Patent Litigation
Viewpoints
Filter by:
Federal Circuit Appeals Continue as Scheduled Without In-Person Arguments
May 19, 2020 | Blog | By Brad M Scheller , Jessica Perry
Yesterday the United States Court of Appeals for the Federal Circuit released modifications to court procedures, indicating that all in-person oral arguments are suspended until further notice.
Read more
Federal Circuit Upholds Application of Dedication-Disclosure Doctrine at the Pleading Stage
May 15, 2020 | Blog | By Thomas Wintner, Adam Samansky, Nana Liu
On May 8, 2020, the Court of Appeals for the Federal Circuit affirmed the District of Delaware’s application of the disclosure-dedication doctrine in granting a motion for judgment on the pleadings in Eagle Pharmaceuticals Inc. v. Slayback Pharma LLC, No. 19-1924.
Read more
Actions Speak Louder Than Words: Germany’s Highest Court tells SEP implementers that simply saying that you are willing to license is not enough, and hold-out will not be tolerated
May 12, 2020 | Blog | By Michael Renaud, James Wodarski, Matthew Galica
After its recent ruling in Sisvel’s favor, Germany’s highest court on patent matters is expected to issue a highly favorable and detailed decision for standard-essential patent (SEP) owners seeking to prevent patent “hold-out” by unwilling licensees.
Read more
Attorney Fees Denied by Federal Circuit Where Case Was Voluntarily Dismissed Without Prejudice
April 16, 2020 | Blog | By Daniel Weinger, Meena Seralathan
In an April 13, 2020, decision, the Federal Circuit held that neither a voluntary dismissal under Federal Rule of Civil Procedure 41(a)(1)(A)(i), nor a stay of a patent lawsuit pending the results of a patent reexamination, constitute a final judicial decision for the purposes of recovery of legal fees under 35 U.S.C. § 285.
Read more
PTAB Must Give Parties Notice of Unpatentability Theories when Considering Motions to Amend
April 14, 2020 | Blog | By Daniel Weinger
On Thursday, the Federal Circuit ruled that the Patent Trial and Appeal Board (“PTAB”) must give the parties proper notice if considering a sua sponte theory of unpatentability in relation to a motion to amend.
Read more
Celgene v. Sun Pharma Global: Satisfying Subject Matter Jurisdiction Under § 271(e)(2)
April 13, 2020 | Blog | By Adam Samansky, Peter Cuomo, Joe Rutkowski
On April 6, 2020, the U.S. District Court for the District of New Jersey, in Celgene Corp. v. Sun Pharma Global FZE, No. 19-cv-10099, denied Sun’s motion to dismiss Celgene’s claims that Sun’s generic Revlimid® (lenalidomide) Abbreviated New Drug Application (ANDA) product infringes three patents not listed in the Orange Book for Revlimid® and for which Sun did not make any Paragraph IV certifications.
Read more
Federal Circuit Denies En Banc Rehearing of Panel Decision in Arthrex, Which Held PTAB Appointments Were Unconstitutional
March 25, 2020 | Blog | By Daniel Weinger, Michael Newman, Matthew Galica
This week the en banc Federal Circuit declined to revisit a panel ruling that found the appointment of Administrative Patent Judges (“APJs”) of the Patent Trial and Appeal Board (“PTAB”) violates the Appointments Clause of the Constitution. This decision is notable for at least two reasons. First, it declined to review or disturb the panel’s conclusion and its remedy—vacatur and remand of PTAB decisions made by unconstitutionally appointed APJs. Second, four of the Federal Circuit judges dissented, disagreeing with the panel’s finding and saying that its corresponding remedy improperly rewrites the statute contrary to Congressional intent.
Read more
Samsung v. Prisua Engineering Corp.: Indefiniteness Rulings Off-Limits for the Patent Trial and Appeal Board
March 5, 2020 | Blog | By Michael Newman, Kevin Amendt
The Court of Appeals for the Federal Circuit ruled in February that the Patent Trial and Appeal Board (PTAB) cannot cancel claims for indefiniteness in an inter partes review (IPR) proceeding. The case is Samsung Electronics America, Inc., v. Prisua Engineering Corp., case number 19-1169, in the U.S. Court of Appeals for the Federal Circuit.
Read more
Too little, too late: Federal Circuit holds that cessation of sales does not alleviate patentee’s affirmative duty to mark
February 26, 2020 | Blog | By Daniel Weinger
In a February 19, 2020 decision the Federal Circuit held that a patentee does not escape 35 U.S.C. § 287’s marking requirement merely by ceasing sales of the practicing product. Instead, the Federal Circuit held that once a patentee (or its licensees) sell articles that practice the patent, the obligation to mark in order to obtain pre-suit damages continues regardless of whether sales of the product in question cease.
Read more
Infringement Contentions: Fair Notice?
February 18, 2020 | Blog | By Michael Renaud, Adam Rizk, Catherine Xu
Some respondents at the ITC have taken advantage of using infringement contentions as a procedural tool to deny patent owners from getting their day in court. In some investigations, respondents have gone so far as to delay their own production of discovery until after the infringement contention deadline, then claim lack of fair notice when the patent owner uses the late discovery in its expert report.
Read more
Federal Circuit Awards Attorney Fees to the Defendant Following Dismissal of Lawsuit by Plaintiff
January 7, 2020 | Blog | By Ken Jenkins
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.”
Read more
Mintz Rings in 2020 with Top 10 Recognition for ITC Practice
January 6, 2020 | Blog
Mintz is recognized as among the top ten firms in ITC Section 337 litigation by Patexia in its inaugural "ITC Intelligence Report". We are pleased to be among the firms included in this publication and thrilled that it has come on the heels of a great year at the ITC for the Mintz team.
Read more
Fox Factory v. SRAM – According to CAFC, No Presumption of Nexus for Bicycle Chainring Patents; IPR Decision Reversed and Remanded
January 2, 2020 | Blog | By Adam Samansky, Andrew DeVoogd, Joe Rutkowski
On December 18, 2019, the United States Court of Appeals for the Federal Circuit, in Fox Factory v. SRAM, Nos. 2018-2024 and 2018-2025, reversed the Board’s Final Written Decision in a pair of inter partes reviews (“IPRs”) that the challenged claims of U.S. Patent No. 9,182,027 (“the ’027 patent”) were not invalid as obvious, and remanded for further proceedings.
Read more
Out with the old, and in with the new: joint policy statement and recent cases confirm that injunctive relief on standard-essential patents is available at the ITC
December 23, 2019 | Blog | By Michael Renaud, James Wodarski, Andrew DeVoogd, Matthew Galica
When licensing discussions with an intransigent implementer break down, SEP owners face a difficult question: what remedies are available (injunctive relief or damages) in each U.S. court (International Trade Commission and U.S. district courts) as redress against infringement?
Read more
Federal Circuit affirms Safe Harbor ruling and $70 million award in Amgen Inc. v. Hospira, Inc.
December 20, 2019 | Blog | By Thomas Wintner, Peter Cuomo, Nana Liu
On December 16, 2019, the Court of Appeals for the Federal Circuit issued an opinion that fully upheld the District of Delaware’s denial of Hospira, Inc.’s motion for judgment as a matter of law (JMOL), or alternative motion for new trial, in Amgen Inc. v. Hospira, Inc., Nos. 2019-1067, 2019-1102.
Read more
Means-Plus-Function Structure – Can It Be Incorporated by Reference?
December 18, 2019 | Blog | By Peter Cuomo, Serge Subach
In its recent decision, Fiber, LLC. v. Ciena Corp., No. 2019-1005 (Fed. Cir. Nov. 21, 2019), the Court of Appeals for the Federal Circuit (Federal Circuit) issued a reminder that the structure necessary to satisfy the definiteness requirement for a means-plus-function in a claim cannot normally be found in material incorporated by reference.
Read more
District Court denies motion to dismiss despite Federal Circuit’s finding of patent invalidity in appeal of parallel ITC investigation
December 18, 2019 | Blog | By Andrew DeVoogd, Nana Liu
On December 5, 2019, Judge David C. Godbey of the Northern District of Texas denied the defendant Diebold Nixdorf, Inc.’s (“Diebold”) motion to dismiss under Rule 12(b)(6), in Nautilus Hyosung Inc. v. Diebold, Inc. et al., 3-16-cv-00364 (N.D. Tex.). Diebold filed the motion after the Federal Circuit reversed the International Trade Commission’s (“ITC”) finding of infringement in a parallel Section 337 investigation. Instead, the Federal Circuit held that the one patent in the suit was invalid due to indefiniteness.
Read more
Supreme Court Rejects USPTO Attorney Fee Policy
December 17, 2019 | Blog | By Michael McNamara, Sean Casey
On December 11, 2019, the U.S. Supreme Court struck down the U.S. Patent and Trademark Office’s (USPTO) controversial policy of shifting attorneys’ fees in Peter v. NantKwest, Case No. 18-801. The Court ruled that the USPTO policy ran counter to the long-accepted “American Rule,” which says “[e]ach litigant pays his own attorney’s fees, win or lose, unless a statute or contract provides otherwise.”
Read more
Relying on Outside Prior Art in an IPR – Not so fast!
December 10, 2019 | Blog | By Daniel Weinger, Serge Subach
The Court of Appeals for the Federal Circuit (CAFC) has recently reminded the Patent Trial and Appeal Board (the Board) that it may not rely on evidence and arguments that fall outside the scope of the instituted grounds during Inter Partes Review (IPR) proceedings. In re IPR Licensing, Inc., No. 2018-1805 (Fed. Cir. Nov. 22, 2019).
Read more
PTAB allows Amending Claims on Grounds not raised by Petitioner, but were Addressed by the District Court in its Finding of Indefiniteness
December 10, 2019 | Blog | By William Meunier
To amend challenged claims during an Inter Partes Review (IPR), the patent owner must show that the proposed amendment responds to a ground of unpatentability at issue in the IPR trial.
Read more
Explore Other Viewpoints:
- AI: The Washington Report
- Antitrust
- Appellate
- Arbitration, Mediation & Alternate Dispute Resolution
- Artificial Intelligence
- Awards
- Bankruptcy & Restructuring
- California Land Use
- Class Action
- Complex Commercial Litigation
- Construction
- Consumer Product Safety
- Corporate Governance (ESG)
- Cross-Border Asset Recovery
- Debt Financing
- Direct Investing (M&A)
- Diversity
- EB-5 Financing
- Education & Nonprofits
- Election 2024
- Employment
- Energy & Sustainability
- Environmental (ESG)
- Environmental Enforcement Defense
- Environmental Law
- Environmental, Social, and Corporate Governance (ESG)
- FDA Regulatory
- False Claims Act
- Federal Circuit Appeals
- Financial Institution Litigation
- Government Law
- Growth Equity
- Health Care
- Health Care Compliance, Fraud and Abuse, & Regulatory Counseling
- Health Care Enforcement & Investigations
- Health Care Transactions
- Health Information Privacy & Security
- IP Due Diligence
- IPRs & Other Post Grant Proceedings
- Immigration
- Insolvency & Creditor Rights Litigation
- Institutional Investor Class Action Recovery
- Insurance & Financial Services
- Insurance Consulting & Risk Management
- Insurance and Reinsurance Problem-Solving & Dispute Resolution
- Intellectual Property
- Investment Funds
- Israel
- Licensing & Technology Transactions
- Life Sciences
- Litigation & Investigations
- M&A Litigation
- ML Strategies
- Medicare, Medicaid and Commercial Coverage & Reimbursement
- Mergers & Acquisitions
- Patent Litigation
- Patent Prosecution & Strategic Counseling
- Pharmacy Benefits and PBM Contracting
- Portfolio Companies
- Privacy & Cybersecurity
- Private Client
- Private Equity
- Pro Bono
- Probate & Fiduciary Litigation
- Products Liability & Complex Tort
- Projects & Infrastructure
- Public Finance
- Real Estate Litigation
- Real Estate Transactions
- Real Estate, Construction & Infrastructure
- Retail & Consumer Products
- Securities & Capital Markets
- Securities Litigation
- Social (ESG)
- Special Purpose Acquisition Company (SPACs)
- Sports & Entertainment
- State Attorneys General
- Strategic IP Monetization & Licensing
- Tax
- Technology
- Technology, Communications & Media
- Technology, Communications & Media Litigation
- Trade Secrets
- Trademark & Copyright
- Trademark Litigation
- Value-Based Care
- Venture Capital & Emerging Companies
- White Collar Defense & Government Investigations
- Women's Health and Technology