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The Source for Standard-Essential and Other Patent Litigation Issues

Category Archives: Patent Alerts

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Patent Case: Supreme Court to review appellate standard for reviewing district court claim construction (Teva v. Sandoz)

Posted in Appeals, Litigation, Patent Alerts
Today, in Teva Pharmaceuticals v. Sandoz, Inc., the U.S. Supreme Court granted the petition seeking review of the Federal Circuit’s de novo standard of review of a district court’s claim construction ruling.  Teva phrased the question presented as follows: QUESTION PRESENTED Rule 52(a) of the Federal Rules of Civil Procedure provides that in matters tried … Continue Reading

Patent Case: Federal Circuit denies mandamus in two cases seeking transfer of patent assertion entity cases

Posted in Appeals, Court Orders, Litigation, Non-Practicing Entities, Patent Alerts
Yesterday, in two separate precedential decisions on mandamus, the Federal Circuit refused to overturn the district courts’ decisions not to transfer patent assertion entity cases to the defendants’ home forum: In re Apple, Misc. 13-156 (mandamus from E.D. Tex.) and In re Barnes Noble, Misc. 13-162 (mandamus from W.D. Tenn.).  Both mandamus orders were decided by the … Continue Reading

Patent Case Alert: Divided en banc Federal Circuit maintains Cybor de novo review of claim construction (Lighting Ballast v. Philips Elec.)

Posted in Appeals, Patent Alerts
Today, in an  en banc decision in  Lighting Ballast Control LLC v. Philips Electronics, No. 2012-1014, a divided Federal Circuit maintained the Cybor de novo appellate review of claim construction standard — i.e., no required deference to  the district court’s decision — because there was insufficient reasons to depart from it under stare decisis — i.e., … Continue Reading

Supreme Court to review induced/multiple actor infringement (Limelight v. Akamai)

Posted in Appeals, Litigation, Patent Alerts, Uncategorized
Today the Supreme Court granted certiorari in Limelight v. Akamai to review the Federal Circuit’s en banc decision that induced infringement under Section 271(b) involving multiple actors — e.g., internet service provider performing some steps of a patent claim and end-customers doing final step — does not require establishing direct infringement under Section 271(a). The … Continue Reading

Patent Case Alert: Supreme Court to review patent eligibility of computer-implemented inventions in Alice Corp. v. CLS Bank

Posted in Appeals, Patent Alerts, Uncategorized
Today the U.S. Supreme Court granted certiorari to consider the patent eligibility of computer-implemented inventions in Alice Corp. v. CLS Bank (the docket is available from SCOTUSblog).  You may recall that a hopelessly divided en banc Federal Circuit held that the computer-implemented patent claims at issue were invalid because they were not directed to patentable subject … Continue Reading

Patent Case Alert: Federal Circuit provides more guidance on injunctive relief involving multi-component devices in Apple v. Samsung

Posted in Appeals, Litigation, Patent Alerts, Uncategorized
Today the Federal Circuit issued a decision that reversed and remanded the denial of Apple’s request to permanently enjoin Samsung mobile devices found to infringe Apple patents.  This decision appears more flexible than the court’s prior rejection of a preliminary injunction in this case with respect to establishing a casual nexus between the alleged infringement and the alleged … Continue Reading

Patent Alert: Federal Circuit rules that good faith belief of invalidity can rebut intent to induce infringement (Commil v. Cisco)

Posted in Patent Alerts
Today, Tuesday, June 25, 2013, in Commil USA v. Cisco Systems, No. 2012-1042, the Federal Circuit (Newman (concur/dissent), Prost, and O’Malley (concur/dissent)) reversed a finding of induced infringement where the jury instruction erroneously used a negligence standard and the district court erroneously excluded rebuttal evidence of the accused infringer’s good faith belief that the patent … Continue Reading

Patent Alert: Federal Circuit rules Internet-related computer-implemented invention is patent eligible (Ultramercial v. Hulu)

Posted in Patent Alerts
On June 21, 2013, in Ultramercial v. Hulu, No. 2010-1544, the Federal Circuit (Rader, Lourie (concur), O’Malley) reversed the district court’s grant of a Rule 12(b)(6) motion to dismiss on grounds that the computer-implemented invention was not patent eligible under § 101.  This case provides incremental insight into the patent eligibility of computer-implemented inventions following … Continue Reading

Patent Alert: Federal Circuit Permits Appeal of Liability Prior to Damages or Willfulness Determination (Robert Bosch v. Pylon)

Posted in Appeals, Patent Alerts
Today, June 14, 2013, in Robert Bosch LLC v. Pylon Manufacturing Corp., No. 2011-1363, 1364, an en banc Federal Circuit ruled that parties can appeal a decision on liability in patent infringement cases before there has been a trial on damages or willfulness. Under 28 U.S.C. § 1292(c), the Federal Circuit has exclusive jurisdiction “of … Continue Reading

Recent Supreme Court grant of petition for certiorari may have implications for standard-essential patent disputes (Medtronic v. Boston Scientific)

Posted in Appeals, Litigation, Patent Alerts
Back in September 2012, we posted a Patent Alert on the Federal Circuit’s decision in Medtronic v. Boston Scientific. In that case, the court held that in an action where a licensee in good standing seeks a declaratory judgment of non-infringement (so any counterclaim for infringement would be foreclosed by the existence of the license), … Continue Reading

Patent Alert: En banc Federal Circuit indecisive on patent eligibility of computer-implemented inventions (CLS v. Alice)

Posted in Appeals, Patent Alerts
Last Friday, May 10, 2013, in CLS Bank v. Alice Corp., No. 2011-1301, the Federal Circuit (en banc) issued a very divided decision in which a majority of the court affirmed that method, computer-readable medium and system patent claims on a computer-implemented invention were not patent eligible under § 101, but there was no majority … Continue Reading

Patent Alert: Failure to Test Accused Products for Infringement Does Not Justify Award of Attorneys’ Fees under Section 285 (Checkpoint v. All-Tag)

Posted in Patent Alerts
Today, March 25, 2013, in Checkpoint Systems, Inc. v. All-Tag Security S.A., No. 2012-1085, the Federal Circuit (Newman, Lourie, and Schall) reversed both the district court’s award of $6.6 million in attorneys’ fees and the determination of an “exceptional case” under Section 285 of the Patent Act.  The awarding of attorneys’ fees has received more … Continue Reading

Patent Alert: Federal Circuit holds subpoenas are not available in inter partes reexamination proceeding (Abbott Laboratories v. Cordis Corporation)

Posted in Patent Alerts
Today, March 20, 2013, in Abbott Labs. v. Cordis Corp., No. 2012-1244, the Federal Circuit held that a district court cannot issue subpoenas in conjunction with a pre-AIA inter partes reexamination proceeding because an inter partes reexamination proceeding does not constitute a “contested case” under 35 U.S.C. § 24 where the PTO has not authorized … Continue Reading

Patent Alert: Federal Circuit to revisit standard of review for district court’s claim construction (Lighting Ballast Control v. Philips)

Posted in Patent Alerts
On March 15, 2013, in Lighting Ballast Control LLC v. Philips Electronics North America Corp., No. 2012-1014, the Federal Circuit granted Lighting Ballast’s petition for rehearing en banc to decide the following questions: (1) whether the court should overrule Cybor Corp. v. FAS Technologies, Inc., 138 F.3d 1448 (Fed. Cir. 1998) (en banc) (holding that … Continue Reading

Patent Alert: Equitable Estoppel Bars Infringement Claims against Successor-in-Interest (Radio Systems v. Lalor)

Posted in Patent Alerts
Yesterday, March 6, 2013, in Radio Systems Corp. v. Lalor, No. 2012-1233, the Federal Circuit (Newman, Moore, and Reyna) held that equitable estoppel barred infringement claims for one patent against an alleged infringer’s successor-in-interest, but did not bar infringement claims for a related patent that issued after the misleading conduct began.  The court also held that “invalidity cannot be … Continue Reading

Patent Alert: Federal Circuit delves into doctrine of equivalents and concept of vitiation (Brilliant Instruments v. GuideTech)

Posted in Patent Alerts
Today, February 20, 2013, in Brilliant Instruments, Inc. v. GuideTech, Inc., No. 2012-1018, the Federal Circuit (Dyk (dissenting-in-part), Moore, and Reyna) reversed the Northern District of California’s prior grant of summary judgment of no infringement under the doctrine of equivalents based on fact issues regarding whether a capacitor that was “part of” a first circuit … Continue Reading

Patent Alert: Assignor estoppel is not a federal cause of action (Semiconductor Energy Lab. Co. v. Nagata)

Posted in Patent Alerts
On February 11, 2013, in Semiconductor Energy Laboratory Co. v. Nagata, No. 2012-1245, the Federal Circuit (Lourie, Bryson, and Wallach) affirmed a decision by the Northern District of California that dismissed a complaint for lack of subject matter jurisdiction. This case provides insight into the appropriateness of using a named inventor as a fact witness … Continue Reading

Patent Alert: Federal Circuit Finds Justiciable Controversy for Declaratory Judgment of No Indirect Infringement Liability

Posted in Patent Alerts
Today, February 5, 2013, in Arkema Inc. v. Honeywell Int’l, Inc., No. 2012-1308, the Federal Circuit (Dyk, Plager, and O’Malley) found that an Article III case or controversy over indirect infringement liability existed between two competitors in the automobile refrigerant market.  This case provides incremental insight into the circumstances under which a vendor might proactively … Continue Reading

Patent Alert: Federal Circuit Finds No Special Requirements for Pleading Design Patent Infringement

Posted in Patent Alerts
On Fri., January 25, 2013, in Hall v. Bed Bath & Beyond, No. 2011-1165, the Federal Circuit (Newman, Lourie (dissenting-in-part), and Linn) held that a towel design patent owner properly pled claims of patent infringement, false advertising, misappropriation, and unfair competition.  The Court also held that certain inventor statements on whether the towel was covered … Continue Reading

Patent Alert: Federal Circuit invalidates three patents, finding obviousness as a matter of law (Soverain Software v. Newegg)

Posted in Patent Alerts
On January 22, 2013, in Soverain Software LLC v. Newegg Inc., No. 2011-1009, the Federal Circuit (Newman, Prost, and Reyna) reversed a decision by the Eastern District of Texas that had upheld the validity of a computer-implemented invention over an obviousness challenge.  This case suggests that computer-implemented patents may face increased scrutiny on obviousness grounds. … Continue Reading

Patent Alert: Federal Circuit orders Rule 11 sanctions for frivolous claim construction (Raylon v. Complus)

Posted in Patent Alerts
On December 7, 2012, in Raylon, LLC v. Complus Data Innovations, Inc., No. 2011-1355, the Federal Circuit (Prost, Moore and Reyna) vacated a decision by the Eastern District of Texas that had denied Rule 11 sanctions based on a frivolous claim construction argument.  This case reflects a Federal Circuit response to concerns in the patent bar … Continue Reading

Patent Alert: Federal Circuit applies res judicata to bar patent infringement defenses not raised in earlier contract action (Cummins v. TAS)

Posted in Patent Alerts
Yesterday, Dec. 5, 2012, in Cummins, Inc. v. TAS Distributing Company, Inc., No. 2010-1134, the Federal Circuit (Newman, Bryson, and Reyna) affirmed a decision by the Central District of Illinois that patent invalidity and unenforceability claims were precluded by a prior contract action arising from a patent licensing dispute concerning the contractual terms of the license to the … Continue Reading

Patent Alert: Federal Circuit Rules that Antitrust Standing Applies to Walker Process Claims (Ritz Camera v. SanDisk)

Posted in Patent Alerts
On Tues., Nov. 20, 2012, in Ritz Camera & Image, LLC v. SanDisk Corp., No. 2012-1183, the Federal Circuit (Bryson, Dyk, and Moore) broadened the ability of direct purchasers of patented products to bring claims of antitrust violations under the Walker Process theory of liability (as set forth in the Supreme Court’s opinion inWalker Process Equipment, Inc. v. … Continue Reading

Patent Alert: Federal Circuit gives guidance on “printed publications” found on the Internet (Voter Verified v. Premier Election Solutions)

Posted in Patent Alerts
Today, Monday, Nov. 5, 2012, in Voter Verified, Inc. v. Premier Election Solutions, Inc., Nos. 2011-1553 and 2012-1017, the Federal Circuit (Lourie, Reyna, and Wallach) ruled that an online document that had not been indexed by major search engines was nevertheless a prior art “printed publication” under section 102(b).  This case provides insight on establishing online … Continue Reading
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