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, Rithika Kulathila, Kara E. Grogan
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.
Commission Reverses Apple Infringement Finding, Thereby Mooting the Public Interest Inquiry...For Now
March 27, 2019 | Blog | By Michael Renaud, James Wodarski, Sandra Badin, Rithika Kulathila
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.
PanOptis’ Recent Victory against Huawei Demonstrates Why an International Enforcement Approach Is Advisable for Standard-Essential Patents
March 21, 2019 | Blog | By Michael Renaud, James Wodarski, Matthew Galica
PanOptis Patent Management, LLC (“PanOptis”) was recently awarded enhanced damages and ongoing royalties as a result of Huawei Technology Co. Ltd. (“Huawei”) infringing five of its patents, four of which were alleged to be essential to the 4G LTE technology standard. Despite the successful legal outcome, the size of PanOptis’ cumulative damages award for its standard-essential patents was less than some observers anticipated. This result emphasizes the importance of taking a global enforcement approach—leveraging international fora—to recoup meaningful compensation for standard-essential patents.
Precedential PTAB Panel Says Petitioners Can Join Their Own Earlier-Filed IPRs and Join New Issues in Limited Circumstance
March 19, 2019 | Blog | By William Meunier, Brad M Scheller, Vincent Ferraro, Rithika Kulathila
In its first decision since its inception, the Precedential Opinion Panel (“POP”) for the U.S. Patent Trial and Appeal Board (“Board”), in Proppant Express Investments, LLC v. Oren Technologies, LLC, IPR2018-00914, held that under 35 U.S.C. § 315(c) the Board has discretion to allow a party, in limited circumstances, to join its own earlier-filed inter partes review (“IPR”) and join new issues, even if the party was otherwise time-barred under 35 U.S.C. § 315(b). Specifically, the Board may use this discretion only where fairness requires it and to avoid undue prejudice to a party. The POP nevertheless denied Proppant Express Investments LLC’s (“Petitioner”) motion for joinder as Petitioner’s motion was “a result of Petitioner’s errors,” and therefore did not fall within the limited circumstances it envisioned.
Cert. Denied – Patent Owners Still Must Prove Unpatented Features Did Not Drive Consumer Purchasing to Rely on EMVR
March 18, 2019 | Blog | By Stephen J. Akerley, Philip C. Ducker, Adrian Kwan
On February 25, 2019, the Supreme Court denied Power Integrations, Inc.’s (“Power Integrations”) petition for writ of certiorari. The question presented to the Court was whether a plaintiff who had proven customer demand for an infringing product as a result of the patented feature was entitled to damages based on the entire market value of the product, or if the plaintiff also had to prove that the other unpatented features of the infringing product did not drive customer demand. The Court’s denial leaves a high burden for patentee’s relying on the Entire Market Value Rule (“EMVR”).
March 4, 2019 | Blog | By Michael Renaud, James Wodarski, Marguerite McConihe, Courtney Herndon
There is a common misconception the domestic industry economic prong requirement is insurmountable and an unknowable factor in a patent infringement action at the International Trade Commission (“ITC” or “Commission”), especially for foreign-based companies or non-practicing entities (“NPEs”). This could not be further from the truth. Those in the trenches at the ITC have seen recent trends that show with effective and strategic pre-suit diligence, creative thinking, and experienced counsel, the domestic industry requirement is no bar to a successful investigation.
Northern District of California Holds That Patent Suit Against Only Foreign Entities Is Permissible Even Where Inclusion of Domestic Entities Would Alter Venue Analysis
March 1, 2019 | Blog | By Andrew DeVoogd, Daniel Weinger, Matthew Galica, Chris Duerden
A recent order from the Northern District of California in AU Optronics Corporation America v. Vista Peak Ventures, LLC, 4:18-cv-04638 (CAND 2019-02-19) (“AU Optronics”), provides further guidance for patent venue analysis post-TC Heartland. Specifically, the order teaches that bringing a patent suit against only a foreign parent company while omitting its domestic subsidiary will likely not run afoul of TC Heartland’s seminal venue holding.
Continental Circuits LLC v. Intel Corp., et al: Federal Circuit Reemphasizes Prohibition on Importing a Preferred Embodiment into Patent Claims
February 20, 2019 | Blog | By Andrew DeVoogd, Kristina Cary, Matthew Galica, Tiffany Knapp
The Court of Appeals for the Federal Circuit (CAFC) recently issued a precedential opinion finding that a lower court had improperly incorporated an embodiment from the specification of the asserted patents into the claims. In its decision, the CAFC reaffirmed longstanding claim construction law: the claims of a patent are interpreted in light of a specification, but not everything expressed in the specification must be read into all of the claims.
February 12, 2019 | Blog | By John Bauer, Jeff Giering
In the February 1, 2019 decision of Mylan Pharms. Inc. v. Research Corp. Techs., 2019 U.S. App. LEXIS 3282, __ F.3d __, 2019 WL 405682, the Federal Circuit affirmed a PTAB final written decision (FWD) holding claims of U.S. Reissue Patent 38,551 not unpatentable. The Federal Circuit also held that time-barred petitioners who participated in an IPR as a result of joinder have standing to appeal. In finding such standing, the Federal Circuit analyzed the interplay between 35 U.S.C. §§ 315(b), 315(c), and 319.
Federal Circuit Dismisses Appeal of IPR Final Written Decision for Lack of Standing After Appellant Terminated Development of Potentially Infringing Pharmaceutical Product
February 11, 2019 | Blog | By Adam Samansky, Peter Cuomo, Joe Rutkowski
On February 7, 2019, the United States Court of Appeals for the Federal Circuit, in Momenta Pharmaceuticals v. Bristol-Myers Squibb, No. 2017-1694, dismissed Momenta’s appeal of a Final Written Decision in an Inter Partes Review (“IPR”) because Momenta had terminated its potentially infringing drug development program. According to the panel, this left Momenta without a sufficiently concrete interest in the action to satisfy the standing requirements of Article III of the United States Constitution.
PTAB Finds that Allowing IPR Petitioner to Avoid a Statutory Bar by Retroactively Adding Missing Real Party in Interest Is “In the Interest of Justice”
February 8, 2019 | Blog | By William Meunier, Daniel Weinger, Courtney Herndon
Recently, in ZTE (USA) Inc. v. Fundamental Innovation Int’l LLC, IPR2018-00425, Paper No. 34 (Feb. 6, 2019), the Patent Trial and Appeal Board (“PTAB”) allowed Petitioner’s motion to retroactively correct its defective IPR petition to identify a previously undisclosed real party in interest and thereby avoid a mandatory statutory bar.
February 6, 2019 | Blog | By Christina Sperry, Elissa Kingsland
On January 23, 2019, the Federal Circuit decided Supernus Pharmaceuticals, Inc. vs. Iancu and shed light on Patent Term Adjustment (PTA). PTA was established by the American Inventors Protection Act of 1999 and codified at 35 U.S.C. § 154(b), which defines three kinds of United States Patent and Trademark Office (USPTO) delays, “A” delay, “B” delay, and “C” delay, and sets forth certain reductions from the summation of the Type A, B, and C delays. One of these reductions relates to Applicant delays. For an overview of PTA, see our prior articles here and here.
January 30, 2019 | Blog | By Christina Sperry
As 2019 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 2018. According to many readers, hot topics included handling IDSs and obviousness during U.S. patent prosecution, blockchain, PTAB rules, and subject matter eligibility under Section 101.
January 22, 2019 | Blog | By Brad M Scheller, Peter Snell, Vincent Ferraro
Today the United States Supreme Court unanimously affirmed the Federal Circuit and held that it remains the law under the America Invents Act (AIA) that a confidential sale to a third party can trigger the “on sale” bar to patentability.
January 2, 2019 | Blog | By John Bauer, Vincent Ferraro, Courtney Herndon
Recently in Nuna Baby Essentials, Inc. v. Britax Child Safety, Inc., IPR2018-01683, Paper No. 11 (PTAB Dec. 18, 2018), the Patent Trial and Appeal Board (“Board”) denied Petitioner’s motion to excuse the late filing of exhibits to the Petition, finding that Petitioner failed to establish good cause for such late filing or that consideration of the late-filed exhibits would be in the interests of justice.
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).
December 20, 2018 | Blog | By Peter Snell, Rithika Kulathila
This year the Supreme Court, United States Court of Appeals for the Federal Circuit, and the Federal District Courts penned a number of opinions impacting patent law. Here are some key takeaways from the past year.
December 17, 2018 | Blog | By Stephen J. Akerley, Philip C. Ducker, Adrian Kwan
On November 30, 2018, the Federal Circuit affirmed a jury verdict awarding Sprint Communications Company, LP (“Sprint”) damages in the amount of $139,800,000.00 USD against Time Warner Cable, Inc., et al., for infringing five patents directed to Voice over IP technology (“VoIP”).
December 13, 2018 | Blog | By Michael Renaud, James Wodarski, Aarti Shah, Marguerite McConihe
As anticipated https://www.mintz.com/insights-center/viewpoints/2231/2018-10-alj-pender-apple-infringes-no-exclusion-order-qualcomm, on December 12, 2018, the International Trade Commission (“ITC”) issued a notice to review the Final Initial Determination and Recommended Determination (“FID”) issued by Administrative Law Judge (“ALJ”) Pender in In the Matter of Certain Mobile Electronic Devices and Radio Frequency and Process Components Thereof, 337-TA-1065 (“Certain Mobile Electronic Devices”), where ALJ Pender, despite finding that a valid patent was infringed and all jurisdictional requirements met, recommended that no Limited Exclusion Order be issued against Apple because it would be contrary to the public interest.
December 12, 2018 | Alert | By Michael Renaud, Adam Rizk, Robert Moore, Catherine Xu
Read about the preliminary injunction issued by the Fuzhou Intermediate People’s Court in China against Apple for its infringement of two Qualcomm patents.
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