Today, the U.S. Supreme Court issued two opinions (Octane Fitness and Highmark) that create a more flexible, deferential standard for determining what constitutes an “exceptional” patent case in which a district court has discretion to award reasonable attorney’s fees to the prevailing party.  The Court rejected the Federal Circuit’s rigid test that required

Today, the U.S. Supreme Court issued its opinion in Medtronic, Inv. v. Mirowski Family Ventures, LLC, unanimously reversing the Federal Circuit’s decision below and resolving two issues that are commonly disputed in the lower courts.  First, the Court held that the Federal Circuit had subject-matter jurisdiction over an appeal of an action for a

US Supreme CourtBack 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

As many of you are aware, a non-practicing entity named Innovatio IP Ventures has been engaged in a widespread licensing and litigation campaign over WiFi-related patents that were formerly owned by Broadcom.  As a result, Innovatio has become embroiled in litigation with several suppliers of WiFi-compliant devices (Cisco, Motorola Solutions, Netgear) in the Northern District of Illinois.  A few weeks ago, we noted that a debate had arisen in that case over the “essentiality” of certain asserted patents.  The presiding judge ordered briefing on the issue, and Innovatio filed its “Essentiality Brief” a couple weeks ago — asserting that not all of its asserted claims were essential or covered by IEEE RAND obligations.  This past Friday, the WiFi Suppliers filed their response to Innovatio’s Essentiality Brief.  The WiFi Suppliers accuse Innovatio of misconstruing both the IEEE Patent Policy and the relevant RAND licensing Letters of Assurance in an attempt to avoid its RAND obligations.

[2013.05.10 Defendants’ Brief re Essentiality of Patent Claims]

We alluded in our last post on this matter that issues of patent “essentiality” — and therefore, the scope of corresponding RAND obligations — are likely to become a more common issue in standard-essential patent litigation.  The WiFi Suppliers’ responsive brief demonstrates why.


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On Tues., Sept. 18, 2012, in Medtronic Inc. v. Boston Scientific Corp. et al., Nos. 2011-1313, -1372, the Federal Circuit (Lourie, Linn, and Prost) determined the proper allocation of the burden of proof as to patent infringement issues in the limited circumstance where a party licensed to a patent-in-suit seeks a declaratory judgment of non-infringement.  The Court held that where the only issue is the request by the licensee for a declaratory judgment of non-infringement, the licensee bears the burden of persuasion to show non-infringement, as any counterclaim for infringement is foreclosed by the existence of a license agreement.

[UPDATE]  On May 20, 2013, the U.S. Supreme Court has granted Medtronic’s Petition for Certiorari, and will review this case.  For more coverage on the status of this case at the Supreme Court level, you can check out SCOTUSblog. [/UPDATE]


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Today, Mon., Apr. 16, 2012, in Eurand v. Mylan, No. 2011-1399, the Federal Circuit (Newman, O’Malley and Reyna) reversed a bench trial judgment that pharmaceutical patents would have been obvious because the district court improperly first found obviousness and then looked to secondary indicia to rebut that finding, which led to hindsight selection of secondary indicia to support the district court’s obviousness “hunch.”   The Court ruled that there is no burden-shifting when litigating obviousness – all evidence must be considered before assessing whether the patent challenger met its burden to prove obviousness by clear and convincing evidence.
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