News & Analysis as of

Patents Writ of Mandamus Appeals

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases: Azurity Pharmaceuticals, Inc. v. Alkem Laboratories Ltd.

Azurity Pharmaceuticals, Inc. v. Alkem Laboratories Ltd., Appeal No. 2023-1977 (Fed. Cir. Apr. 8, 2025) In our Case of the Week, the Federal Circuit affirmed that defendant Alkem’s proposed generic antibiotic did not...more

McDermott Will & Emery

Mandamus Denied but Jurisdictional Door Left Open a Crack

The US Court of Appeals for the Federal Circuit denied a patent owner’s writ of mandamus seeking to prevent a defendant from amending its answer to add an affirmative licensing defense, but also noted that the defense was...more

McDermott Will & Emery

Carolina Calling: Sources of Proof Favor Transfer

The US Court of Appeals for the Federal Circuit vacated a district court order denying transfer, finding that the sources of proof, compulsory process and localized interest factors all favored transfer. In re Honeywell Int’l...more

McDermott Will & Emery

2023 IP Outlook: Trends in the Western District of Texas

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Over the past year, two developments infiltrated the Western District of Texas (WDTX) which may decrease the success of venue transfers and keep case volume steady in 2023. These developments could also give plaintiffs more...more

McDermott Will & Emery

That Stings: Consent to Jurisdiction Must Be Effective at Filing to Invoke Fed. R. Civ. P. 4(k)(2)

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The US Court of Appeals for the Federal Circuit, on petition for writ of mandamus, vacated the district court’s transfer order and remanded the transfer to be considered under the clarified parameters of Fed. R. Civ. P....more

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases - January 2023 #2

Grace Instrument Industries, LLC v. Chandler Instruments Company, LLC, Appeal No. 2021-2370 (Fed. Cir. Jan. 12, 2023) - In an appeal from the U.S. District Court for the Southern District of Texas, the Federal Circuit...more

McDermott Will & Emery

Not “Use It or Lose It”: Even if Unexercised, Director’s Authority over Institution Decisions Remains

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The US Court of Appeals for the Federal Circuit denied mandamus relief, finding that a party is not entitled to petition the director for review of a Patent Trial & Appeal Board (Board) decision denying institution of an...more

McDermott Will & Emery

Dude, Where’s My Venue? Texas Car Dealerships Aren’t Distributor Agents

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The US Court of Appeals for the Federal Circuit vacated a district court’s denial of motions made by two car distributors to transfer cases out of the Western District of Texas for improper venue, finding that the patent...more

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases - March 2022 #2

In re: Volkswagen Group of America, Inc. and In re: Hyundai Motor America, Appeal Nos. 2022-108, -109 (Fed. Cir. Mar. 9, 2022) - In the most recent of multiple mandamus rulings issued by the Federal Circuit in relation to...more

McDermott Will & Emery

California, I’m Coming Home: Transfer to Venue Where Products Were Designed Is Appropriate

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The US Court of Appeals for the Federal Circuit denied a patent owner’s petition for writ of mandamus, finding that the district court properly transferred a case from the Eastern District of Virginia to the Northern District...more

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

Federal Circuit Appeals from the PTAB and ITC: Summaries of Key 2021 Decisions: Mylan Labs. Ltd v. Janssen Pharmaceutica, N.V.,...

Mylan appealed from a Patent Trial and Appeal Board (Board) discretionary denial of institution of an inter partes review (IPR) proceeding. The Board declined to institute Mylan’s IPR under NHK-Fintiv, a multi-factor analysis...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

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

PTAB Strategies and Insights - November 2021: Are Institution Decisions Set in Stone?

The Leahy-Smith America Invents Act granted the Patent Office authority to issue “regulations . . . establishing and governing inter partes review.” 35 U.S.C § 316(a)(4). For the Patent Trial and Appeal Board (“Board”) to...more

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

PTAB Strategies and Insights - November 2021

The PTAB Strategies and Insights newsletter provides timely updates and insights into how best to handle proceedings at the USPTO. It is designed to increase return on investment for all stakeholders looking at the entire...more

McDermott Will & Emery

Federal Circuit to WD Tex.: Denial of Transfer Motion was Clear Error, Abuse of Discretion

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For the third time in as many months, the US Court of Appeals for the Federal Circuit found clear error in the US District Court for the Western District of Texas’s denial of a defendant’s motion to transfer venue. In re...more

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases - September 2021 #4

In re: Juniper Networks, Inc., Appeal No. 2021-160 (Fed. Cir. Sept. 24, 2021)- In this week’s Case of the Week, the Federal Circuit issued its fifth writ of mandamus this year ordering transfer of a patent case out of the...more

McDermott Will & Emery

Discretion to Authorize Hague Alternative Service on Foreign Defendant—it’s All About Time and Cost

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The US Court of Appeals for the Federal Circuit denied a petition for a writ of mandamus, directing the US District Court for the Western District of Texas to dismiss multiple infringement actions for insufficient service of...more

McDermott Will & Emery

Overcoming Heavy Burden Required to Succeed on Venue-Related Writ of Mandamus

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Addressing a venue challenge, the US Court of Appeals for the Federal Circuit denied a petition for a writ of mandamus because the challenger did not demonstrate it had no adequate alternative means to obtain desired relief...more

McDermott Will & Emery

Where Should This Case Go? Appeals Court Tosses Venue Motion to Dismiss

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Addressing for the first time whether a court must consider the adequacy of an alternative forum in its forum non conveniens analysis, the US Court of Appeals for the Federal Circuit affirmed the denial of a defendant’s...more

Schwabe, Williamson & Wyatt PC

Latest Federal Circuit Court Cases - November 2018 #3

ArcelorMittal Atlantique Et Lorraine v. AK Steel Corporation, Appeal No. 2017-1637 (Fed. Cir. Nov. 14, 2018) - In an opinion originally filed as sealed on Nov. 5 and unsealed on Nov. 18, the Federal Circuit vacated and...more

Knobbe Martens

In Re Oath Holdings Inc.

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Federal Circuit Summary - Before Dyk, Reyna, and Taranto, per curiam. Petition for Writ of Mandamus from the District Court for the Eastern District of New York. Summary: In a case pending before TC Heartland was...more

WilmerHale

Federal Circuit Patent Updates - September 2018

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Hyatt v. Pato (No. 2017-1722, 9/24/18) (Reyna, Wallach, Hughes) - Hughes, J. Reversing dismissal for lack of subject matter description stating, “the exclusive jurisdiction of this court and the Eastern Virginia district...more

WilmerHale

Federal Circuit Patent Updates - August 2018

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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

Petition For Writ Of Mandamus Not An End Run Around Cuozzo

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The Federal Circuit recently denied Power Integrations, Inc.’s (“PI”) attempt to obtain a writ of mandamus to circumvent the bar in 35 U.S.C. § 314(d) to appeal the Patent Trial and Appeal Board’s (“PTAB”) decisions denying...more

Knobbe Martens

In Re: Power Integrations, Inc.

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Federal Circuit Summary - Before O’Malley, Bryson, and Chen. Appeal from the Patent Trial and Appeal Board. Summary: A writ of mandamus cannot be used as an alternative means of obtaining appellate review of...more

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