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Invalidity of Terminal Patents Not Tied to Disclaimed Patent-in-Suit’s Expiration
October 6, 2021 | Blog | By Andrew DeVoogd, Courtney Herndon
In an interesting recent case of first impression, Judge Albright in the Western District of Texas denied a motion for judgement on the pleadings filed by Defendants Google and YouTube because the asserted patent was terminally disclaimed to two other patents that had been invalidated prior to its issuance. In VideoShare, LLC v. Google, LLC, 6:19-cv-663 (W.D. Tex. Sept. 29, 2021) (Albright, J.), the Court rejected the argument that the invalidation of the terminal patents was the “expiration” of the terminal patents, and that the asserted U.S. Patent No. 10,362,341 (“the ’341 patent”) was therefore also necessarily expired because it allegedly shares the expiration date of the terminal patents. Judge Albright concluded that, to the contrary, the prior finding of invalidity of the terminal patents had no impact on the expiry of the terminally-disclaimed ’341 patent.
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Custom Servers Pin Netflix In the Eastern District of Texas
September 30, 2021 | Blog | By Daniel Weinger, Jessica Perry
Patent owners searching for an appropriate venue for cases against alleged infringers may be able to point to the activity of an infringer’s agents, based on a new decision from the Eastern District of Texas. In recommending denial of a Netflix motion to dismiss, Magistrate Judge Payne explained that the nature and extent of Netflix’s relationship with internet service providers (“ISPs”) within the district gives rise to proper venue as a regular and established place of business of Netflix.
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N.D. Ill. Finds that a Foreign Parent Corp. May be Sued Under BPCIA Without the U.S. Subsidiary that Signed and Filed aBLA
September 21, 2021 | Blog | By Thomas Wintner, Adam Samansky, Joe Rutkowski
In what appears to be a case of first impression, on August 23, 2021 U.S. District Judge John Z. Lee of the United States District Court for the Northern District of Illinois denied a biosimilar applicant’s motion to dismiss a patent infringement suit brought under the Biosimilar Price Competition and Innovation Act (“BPCIA”) against a foreign parent corporation that did not file or sign the relevant abbreviated Biologics License Application (“aBLA”).
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Genus Claims: Foiled again by Written Description
September 16, 2021 | Blog | By Thomas Wintner
In late August of 2021, the Federal Circuit reversed a jury verdict of $1.2 billion in favor of Juno Therapeutics and Sloan Kettering Institute because the jury’s finding that four of the asserted patent claims did not lack adequate written description under 35 U.S.C. § 112 was not supported by substantial evidence.
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US Open for FRAND Business: The Fifth Circuit Vindicates Ericsson, Finding that Ericsson’s Offers were FRAND
September 3, 2021 | Blog | By Michael Renaud, Daniel Weinger, Meena Seralathan
The United States FRAND jurisprudence had a recent watershed moment in a decision that is sure to reverberate through the standard essential patent (SEP) world, and specifically SEP litigation in the United States. Earlier this week, a Fifth Circuit panel affirmed a jury verdict that found licensing offers made by Ericsson to HTC for Ericsson’s 4G SEPs complied with Ericsson’s FRAND obligations, the first jury verdict of its kind in the United States.
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Supreme Court Hammers Final Nail in the IP Bridge v. TCL Coffin
July 2, 2021 | Blog | By Michael Renaud, Daniel Weinger
On Monday, the Supreme Court denied TCL Communication’s certiorari petition, without comment, appealing the Federal Circuit’s ruling that the essentiality of a patent claim is a question for the jury rather than judges to resolve during claim construction. The denial of cert by the Supreme Court cements the Federal Circuit ruling which made proving infringement of standard essential patents easier by allowing reliance on the standard to show such infringement.
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Arthrex SCOTUS Ruling: The IPR Show Must Go On, Just with (a Bit) More Oversight
June 24, 2021 | Blog | By William Meunier , Brad M Scheller , Andrew DeVoogd
On Monday, in a highly-anticipated decision, a fractured Supreme Court issued its opinion in Arthrex v. Smith & Nephew, striking a portion of the America Invents Act (AIA) as unconstitutional—but providing an effectively toothless remedy.
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Fast Track to Justice for Trade Secret Theft at the ITC: New Senate Bill Would Expand ITC Authority to Curtail Trade Secret Theft by Foreign Governments
June 23, 2021 | Blog | By Michael Renaud, Rich Gervase, Nicholas Armington
Amid the continuing threat to U.S. intellectual property rights posed by foreign actors, the International Trade Commission (ITC) is poised to become the latest federal agency to bolster protections for U.S. IP owners. The ITC’s broad power to exclude the importation into the U.S. of products that infringe American intellectual property now has the potential to be made even more robust through a new bill introduced by Senators John Cornyn (R-Tex.), Christopher Coons (D-Del.), and Todd Young (R-Ind.) on June 15, 2021, that would provide expedited relief for trade secret theft victims.
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ITC’s New Pilot Program to Speed Investigations Merely Another Bite of the 100-Day Pilot Program Apple?
May 18, 2021 | Blog | By Daniel Weinger
Over the last decade, patent litigation has exploded at the International Trade Commission (“ITC”), which has caused the ITC to seek out ways to increase efficiency. Several years ago, the ITC introduced an early 100-Day pilot program to dispose of dispositive issues early on in investigations. While now a mainstay, the 100-Day pilot program is rarely utilized.
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The Federal Circuit Provides New Guidance for Patent Licensees Wishing to Challenge the Licensed Patent’s Validity
April 21, 2021 | Blog | By Brad M Scheller , Peter Cuomo, Monique Winters Macek, Mark Hammond
The Federal Circuit in Apple Inc. v. Qualcomm Incorporated handed down a decision on April 7, 2021 that provides guidance on the determination of standing for patent licensees who wish to contest the validity of a patent or patents in a licensed portfolio.
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District of Delaware Recites Policy Rationale for Dismissing Willful and Indirect Infringement Claims for Failure to Plead Pre-Suit Knowledge of Infringement
April 5, 2021 | Blog | By Adam Samansky, Peter Cuomo, Joe Rutkowski
On March 24, 2021, U.S. District Judge Colm F. Connolly of the District of Delaware, granted a defendant’s motion to dismiss claims for contributory and induced infringement and enhanced damages under 35 U.S.C. § 284 because the complaint alleged knowledge of the asserted patents solely based on averments in prior original and amended complaints in the same lawsuit.
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Good News/Bad News: Patent Owners and Petitioners Both Make Gains in CAFC Uniloc Decision
March 31, 2021 | Blog | By William Meunier , Sean Casey
The Federal Circuit’s recent Uniloc 2017 v. Facebook Inc. decision is a mixed bag of good and bad news for both patent owners and inter partes review petitioners. On the plus side for patent owners (but not for petitioners), the Federal Circuit determined that the so-called “No Appeal” provision does not necessarily apply to 35 U.S.C. § 315(e)(1), and, therefore, a patent owner may still appeal a Patent Trial and Appeal Board determination that a petitioner is not estopped from maintaining an IPR under § 315(e)(1).
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Doctrine of Assignor Estoppel to be Reviewed by U.S. Supreme Court
February 25, 2021 | Blog | By Christina Sperry, Monique Winters Macek
On January 8, 2021, the U.S. Supreme Court agreed to hear a case calling for it to abolish or limit the doctrine of assignor estoppel. See Minerva Surgical, Inc. v. Hologic, Inc., et al., No. 20-440, 2021 WL 77248 (U.S. Jan. 8, 2021). Mintz previously discussed the Federal Circuit’s decision, which found assignor estoppel to be applicable.
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Copy Cats II: Nexus of Copying Required to Substantiate Non-Obviousness
February 17, 2021 | Blog | By Ken Jenkins
On January 28, 2021, the Federal Circuit affirmed the general principle that the mere fact of copying by an accused infringer is insufficient to rebut a charge of obviousness (L’Oreal USA, Inc. v. Olaplex, Inc.; appeal from PGR2018-00025; non-precedential).
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Federal Circuit Says Automated Systems Are Not Abstract when Tied to Improvements
February 9, 2021 | Blog | By Michael Van Loy, F. Jason Far-hadian, Mark Hammond
It is now over 10 years since the Bilski decision was handed down by the United States Supreme Court. In that decision and several other decisions that followed (i.e., Mayo, Myriad, and Alice), the Supreme Court pronounced patent claims directed to abstract ideas not eligible for patent protection.
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Year in Review: The Most Popular IP Posts of 2020
January 14, 2021 | Blog | By Christina Sperry
As 2021 begins and intellectual property (IP) strategies are being developed for the new year, it is a good time to reflect on what IP issues were prominent in 2020. According to many readers, hot topics included Chinese foreign filing licenses, patenting involving either artificial intelligence (AI) or COVID-19, inter partes review, and attorney fee awards.
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Is This Seat Taken? A Chinese IP Court Proclaims Its Authority to Declare Global FRAND Terms
December 7, 2020 | Blog | By Michael Renaud, James Wodarski, Matthew Galica
A Chinese Court recently decided that it has the willingness, and jurisdiction, to set a global licensing rate that is fair, reasonable, and non-discriminatory (“FRAND”) for standard essential patents (“SEP”).
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No Pleading, No Problem: Court Denies Motion to Dismiss and Bifurcates Willful Infringement Determination, in Absence of Affirmative Willful Infringement Claim
November 13, 2020 | Blog | By Adam Samansky, Peter Cuomo, Joe Rutkowski, Courtney Herndon
Recently in Nike, Inc. v. Skechers U.S.A., Inc., 2:17-cv-08509 (C.D. Cal.) (October 26, 2020), the U.S. District Court for the Central District of California granted-in-part and denied-in-part Defendant, Skechers U.S.A., Inc.’s (“Skechers”), motion to limit Plaintiff, Nike, Inc.’s (“Nike”), claim seeking attorney’s fees related to the infringement of its eight asserted design patents, resulting in the bifurcation of the willfulness issue from the trial on the merits.
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Recreating the Prior Art
October 7, 2020 | Blog | By Andrew D. Skale
In high-stakes litigation, parties go to great lengths to prove their case. One such example is ongoing litigation between two giants in the paint and coatings world. Sherwin-Williams Co. and PPG Industries, Inc. are involved in a patent infringement dispute over BPA-free can coatings.
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