *2...more

Mintz - Intellectual Property Viewpoints

PTAB’s Decision Providing Factors for Denying Institution Based on Close Trial Date is Precedential; PTAB De-Designates One-Year...

On May 5, 2020, the Patent Trial and Appeal Board (“PTAB”) designated one decision as precedential and removed the precedential designation on another. The newly-designated precedential opinion lays out factors that the PTAB...more

Mintz - Intellectual Property Viewpoints

Federal Circuit Holds that Accused Infringers that Invalidate Asserted Patents at the PTAB Can Be a Prevailing Party Under Section...

Last week, the Federal Circuit, in a precedential decision, reinforced that an accused infringer can be a “prevailing party” for the purposes of seeking attorneys’ fees under 35 U.S.C. § 285 when it successfully invalidates...more

Knobbe Martens

Stay of District Court Proceedings Followed by a Voluntary Dismissal Is Not a Final Court Decision Under 35 U.S.C. § 285

Knobbe Martens on

O.F. MOSSBERG & SONS, INC. v. TIMNEY TRIGGERS, LLC - Before Lourie, Reyna, and Hughes. Appeal from the United States District Court for the District of Connecticut. Summary: A stay, followed by a voluntary dismissal,...more

Mintz - Intellectual Property Viewpoints

Federal Circuit Awards Attorney Fees to the Defendant Following Dismissal of Lawsuit by Plaintiff

The Federal Circuit affirmed a district court award of over $360,000 in costs and attorneys’ fees against a non-practicing entity, citing the need “to deter future abusive litigation.” In October 2016, Blackbird sued...more

Mintz - Intellectual Property Viewpoints

Prior Civil Action Bars IPR - A precedential decision

On August 29, 2019, the Patent Trial and Appeal Board (PTAB) designated as precedential its January 31, 2019 decision in Cisco Systems, Inc. v. Chrimar Systems, Inc. In Cisco, the PTAB held that 35 U.S.C. § 315(a)(1) bars...more

Akin Gump Strauss Hauer & Feld LLP

Misconduct During IPR May Trigger an Award of Attorneys’ Fees in Related District Court Litigation

A magistrate judge determined that a prevailing party in a district court litigation could be entitled to an award of attorneys’ fees based solely on conduct during an inter partes review (IPR) proceeding. In September...more

McDermott Will & Emery

Dropping Appeal on the Eve of Oral Argument Leads to Preclusion of Another

Addressing the applicability of issue preclusion in inter partes review (IPR) proceedings, the US Court of Appeals for the Federal Circuit found that a patent owner’s arguments on appeal were precluded based on similar...more

Akin Gump Strauss Hauer & Feld LLP

PTAB: Federal Circuit’s Click-to-Call Holding Applies to Statutory Bar Under 35 U.S.C. § 315(a)

The Patent Trial and Appeal Board (the “Board”) vacated its institution decision and terminated an inter partes review (IPR) filed by Mylan Pharmaceuticals, Inc. (“Mylan”) based on Mylan’s prior counterclaim seeking a...more

Jones Day

Cert Petition Seeks Review of Time-Bar Trigger for Voluntarily Dismissed Complaints

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On January 11, 2019, Dex Media filed a Petition for Writ of Certiorari seeking review of the Federal Circuit’s decision in Click-To-Call Tech. v. Ingenio, Inc., 899 F.3d 1321 (Fed. Cir. 2018) (en banc in relevant part)....more

Jones Day

Click-to-Call Cert Petition – Second Extension of Time Granted

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As reported in a prior post, DexMedia, Inc. previously filed an Application for Extension of Time to File a Petition for a Writ of Certiorari requesting an extension of 30 days in which to file a cert petition challenging the...more

Proskauer - New England IP Blog

Gun Trigger Patent Lawsuit Misfire Does Not Warrant “Exceptional Case” Finding

After a lengthy and circuitous patent proceeding between plaintiff O.F. Mossberg & Sons (“Mossberg”) and defendants Timney Triggers, LLC and its related manufacturing entity (collectively, “Timney”), which ultimately resulted...more

Shutts & Bowen LLP

Are the Pleading Standards for Method Claims More Rigorous in the Context of Rule 11?

Shutts & Bowen LLP on

No. Micro Processing Technology, Inc. sent a letter to Plasma-Therm alleging that Plasma-Therm was infringing MPT’s patent. Plasma-Therm filed a declaratory judgment action seeking a declaration that it did not infringe....more

WilmerHale

Federal Circuit Patent Updates - August 2018

WilmerHale on

Ericsson Inc. v. Intellectual Ventures I LLC (No. 2017-1521, 8/27/18) (Reyna, Taranto, Chen) Reyna, J. - Vacating and remanding the PTAB’s IPR decision because the PTAB erred in not considering portions of the petitioner’s...more

Jones Day

Voluntary Dismissal Without Prejudice Does Not Reset One-Year Time Bar #2

Jones Day on

In Click-To-Call Tech. v. Ingenio, Inc., 2015-1242, slip op. (Fed. Cir. Aug. 16, 2018) (en banc), the Federal Circuit found that a voluntary dismissal without prejudice of a district court litigation does not reset the...more

Schwabe, Williamson & Wyatt PC

Fresh From the Bench - August 2018 #2

PATENT CASE OF THE WEEK - Click-to-Call Technologies, LP v. Ingenio, Inc., Appeal No. 2015-1242 (Fed. Cir. Aug. 16, 2018) In an appeal of an inter partes review, the Federal Circuit reviewed for the first time the...more

Kilpatrick

The One-Year Bar Applies Even After a Voluntary Dismissal without Prejudice

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The Federal Circuit issued an en banc decision in Click-to-Call Technologies, LP v. Ingenio, Inc, Yellow Pages.com, LLC (Case No. 2015-1242), finding that a voluntary dismissal without prejudice of a lawsuit does not reset...more

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