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In the time since the Federal Circuit issued its Vanda Pharma decision in April, Vanda Pharm. Inc. v West-Ward Pharm. Intl. Ltd. 887 F.3d 1117 (Fed. Cir. 2018), we have had more good news for the patent eligibility of claims relating to diagnostic or similar tests utilized in treating patients.

Recent ITC decision clarifies and eases domestic industry burden for patent holders

July 17, 2018 | Blog | By Aarti Shah, Andrew DeVoogd, Tiffany Knapp, Matthew Galica

A recent decision by the International Trade Commission (“ITC” or the “Commission”) improves intellectual property holders’ ability to prove that they have a “domestic industry” and obtain relief for infringement from the Commission. 

Understanding Priority Claims for U.S. Patent Applications: Part 1

July 11, 2018 | Blog | By Christina Sperry, Elissa Kingsland

This article is first in a two-part series focusing on various issues related to priority claims in U.S. patent applications.  Part 1 is a general overview of how to make a proper priority claim, without addressing how to correct an improper priority claim, which will be examined in Part 2.

The Patent Act Allows for Full Compensation for All Forms of Infringement

June 22, 2018 | Blog | By Michael Renaud, James Wodarski, Sandra Badin

Patent owners have a new arrow in their quiver. The Supreme Court has held that patent owners can recover foreign lost profits for the use or sale of infringing products abroad if the products were assembled from components of the patented invention exported from the United States.

10 Millionth U.S. Patent Issues Today

June 19, 2018 | Blog | By William Geary, Linda Azrin

Further to our previous blog post, the U.S. Patent and Trademark Office reported that the 10 millionth patent issued today with the new patent cover design.
According to the Eastern District of Texas, no. In our continued post-TC Heartland coverage, for the purpose of establishing venue, courts typically will decline to treat the place of business of one corporation as the place of the business of the other, even when the two are related, so long as a formal separation of entities is preserved.

Discovery Concerning Potential Litigation Funding is Not Relevant or Proportional

June 14, 2018 | Blog | By Michael Renaud, Andrew DeVoogd, Catherine Xu

A recent order from the Northern District of California provides some succinct guidance on the relevancy of discovery concerning litigation funding. In Space Data Corp. v. Google LLC, 5-16-cv-03260, the court denied Defendants Google and Alphabet’s motion to compel discovery as to potential litigation funding allegedly considered by Plaintiff Space Data.
According to a recent decision from the Southern District of New York, no.  In our continued post-TC Heartland coverage, the court in CDX Diagnostic, Inc. v. U.S. Endoscopy Group, Inc. clarified that a storage unit does not qualify as a regular and established place of business.

Evidence of Bad Faith Patent Prosecution Can Support an Award of Attorney Fees

June 5, 2018 | Blog | By Andrew DeVoogd, Chris Duerden

A recent opinion from the District of New Jersey is a cautionary tale for patent practitioners regarding conduct during patent prosecution that can be framed as bad faith. This can become an expensive misstep during subsequent litigation. 

Insincere Licensing Discussions Can Support a Willful Infringement Claim

June 4, 2018 | Blog | By Andrew DeVoogd, Chris Duerden

A recent order from the Northern District of California provides patent practitioners interesting guidance regarding conduct during licensing discussions—and may be a cautionary tale to potential licensors engaged in efficient infringement.
In another interesting development in our ongoing coverage of the application of the TC Heartland patent venue standard by lower courts, the District Court for the Western District of Texas recently determined that when a parent company ratifies its subsidiary company’s place of business, it can be considered a “regular place of business” for purposes of establishing proper venue.

Smartphone Wars – The Last Jury: Samsung Owes $539M for Infringing Apple’s Patents

May 31, 2018 | Blog | By Michael Newman, Patrick Driscoll

A California jury recently awarded Apple $538.6 million in total damages for patent infringement by Samsung. This is the latest development in the patent battle between smartphone industry titans that began in 2011 and took another step towards completion.
On May 14, 2018, the United States Court of Appeals for the Federal Circuit, In re: ZTE (USA) Inc., No. 2018-113, held that Federal circuit law governs the burden of proof for venue challenges under 28 U.S.C. § 1400(b) and that the burden of proof rests on the plaintiff to demonstrate proper venue upon a defendant’s motion to dismiss for lack of venue.
In our continuing coverage of the post-TC Heartland landscape, the Federal Circuit recently clarified that venue is proper in only one district per state in In re BigCommerce, Inc., 2018-122 (Fed. Cir. May 15, 2018) (slip op.).
In a May 10, 2018 ruling, discussed earlier on this blog, Magistrate Judge Payne affirmed the jury’s willfulness finding largely on the ground that TCL did not proffer any evidence that it held a subjective, good faith belief that it did not infringe the patent-in-suit or that the patent was invalid.

Upon Reconsideration, E.D.Tex. Judge Affirms Ericsson’s Previously-Vacated Jury Award Against TCL

May 16, 2018 | Blog | By Michael Renaud, Andrew DeVoogd, Daniel Weinger, Robert Moore

On May 10, 2018, Magistrate Judge Payne reconsidered his previous March 2018 order which had vacated a jury award, and granted plaintiff Ericsson’s motion for reconsideration. The May ruling makes clear that the accused infringer bears the burden of production for royalty-stacking and other mitigatory arguments on damages.
Further to our ongoing coverage of post-TC Heartland patent litigation, in a recent case in the Western District of Wisconsin, the court granted defendants' motion to transfer for improper venue. In doing so, it rejected the plaintiff’s contention that venue can be proper where one corporation “works closely” with another corporation resident in the jurisdiction.

ITC Updates Its Rules of Practice and Procedure to Increase Speed and Efficiency

May 11, 2018 | Blog | By Aarti Shah, Daniel Weinger, Tiffany Knapp

On Tuesday, May 8, 2018, the International Trade Commission (“ITC” or the “Commission”) published the final changes to its rules of practice and procedure. The Commission stated that the changes are intended to both modernize and simplify Commission practice as well as to increase the speed and efficiency of investigations.

USPTO Proposes Claim Construction Rule Change from BRI to Phillips in AIA Review Proceedings

May 9, 2018 | Blog | By Michael Newman, Peter Cuomo, Patrick Driscoll

The U.S. Patent and Trademark Office announced a propose change to the standard for construing both unexpired and amended patent claims in Patent Trial and Appeal Board (PTAB) proceedings under the America Invents Act (“AIA”).
The Federal Circuit recently overturned a decision estopping the plaintiff from pursuing its infringement claims in the United States District Court for the Eastern District of Arkansas, and clarified the effect of reexamination on equitable estoppel and laches.

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