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

Earlier this week, we provided an update on the multitude of WiFi-related infringement lawsuits brought by non-practicing entity Innovative Wireless Solutions LLC against various hotels and restaurants in Texas, noting that IWS had dismissed these suits (albeit without prejudice).  We had discussed that this was a decidedly “un-Innovatio-like” turn in the cases — but yesterday brought a development that makes this series of disputes much more like the ones in the Northern District of Illinois involving Innovatio:  Cisco Systems Inc., a supplier of WiFi equipment for many of the hotels accused of infringement, got involved.  And Just like it did with Innovatio, Cisco here filed a declaratory judgment action against IWS, seeking declarations of invalidity and non-infringement as to IWS’s three asserted patents.

[UPDATE] In addition to Cisco, Hewlett-Packard has also filed a declaratory judgment action against IWS.  The link is below, and more details on that complaint are at the bottom of this post — including information about a potential license defense. [/UPDATE]

[SECOND UPDATE] On Friday, June 14, Ruckus Wireless, another WiFi equipment supplier, also filed a declaratory judgment complaint against IWS.  This complaint is very similar to the one filed by Cisco. [/SECOND UPDATE]

[Cisco Systems Inc v Innovative Wireless Solutions LLC Complaint]

[Hewlett-Packard-Company v. Innovative-Wireless-Solutions-LLC Complaint]

[Ruckus Wireless v. Innovative Wireless Solutions Complaint]

Cisco’s complaint, filed in the Western District of Texas (where Rackspace has chosen to take on noted NPE Parallel Iron in another DJ action), includes some particularly harsh words for IWS —
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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

The standard-essential patent battle between InterDigital and Chinese handset makers Huawei and ZTE rages on in the U.S. District Court for the District of Delaware.  Recall that the parties are awaiting an Initial Determination in ITC Inv. No. 337-TA-800, and are also involved in Inv. No. 337-TA-868.  In the companion district court cases to the -868 investigation, Huawei and ZTE attempted to have the Delaware court expedite a determination of FRAND terms for InterDigital’s portfolio, an attempt that was rebuffed by the court.  But now, in motion filed yesterday, InterDigital seeks to have Huawei and ZTE’s FRAND-related claims dismissed altogether.  InterDigital argues that the FRAND counterclaims should have been asserted in an earlier litigation, are not ripe, and merely seek an advisory opinion.  InterDigital also claims that Huawei and ZTE have failed to allege the existence of an enforceable contractual commitment under the applicable law.
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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

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, Thu., Aug. 16, 2012, in Ass’n for Molecular Pathology v.  USPTO (“The Myriad Case”), , No. 2010-1406, the Federal Circuit (Lourie, Bryson (concur/dissent) and Moore (concur)) issued its anticipated decision in the Myriad case on whether certain composition and method claims to isolated DNA molecules were patentable subject matter.  This Myriad decision will have a substantial impact in the biomedical, chemical and related arts.  The decision provides only incremental insight to computer-based or similar inventions, and also provides incremental insight into declaratory judgment jurisdiction.
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Today, Mon., Mar. 26, 2012, in 3M v. Avery, No. 2011-1339, the Federal Circuit (Rader, Lourie and Linn) reversed a district court’s ruling that it lacked declaratory judgment jurisdiction over a patent action.  This case provides insight into the fine line walked when discussing patents with a party without creating sufficient grounds for them to seek a declaratory judgment action.
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