When Prior Terminal Disclaimers Continue to Punish Subsequent Applications: A Potential Danger in Filing an Overly-Broad Terminal Disclaimer
December 10, 2015 | Blog | By William Geary, Derek Constantine
A recent U.S. District Court decision has clarified a potential danger when filing terminal disclaimers that contain overly-broad language. The U.S. District Court for the Northern District of Illinois in Hagenbuch v. Sonrai Systems interpreted the terminal disclaimer language “I hereby disclaim the terminal part of any patent granted on the above-identified application or any continuation of it” as applying to any continuation application claiming priority from the application in which this terminal disclaimer was filed.
Mintz Convinces the Federal Circuit to Completely Reverse and Remand an Adverse IPR Final Written Decision for the First Time
December 9, 2015 | Article | By Michael Renaud, James Wodarski, William Meunier, Michael Newman, Nicholas Armington
Mintz has won extraordinary relief for its client, Straight Path IP Group, Inc., convincing the Federal Circuit to completely reverse and remand an IPR final written decision adverse to a patent owner for the first time.
October 2, 2015 | Alert | By James Wodarski, Andrew DeVoogd, Michael Renaud
On Thursday, September 17, 2015, in the fourth Federal Circuit opinion arising out of the patent skirmishes between global high technology titans Apple and Samsung Electronics, a sharply divided Federal Circuit panel vacated the trial court’s denial of Apple’s post-trial motion for a permanent injunction against Samsung.
September 29, 2015 | Blog | By Aarti Shah
The International Trade Commission proposed a series of new procedural rules, which were published in the Federal Register on September 24, 2015.
Suprema, Inc. v. ITC: En Banc Federal Circuit Confirms ITC’s Jurisdiction to Exclude Articles Based on Induced Infringement
August 17, 2015 | Advisory | By Nicholas Armington, Aarti Shah
On August 10, 2015, the full US Court of Appeals for the Federal Circuit issued its en banc opinion in Suprema, Inc. v. ITC, which overturned an earlier panel decision and confirmed, by a 6–4 vote, that the International Trade Commission (ITC) has jurisdiction over allegations of induced infringement.
August 14, 2015 | Alert | By Rich Gervase, Bruce Sokler, Sandra Badin, Michael Renaud
Late last month, the Ninth Circuit Court of Appeals issued its much-anticipated decision in Microsoft v. Motorola, a breach of contract action brought by Microsoft alleging that Motorola violated its commitment to license its standard essential patents (SEPs) on reasonable and non-discriminatory (RAND) terms.
ClearCorrect v. ITC: Federal Circuit Hears Argument in Case Which Will Decide Whether ITC Has Jurisdiction Over Digital Imports
August 12, 2015 | Blog | By Aarti Shah, Nick Armington
On Tuesday, August 11, the Federal Circuit heard oral arguments in ClearCorrect v. International Trade Commission, a case that will decide whether the ITC has the power to exclude intangible items that are imported digitally rather than physically.
Commil USA V. Cisco Systems: “I thought it was legal” is no defense to induced infringement under 35 U.S.C. § 271(b)
August 3, 2015 | Advisory | By Adam Samansky, Serge Subach
The United States Supreme Court’s recent decision in Commil v. Cisco held that a good-faith belief of a patent’s invalidity, standing alone, is insufficient to provide a defense to a claim of inducing another’s infringement of a United States Patent.
July 27, 2015 | Alert | By Sandra Badin, Michael Renaud
Two weeks ago, Federal Trade Commission (FTC) Chairwoman Edith Ramirez, writing on her own behalf, submitted comments in Investigation No. 337-TA-613, Certain 3G Mobile Handsets and Components Thereof (the 613 Investigation) on how the International Trade Commission (ITC) should approach the adjudication of the FRAND defense when conducting the public interest analysis.
July 17, 2015 | Alert | By Michael Renaud, Sandra Badin, Robert Moore
Federal Trade Commission (FTC) Chairwoman Edith Ramirez took the unusual step on July 13, 2015, of filing a written submission on her own behalf — and expressly not on behalf of her agency — in Investigation No. 337-TA-613, Certain 3G Mobile Handsets and Components Thereof (the 613 Investigation).
June 11, 2015 | Blog | By Dionne Lomax
In a confluence of IP and antitrust law, a three judge panel for the D.C. Circuit recently affirmed a lower court decision upholding the Federal Trade Commission’s (“FTC”) 2013 modification of regulations under the Hart Scott Rodino (“HSR”) Act to require reporting of even partial transfers of pharmaceutical patent rights as an “asset acquisition” if all commercially significant rights are transferred.
May 28, 2015 | Alert | By James Wodarski, Sandra Badin, Rich Gervase
The Supreme Court issued its long-anticipated decision in Commil USA, LLC v. Cisco Systems, Inc. on Tuesday holding that a patent infringement defendant’s good faith belief that the patent in suit is invalid is not a defense to a claim of induced infringement under 35 U.S.C. §271(b).
May 1, 2015 | Blog | By Michael Renaud, Robert Moore
Have you seen John Oliver’s piece about abuses in the patent system? If not, take a look here. The ‘Last Week Tonight’ host has quite a bit of fun at the expense of the patent system.
USITC Declines to Institute Investigation of Induced Patent Infringement as Unfair Method of Competition or Unfair Acts
March 24, 2015 | Blog | By Aarti Shah
In a recent decision, the International Trade Commission rejected a petitioner’s attempt to use allegations of unfair competition and unfair acts as a possible way of working around the Federal Circuit’s bar on claims of induced infringement.
District Court Rules Against Amgen's Motion for Preliminary Injunction to Prevent Marketing of Sandoz's Biosimilar Zarxio
March 20, 2015 | Blog | By Thomas Wintner, Terri Shieh-Newton
In an order released on March 19, 2015, U.S. District Court Judge Richard Seeborg of the Northern District of California denied Amgen’s motion for judgment on the pleadings as well as its request for a preliminary injunction to prevent Sandoz from marketing its drug Zarxio®.
U.S. International Trade Commission Institutes Investigation Under 100-Day Pilot Program Examining Complainant's Standing to File Suit
March 19, 2015 | Blog | By Aarti Shah
The U.S.I.T.C. instituted its first investigation under its 100-day pilot program for early determination of a specific potentially case-dispositive issue.
Court Denies Generic Drug Manufacturer's Motion to Dismiss Hatch-Waxman Patent Infringement Action on Jurisdiction Grounds
March 18, 2015 | Blog | By Peter Cuomo, Joe Rutkowski
On March 12, the United States District Court for the Southern District of Indiana joined the District of Delaware and Eastern District of Texas as the first courts to consider a generic drug manufacturer’s motion to dismiss a Hatch-Waxman patent infringement action for an alleged lack of personal jurisdiction following the Supreme Court’s decision in Daimler AG v. Bauman, 134 S.Ct. 746 (2014).
A “Solution” in Search of a Problem? The Innovation Act of 2015 and Trends in Fee-shifting in Patent Litigation
March 13, 2015 | Alert | By Michael Renaud, Peter Snell, Robert Moore
On February 5, 2015, Rep. Robert Goodlatte (R-VA) introduced H.R. 9, entitled the “Innovation Act.”
A Brief Synopsis of the Issues Confronting the Federal Circuit in the En Banc Rehearing of Suprema, Inc. v. ITC
November 25, 2014 | Advisory | By Aarti Shah, Nicholas Armington
On February 5, 2015 the en banc Federal Circuit will hear oral argument in the matter of Suprema, Inc. v. ITC.
November 24, 2014 | Blog | By Aarti Shah
On November 17, 2014, Administrative Law Judge Dee Lord amended her Ground Rules to permit parties filing motions to file a reply brief without first seeking leave from the ALJ.
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