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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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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, Rithika Kulathila

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, 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.
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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, 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.
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FRAND Licensing of Global Portfolios – Who Gets to Set Worldwide Rates?

March 26, 2019 | Blog | By Michael Renaud, James Wodarski, Sandra Badin

A key issue in the licensing of standard essential patents (SEPs) is whether national courts have jurisdiction to determine what constitutes a global fair, reasonable, and non-discriminatory (FRAND) license rate.  The Court of Appeal in England recently held that its patent courts have such jurisdiction.  In Huawei Technologies Co. Ltd. v Conversant Wireless Licensing SARL, the Court of Appeal affirmed the jurisdiction of the High Court of Justice to try a claim for the infringement of UK-designated European SEPs against Chinese as well as English defendants and to issue an injunction for the unauthorized use of the SEPs at issue.  In the process, it also affirmed the High Court’s jurisdiction to determine a worldwide FRAND rate. 
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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.
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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.
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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”).
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The FUCT Mark: Is the Prohibition on Scandalous Marks Unconstitutional?

March 14, 2019 | Blog | By Susan Neuberger Weller, Adam Samansky, Serge Subach

The constitutionality of yet another portion of Section 2(a) of the Lanham Act will soon be determined. Following in the footsteps of the blockbuster decision in Matal v. Tam, 137 S. Ct. 1744 (2017) (“Tam”), the U.S. Supreme Court granted certiorari to Iancu v. Brunetti on January 4, 2019. In Matal v. Tam, the Supreme Court held that the prohibition in Section 2(a) of the Lanham Act against registering disparaging trademarks at the U.S. Trademark Office (“USPTO”) was an unconstitutional restriction on free speech. However, Section 2(a) also prohibits the registration of other categories of marks, including marks that are immoral and scandalous. It is the constitutionality of this prohibition which is at issue in Brunetti.
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Designing Around a Monopoly: the Public Interest Dispute between Qualcomm and Apple Takes a New Turn

March 12, 2019 | Blog | By Michael Renaud, James Wodarski, Sandra Badin, Matthew Galica

As we mentioned in December, the International Trade Commission issued a notice to review the Final Initial Determination and Recommended Determination issued by Administrative Law Judge Pender in Certain Mobile Electronic Devices and Radio Frequency and Process Components Thereof, 337-TA-1065 (“Certain Mobile Electronic Devices”), in which, despite finding that a valid patent was infringed and all jurisdictional requirements met, ALJ Pender had recommended that no exclusion order be issued against Apple because such an order would be contrary to the public interest.
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U.S. Supreme Court Holds That Copyrights Must Be Registered before Plaintiffs Can File Infringement Suits

March 5, 2019 | Blog | By Susan Neuberger Weller, Andrew D. Skale, Harold Laidlaw

The U.S. Supreme Court held today that bringing a suit for copyright infringement requires that the infringed work actually be registered with the U.S. Copyright Office, and that a mere application for registration will not suffice.
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The Tall Tale of the Domestic Industry

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.
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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. 
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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.
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Time-Barred IPR Petitioners Have Separate Standing to Appeal PTAB Decisions

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.
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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.
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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.   
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Patent Term Adjustment: The Real Meaning of Applicant Delay

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.
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Year in Review: The Most Popular Blog Posts of 2018

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.
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