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Fractured Federal Circuit Panel Finds That Sovereign Immunity Does Not Prevent Exclusive Licensee from Pursuing Unlicensed Infringement Alone
July 28, 2020 | Blog | By Andrew DeVoogd, Daniel Weinger
Entities with patent-related relationships with state universities scored a victory under the rarely implicated (at least for patent practitioners) doctrine of sovereign immunity. For patent holders, sovereign immunity comes into play when a state actor, for example a state university, enters contracts related to patents, such as in Gensetix v. Baylor College of Medicine.
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Dead on Arrival? Federal Circuit Majority Finds That Substitute Claims Live On (Uniloc v. Hulu: Part 1)
July 28, 2020 | Blog | By Brad M Scheller
Last week a Federal Circuit panel in Uniloc 2017 LLC v. Hulu, LLC issued an important decision regarding inter partes review (IPR) before the Patent Trial and Appeal Board on two questions concerning contingent motions to amend—(i) whether the Office has statutory authority to review the patentability of substitute claims after a final federal-court judgement of invalidity of those claims and, if yes, (ii) whether that review of patentability may include analyzing the substitute claims for patent eligibility under 35 U.S.C. § 101.
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Federal Circuit: Licensees’ Failure to Mark Eliminates Entitlement to Pre-Suit Damages
July 27, 2020 | Blog | By Adam Samansky, Peter Cuomo, Matthew Karambelas, Courtney Herndon
Recently, in Packet Intelligence LLC v. NetScout Sys., Inc., No 19-2041 (July 14, 2020), the Court of Appeals for the Federal Circuit reversed a jury verdict of $3.5 million in pre-suit damages and vacated the trial court’s enhancement of that award because licensees of the asserted patents failed to properly mark allegedly patent practicing products.
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The Standard May Rule Them All: Federal Circuit Panel Appears Prepared to Find Standard Is Sufficient to Prove Infringement for SEP Compliant Products
July 9, 2020 | Blog | By Michael Renaud, James Wodarski, Daniel Weinger
Recent oral arguments at the Fed Circuit suggest that the U.S. may be taking steps which would enhance its attractiveness for SEP patent holders looking to resolve licensing disputes. The Federal Circuit heard oral argument on Monday, July 6th, in Godo Kaisha IP Bridge I v. TCL Commc’n Tech. Holdings Ltd., No. 19-2215, that may pave an easier path for owners of standard essential patents (“SEPs”) to prove literal infringement of products that comply with that standard.
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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.
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Federal Circuit Holds that Accused Infringers that Invalidate Asserted Patents at the PTAB Can Be a Prevailing Party Under Section 285
April 28, 2020 | Blog | By Daniel Weinger, Meena Seralathan
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 the asserted patent at the Patent Trial and Appeal Board (“PTAB”).
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Federal Circuit Finds IPRs Can Circumvent Assignor Estoppel
April 27, 2020 | Blog | By Daniel Weinger
On Wednesday, the Federal Circuit held that while assignor estoppel is applicable in district court proceedings, petitions for inter partes review continue to not be subject to the equitable remedy. Assignor estoppel is an equitable doctrine based on the principle of fair dealing that prevents a party who divests a patent from later challenging the validity of that patent.
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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.
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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.
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Understanding Antedating of a Prior Art Reference for a Patent
April 17, 2019 | Blog | By Christina Sperry
The Federal Circuit’s decision in ATI Technologies ULC v. Iancu (April 11, 2019) highlights the proper standard to use in evaluating whether a claimed invention was reduced to practice before the effective date of a prior art reference.
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Written Description in Amgen v. Sanofi: Is the Federal Circuit Possessed? Will SCOTUS Grant Certiorari?
January 2, 2019 | Blog | By John Bauer
In the continuing Amgen v. Sanofi saga, Amgen has asked SCOTUS to take up the issue of written description, which is currently established by showing “whether the disclosure…reasonably conveys…that the inventor had possession of the claimed subject matter as of the filing date.” Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010)(en banc)(emphasis added).
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USPTO Implementation of AIA Does Not Violate Due Process: Federal Circuit Affirms the PTAB Panel Determining Institution of an IPR can also Issue the Final Written Decision
January 15, 2016 | Blog | By William Meunier
In Ethicon Endo-Surgery, Inc. v. Covidien LP, a 2-1 panel split of the Federal Circuit held that neither the American Invents Act (“AIA”) nor the Constitution precludes the same panel of the Patent Trial & Appeal Board (“PTAB” or “Board”) from both deciding whether to institute an inter partes review (“IPR”) of a challenged U.S. Patent and making the final patentability determination in that IPR.
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