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The Federal Circuit Swings the Door to Anti-Suit Injunctions Back Open

November 8, 2024 | Blog | By Michael Renaud, Courtney Herndon, Hannah Edge

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The New Rubric for Obviousness-Type Double Patenting

October 21, 2024 | | By Alex Trimble, PhD

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Trade Secret Thieves, Beware! The DTSA Can Reach You and Your Sales Around the Globe.

July 30, 2024 | Blog | By Michael Renaud, Brad M Scheller, Adam Samansky, Laura Petrasky

This month the Seventh Circuit in Motorola Sols., Inc. v. Hytera Commc’ns Corp. Ltd. upheld the Northern District of Illinois in finding that the Defend Trade Secrets Act (DTSA) has extraterritorial reach. Companies can seek relief when misappropriation occurs abroad and for the sales lost abroad when an act in furtherance of the trade secret misappropriation occurs in the United States.

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Energy & Sustainability IP Updates — November 2023

November 1, 2023 | Article | By Brad M Scheller

Read about Tesla’s ongoing patent litigation battles with Autonomous Devices and CAP-XX Ltd. and patent infringement cases filed against Tesla in New York and Texas.

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Energy & Sustainability IP Updates — August 2023

August 29, 2023 | Article | By Brad M Scheller

Read about patent litigation involving Tesla and electric vehicle technology, the DOE’s new critical mineral assessment, EV and powertrain manufacturer Proterra’s decision to file for bankruptcy, and battery maker Freyr Battery.

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An Overview of Shotgun Pleadings in the Federal Courts

August 7, 2023 | Blog | By Joe Rutkowski, Peter Cuomo

Advice that may have served House of Pain in their 1992 hit song, “Jump Around,” to “bring a shotgun” to battle likely does not translate well to plaintiffs in federal litigation contemplating bringing a “shotgun” pleading to court. In this article we explore types of shotgun pleadings identified by courts and outline potential responses to a shotgun pleading.

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Split Decisions: Can a Complaint Serve as Knowledge of Indirect Infringement?

July 21, 2023 | Blog | By Daniel Weinger, Simone Yhap

A frequent issue seen within patent litigation is whether serving a complaint satisfies the knowledge requirement for post-complaint indirect infringement. This issue affects the amount of, if any, damages a patent owner can obtain.

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Supreme Court Unanimously Affirms Amgen Repatha® Antibody Patents Invalid for Lack of Enablement

May 25, 2023 | Blog | By Joe Rutkowski, Peter Cuomo, Thomas Wintner, Adam Samansky, Terri Shieh-Newton

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Federal Circuit Affirms Delisting of REMS System Patent from FDA Orange Book

March 6, 2023 | Blog | By Peter Cuomo, Adam Samansky, Peter McFadden

On February 24, 2023, the U.S. Court of Appeals for the Federal Circuit, in Jazz Pharmaceuticals, Inc., v. Avadel CNS Pharmaceuticals, LLC, Case No. 23-1186, affirmed a decision from the District Court of Delaware directing Jazz Pharmaceuticals, Inc. (“Jazz”) to delist U.S. Patent No. 8,731,963 (the “’963 patent”) from the FDA’s Approved Drug Products with Therapeutic Equivalence Evaluations publication (the “Orange Book”). The district court held, and the Federal Circuit affirmed, that the ’963 patent, which covers Risk Evaluation and Mitigation Strategies (“REMS”) for the narcolepsy drug Xyrem®, failed to claim a drug or method of use, and was thus improperly listed.

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Year in Review: The Most Popular IP Posts of 2022

January 5, 2023 | Blog | By Christina Sperry

Innovators developing IP strategies for 2023 are reflecting on last year’s key IP issues, including entity size designations for US patent applications, erasures of patent damage awards due to flawed expert opinions, and developments involving the ITC, artificial intelligence and machine learning, and inter partes reviews.

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On December 19, 2022, U.S. Magistrate Judge Robert W. Lehrburger of the Southern District of New York recommended denying a motion to dismiss claims of willful infringement of eight patents asserted in a Second Amended Complaint (“SAC”). The recommendation finds (1) that pleading willful infringement does not require allegations of egregious infringing conduct and (2) that requisite knowledge of the asserted patents and alleged infringement could be satisfied by the filing of the Original Complaint along with plaintiff’s email (“pre-SAC email”) informing the defendants of additional alleged infringement of two patents prior to filing the SAC.

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The Prevailing Winds of Public Interest: Tailoring Injunctive Relief in Patent Litigation Through Carve Outs

December 7, 2022 | Blog | By Andrew DeVoogd, Gabriella Flick, Serge Subach

Grants of permanent injunctions in U.S. district court patent litigation remain uncommon since the landmark decision in eBay v. MercExchange. LexMachina’s 2021 Patent Litigation Report highlights that courts grant fewer than fifteen permanent injunctions annually in the U.S. One such injunction was recently granted in Siemens Gamesa Renewable Energy A/S, v. General Electric Co. (“Siemens”) by the District of Massachusetts. That case is notable not only because it granted an injunction, but also because it took a novel approach to balancing public interest in doing so. Specifically, the public interest considerations implicated public green energy projects. In view of the Inflation Reduction Act (“IRA”), which was signed into law and provides incentives to combat climate change by investing in technologies such as solar and wind energy, such public interest considerations may become more common.

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Lost Profits – Who’s Sale is it Anyway?

August 1, 2022 | Blog | By Brad M Scheller, Robert Sweeney

Patent owners can recover lost profits when (1) there is a demand for a patented product, (2) an absence of acceptable non-infringing alternatives, (3) the patentee had the manufacturing and marketing capacity to exploit demand for the product, and (4) the patentee can establish the amount of profit it should have made but-for the accused product. Mentor Graphics Corp. v. EVE-USA, Inc., 851 F.3d 1275, 1285 (Fed. Cir. 2017) (reciting the Panduit factors). An implicit threshold requirement of this legal framework is actually being the entity that earns profits on the patented product.

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On July 12, 2022, U.S. District Judge Alan D. Albright of the Western District of Texas denied alleged infringer Lenovo’s motion to dismiss ACQIS’s willful and indirect infringement and enhanced damages claims, holding that patent owners need not allege egregious infringing behavior to assert a claim of willful infringement.

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Rule 11—Use It Wisely

July 20, 2022 | Blog | By Brad M Scheller, Robert Sweeney

The power of Rule 11 – as with any weapon – must be employed diligently and with good judgment, as recently reiterated by the Northern District of Ohio.

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SCOTUS Declines to Answer Calls for Clarification in American Axle v. Neapco

July 13, 2022 | Blog | By Brad M Scheller, Andrew DeVoogd, Matthew Karambelas, Amanda Metell

The United States Supreme Court denied certiorari in the closely observed case American Axle & Manufacturing, Inc., v. Neapco Holdings LLC. The Court’s refusal to hear the case disappointed patent practitioners nationwide—and likely also members of the Federal Circuit Court of Appeals, which itself has been clamoring for guidance.

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Rule 11 Sanctions Appropriate for Frivolous Inventorship Pleading

July 13, 2022 | Blog | By Michael Renaud, Brad M Scheller, Robert Sweeney

While litigants may oft use Rule 11 prematurely or inappropriately, it does have its proper time and place when deployed as intended. In the patent context, examples include when claim elements are clearly missing in an accused product but a patent owner refuses to withdraw infringement allegations or, conversely, when a defendant continues to contest infringement when all claim limitations are clearly present in the accused product. Rule 11 grounds also arise in different contexts, as in the recent case of Imprenta Services, Inc.v. Karll.

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5th Circuit Confirms Avanci SEP Pool is Safe: No Antitrust Issue with Avanci’s Pool

July 6, 2022 | Blog | By Daniel Weinger, Michael Renaud, Bruce Sokler, James Thomson

Avanci’s pool retains its 5th Circuit win, in a slightly different way, after an unusual turn of events where the panel rescinded its prior opinion and issued a new one. The new opinion  affirms the district court’s ruling that Continental failed to state a claim under the Sherman Act (antitrust laws) thereby dismissing the case.  The original opinion found that Continental lacked standing to pursue its claims because it was not a third party beneficiary of the standard setting organization contract. Although the new ruling leaves some questions unanswered in the long-running dispute between a would-be implementer (Continental) and holders of standard essential patents (SEPs), the opinion rejects applying the antitrust laws in the SEP/FRAND context.

 
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DOJ Breaking with Big Tech Approach to SEPs

June 13, 2022 | Blog | By Daniel Weinger, Michael McNamara, Michael Renaud, James Thomson

On June 8, 2022, the DOJ, USPTO, and the National Institute of Standards and Technology (NIST) (collectively, the Agencies) issued a new statement on FRAND licensing (2022 Statement) providing no set policy regarding Standards Essential Patents (SEPs), which should inure to the benefit of patent owners. By issuing this statement and declining to adopt their 2021 Draft Policy (2021 Draft Policy), the Agencies effectively neutralized their policy on SEP licensing and provide no guidance to parties in SEP licensing discussions. Even with no guidance, however, the Agencies are reserving the right to police negotiations and prosecute opportunistic behavior by either side in a case-by-case basis, creating a circumstance where negotiators may not know if they are raising the Agencies’ ire. Though knowledge of the evolving multinational case law related to SEP license negotiation provides reasonable understanding of the necessary procedure. 

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Rules for Complainant Success in ITC Trade Secret Litigation

May 16, 2022 | Blog | By Jonathan Engler, Michael Renaud

Successful ITC trade secret complainants follow these rules before filing the complaint in Section 337 investigations:

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