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One Size Does Not Fit All When It Comes to Economic Theories Used to Determine Royalty Rates
July 1, 2019 | Blog | By Michael Renaud, James Wodarski, Matthew Galica
Calculating royalty rates as part of a patent dispute often becomes a hotly-disputed issue, where opposing economic theories from expert witnesses are pinned against one another. As a litigant, care must be taken when deciding which economic theory to advance—and what facts to rely on—in support of a particular royalty rate. Given the varying and unique nature of disputes, a singular economic approach to determining a royalty rate is impractical and, oftentimes, inappropriate.
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District of Delaware Dismisses ANDA Applicant for Lack of Venue under TC Heartland and In re Cray
June 27, 2019 | Blog | By Joe Rutkowski
On June 17, 2019, the United States District Court for the District of Delaware, in Novartis Pharmaceuticals Corp. v. Accord Healthcare Inc., et al., No. 18-cv-01043, held that venue was not proper in Delaware over Mylan Pharmaceuticals Inc. (“MPI”) in connection with Novartis’s Hatch-Waxman patent infringement claim arising from MPI’s submission of an Abbreviated New Drug Application (“ANDA”) seeking approval to market a generic version of the drug, Gilenya® (fingolimod).
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Supreme Court Declines to Address the Question of Article III Standing to Appeal a Final Written Decision from the PTAB
June 20, 2019 | Blog | By Daniel Weinger
This week, the Supreme Court left open the question of Article III standing with regards to appealing a final written decision from the Patent Trial and Appeals Board (“PTAB”) that is favorable to the patent owner. On Monday, the Supreme Court denied two petitions for certiorari that sought to appeal final written decisions (“FWD”) adverse to the petitioner in an inter partes review proceeding, in that the PTAB declines to cancel all claims under review.
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Emerging Legal Trends AI: Can Israel Join the U.S. and Europe as a Leader in AI Protections?
June 10, 2019 | Blog | By Michael Renaud, Asa Kling, Marguerite McConihe
The intersection of artificial intelligence (AI) and intellectual property invokes fascinating theoretical questions. With these questions, however, come significant practical issues that businesses, legal practitioners, and governments need to address proactively. Israel is embracing the challenge.
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Score This One in Favor of Standard-Essential Patent Owners: Recent Decision Makes Satisfying FRAND Obligations Easier
June 5, 2019 | Blog | By Michael Renaud, James Wodarski, Matthew Galica
A recent decision in the Eastern District of Texas should provide standard-essential patent (“SEP”) owners with more clarity and optimism when negotiating SEP licenses. Coming on the heels of Judge Koh’s decision in the FTC’s dispute with Qualcomm, Judge Gilstrap found Ericsson to have satisfied its fair, reasonable and non-discriminatory (“FRAND”) obligations when negotiating with HTC due in large part to a finding that it had negotiated in good faith.
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The International Trade Commission Has Broad Jurisdictional Authority, Including Indirect Sellers
June 3, 2019 | Blog
On April 26, 2019, Administrative Law Judge (“ALJ”) Lord clearly stated in Certain Intraoral Scanner and Related Hardware and Software that the International Trade Commission’s (“ITC”) jurisdictional authority extends to accused infringers whose activities have “some nexus” to an element of section 337. ALJ Lord found that involvement in training and supporting resellers, distributors and end users in the infringing goods in the United States was sufficient to put that respondent under the broad reach of section 337, even if they did not import or directly sell the products.
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Federal Circuit Affirms that the ITC Cannot Investigate an FDCA Violation without the FDA’s say-so
May 30, 2019 | Blog
In Amarin Pharma, Inc. v. Int’l Trade Comm’n (18-1247), the Federal Circuit affirmed the International Trade Commission’s (“ITC”) finding that Amarin’s false advertising claim under § 43(a) of the Lanham Act was precluded by the Federal Food, Drug, and Cosmetic Act (“FDCA”) because these claims require the FDA’s guidance on whether possible non-compliance of the provision is a violation of the FDCA. The court also found that the Commission may decline to institute an investigation where there is no cognizable claim under § 337.
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Claim Construction of “Customary and Ordinary” Meaning Does Not Justify Amendment of Noninfringement and Invalidity Contentions
May 29, 2019 | Blog | By Andrew DeVoogd, Courtney Herndon
Recently, in a patent infringement action pending in the Eastern District of Michigan, Webasto Thermo & Comfort N. Am., Inc. v. BesTop, Inc., No. 2:16-cv-13456, Order No. 209 (E.D. Mich. May 20, 2019) (Borman, J.), the court overruled defendant BesTop’s objections to the Special Master’s recommendation to grant plaintiff, Webasto’s, motion to strike BesTop’s second amended noninfringement and invalidity contentions.
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Performing a Service without Selling the Process Still Triggers the On-Sale Bar
May 24, 2019 | Blog | By Daniel Weinger, Will Perkins, Serge Subach
Services play a large role in today’s economy, and it is important to be mindful of how certain pitfalls that apply to product-based intellectual property rights also apply to method or process-based intellectual property (“IP”) rights. For example, the “on-sale bar” invalidates a patent on a product where a sale or offer to sell the product occurred more than a year prior to filing for a patent.
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Another Shoe Drops in the Qualcomm Patent Licensing Saga
May 24, 2019 | Blog | By Michael Renaud, Bruce Sokler, Rich Gervase
Just when observers thought Qualcomm could celebrate its successful litigation with Apple another decision has come down which could have major implications for Qualcomm’s business going forward.
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ITC ALJ McNamara in Apple-Qualcomm Investigation: Exclusion Orders Are Incentives to Design- Around
May 21, 2019 | Blog | By Michael Renaud, James Wodarski
In her April 16, 2019 Public Interest Findings, Administrative Law Judge (“ALJ”) McNamara decisively stated that antitrust issues disguised as competitive conditions arguments are not a factor in the International Trade Commission (“ITC”) proceeding between Apple and Qualcomm. See Mobile Electronic Devices II, Inv. No. 337-TA-1093, Analysis and Findings with Respect to the Public Interest, and Recommendation on Remedy and Bond, at 4 (April 16, 2019).
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District Court of Delaware awards an ongoing royalty that applies not just to adjudicated products but also to non-adjudicated products that are “not colorably different.”
May 13, 2019 | Blog | By Michael Renaud, Sandra Badin
Recently, in Godo Kaisha IP Bridge 1 v. TCL Commc’n Tech. Holdings Ltd., the Delaware District Court awarded the prevailing plaintiff in a patent infringement suit an ongoing royalty that covers not only the products adjudicated to infringe but also non-adjudicated products that were “not colorably different” from the adjudicated products. The court noted that the patent claims asserted by the plaintiff, IP Bridge, were found to be essential to the LTE standard because LTE phones do not operate on the LTE network without infringing the asserted claims.
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Where Both Parties Behave Badly in Litigation, Attorneys’ Fees Are Unlikely to Be Awarded
May 7, 2019 | Blog | By Andrew DeVoogd
On April 25, 2019, in Int’l Designs Corp., LLC, et. al. v. Hair Art Int’l, Inc., Judge George H. Wu in the Central District of California denied Hair Art’s motion for attorneys’ fees under 35 U.S.C. § 285. Judge Wu concluded that, based on an analysis of the totality of the circumstances, “[t]his case was certainly ‘exceptional,’ but it was exceptional in that both parties made litigation choices leading to a significant waste of party and judicial resources.” (Emphasis added.)
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Dueling Declaratory Judgment Suits Result in a Dismissal and Boomerang Transfer Back to the First-filed Forum Under TC Heartland
April 24, 2019 | Blog | By Adam Samansky, Peter Cuomo, Joe Rutkowski
On April 17, 2019, Judge Gilstrap of the United States District Court for the Eastern District of Texas, in Apicore v. Beloteca, No. 19-cv-00077, held that while the court could exercise personal jurisdiction over a generic drug manufacturer in connection with the patentee’s action seeking a declaratory judgment of noninfringement, venue was not appropriate in the Eastern District of Texas under the applicable patent venue statute, 28 U.S.C. § 1400(b).
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Collateral Estoppel Bars Assertion of Patent Claims That Do Not “Materially Alter the Question of Invalidity” Relative to Claims Invalidated in IPR Proceedings
April 10, 2019 | Blog | By Peter Snell
On April 4, 2019, Chief Judge Patti Saris of the United States District Court for the District of Massachusetts held in Intellectual Ventures I, LLC v. Lenovo Group Ltd. that a final determination of invalidity in inter partes review proceedings (“IPR”) collaterally estops the patent owner from asserting in district court another claim of the same patent that does not “materially alter the question of invalidity.” The court granted the defendant’s motion for summary judgment of invalidity as to that claim.
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Patent Claim Preamble Lessons from Arctic Cat Inc. v. GEP Power Products
April 9, 2019 | Blog | By Christina Sperry
The general rule is that a patent claim’s preamble does not limit the claim unless the preamble gives life, meaning, and vitality to the claim. The Federal Circuit’s recent decision in Arctic Cat Inc. v. GEP Power Products, Inc. (March 26, 2019) considers the situation where a patentee wants a preamble to be a required claim limitation, unlike the more typical situation where a patentee does not want a claim preamble to be limiting, such as in Pacing Technologies v. Garmin International previously discussed HERE. The court deciding in Arctic Cat that the preambles at issue were not required claim limitations highlights important considerations for patent application drafting and for crafting post-issuance arguments.
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When Is Pre-Acquisition Analysis of Patents Protected from Discovery During Litigation?
March 29, 2019 | Blog | By Andrew DeVoogd, Daniel Weinger
A Discovery Master in Limestone Memory Systems LLC v. Micron Tech., Inc. pending in the Central District of California recently provided additional guidance to practitioners and patent owners on this important question. The report, issued on February 19, 2019, sustained in part the plaintiff Limestone’s privilege and work product assertions related to pre-acquisition analysis of the asserted patents conducted by Acacia, Limestone’s parent company. In doing so, the report emphasized that courts have long held that attorney-client privilege may arise when a company obtains legal advice, while seeking to acquire patents, protecting from discovery communications between the acquiring company and inventors.
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Expert’s Lump-sum Damage Calculation is Not Inadmissible Because it Accounts for Future Sales of Potentially Non-accused Products
March 28, 2019 | Blog | By Andrew DeVoogd, Daniel Weinger
A recent order from the District of Delaware in Evolved Wireless, LLC v. Apple Inc., No. 15-00542 (“Evolved Wireless”) provides interesting guidance regarding the use of future sales in calculating lump-sum damages.
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Commission Reverses Apple Infringement Finding, Thereby Mooting the Public Interest Inquiry...For Now
March 27, 2019 | Blog | By Michael Renaud, James Wodarski, Sandra Badin
Yesterday afternoon, the International Trade Commission issued its Final Determination in Certain Mobile Electronic Devices and Radio Frequency and Process Components Thereof, 337-TA-1065. The 1065 Investigation is one of several actions Qualcomm has brought against Apple both here and abroad.
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