The IP Law Blog Focusing on legal trends in data security, cloud computing, data privacy, and anything E

Category Archives: Patent Law

Subscribe to Patent Law RSS Feed

Court Finds No Personal Jurisdiction Over Foreign Defendant Based On U.S. Subsidiary Under Stream of Commerce and Agency Theories

Posted in IP, IP Law Blog Lawyers In The News, Patent Law

In University of Massachusetts Medical School et al v. L’Oreal SA et al, 1-17-cv-00868 (DED 2018-11-13, Order) (Sherry R. Fallon), the magistrate judge recommended granting a foreign parent company defendant’s motion to dismiss plaintiffs’ patent infringement action for lack of personal jurisdiction where its American subsidiary introduced the alleged accused products into the stream of… Continue Reading

Ordering Pizza is Not Patentable!

Posted in IP, IP Law Blog Lawyers In The News, Patent Law

Some things are not patentable: laws of nature, natural phenomena, and abstract ideas.  The Supreme Court has long held that inventions falling within these categories are not patentable; they are patent-ineligible subject matter.  In 2014, the Supreme Court relied on this principle in deciding Alice Corp. Pty. Ltd. v. CLS Bank International, 134 S. Ct…. Continue Reading

District Court Grants Motion For More Definitive Statement Because Patent Infringement Claim Involved Complicated Technology

Posted in IP, IP Law Blog Lawyers In The News, Patent Law

In Lexington Luminance LLC v. Service Lighting and Electrical Supplies, Inc. d/b/a 1000bulbs.com, 3-18-cv-01074, the District Court for the Northern District of Texas denied defendant’s motion to dismiss for failure to state a claim, but granted its motion for a more definite statement because of the complexity of the patents-in-suit. In the case, the Defendant… Continue Reading

Court Finds Prior Finding of No Literal Infringement Bars Later Claim for Infringement Under the Doctrine of Equivalents

Posted in IP, IP Law Blog Lawyers In The News, Patent Law

In Galderma Laboratories, LP et al v. Amneal Pharmaceuticals LLC et al, 1-16-cv-00207 (DED August 31, 2018, Order) (Stark, USDJ), Judge Stark of the District of Delaware recently found that a plaintiff was collaterally estopped from pursuing claims for patent infringement of two drug patents under a doctrine of equivalents theory based on a finding… Continue Reading

Accused Patent Infringers – Don’t Wait to File an Inter Partes Review!

Posted in IP, IP Law Blog Lawyers In The News, Patent Law

An inter partes review (IPR) is one of the ways a party can challenge a patent in the Patent and Trademark Office. This procedure was added by the America Invents Act, which established a panel of judges called the Patent Trial and Appeal Board (PTAB) to decide IPRs and conduct other procedures used to challenge… Continue Reading

Federal Circuit Limits Patent Infringement Damages

Posted in IP, IP Law Blog Lawyers In The News, Patent Law

The Federal Circuit Court of Appeals has taken aim at sky-high patent infringement damages. In Power Integrations, Inc. v. Fairchild Semiconductor International, Inc., 2018 U.S. App. LEXIS 18177 (July 3, 2018), the court limited the use of the rule that allowed patent owners to recover damages based on the total sales of the infringing product,… Continue Reading

Recovery of Lost Foreign Profits for Infringement of a U.S. Patent

Posted in IP, IP Law Blog Lawyers In The News, Patent Law

While a U.S. patent provides the patent owner with a monopoly to prevent others from “making, using, offering for sale, or selling the invention throughout the United States,” there are significant limits to the extraterritorial application of U.S. Patent law.  The U.S. Supreme Court, however, just found that damages for one form of patent infringement… Continue Reading

SAS Institute, Inc. v. Iancu Has Affected Cases in Federal Courts in Addition to Those at the PTAB

Posted in IP Law Blog Lawyers In The News, Patent Law

On April 24, 2018, the Supreme Court issued its ruling in SAS Institute, Inc. v. Iancu, which held that the Patent Trial and Appeal Board (“PTAB”) arm of the United States Patent and Trademark Office (“USPTO”) must issue a final written decision addressing each and every patent claim challenged in an Inter Partes Review (“IPR”)… Continue Reading

New ITC Rules for Patent Infringement Cases: Adding Fuel to the Ultimate Rocket Docket

Posted in IP Law Blog Lawyers In The News, Patent Law

The United States International Trade Commission (“ITC”) is a Federal agency that deals with matters involving trade.  Among its many responsibilities, the ITC investigates a variety of issues related to trade including investigating and adjudicating cases involving imported products that allegedly infringe intellectual property rights.  These infringement investigations, called Section 337 investigations, may include allegations… Continue Reading

USPTO Proposes Change in Claim Construction Standard for PTAB Proceedings Under the AIA

Posted in IP Law Blog Lawyers In The News, Patent Law

Currently, the standard for claim construction is different in AIA reviews before the United States Patent and Trademark Office’s (“USPTO”) Patent Trial and Appeal Board (“PTAB) than in proceedings in federal district courts and the International Trade Commission (“ITC”).  The USPTO construes claims to have their broadest reasonable interpretation (“BRI”) while district courts and the… Continue Reading

U.S. Supreme Court Rules America Invents Acts Reviews by the Patent Trial and Appeal Board arm of the Patent and Trademark Office are Constitutional

Posted in IP Law Blog Lawyers In The News, Patent Law

In a 7-2 opinion, the U.S. Supreme Court ruled in OIL STATES ENERGY SERVICES, LLC v. GREENE’S ENERGY GROUP, LLC that inter partes review does not violate Article III or the Seventh Amendment of the Constitution.  Thus, the Supreme Court rejected an argument that only federal courts, and not executive branch tribunals or administrative courts… Continue Reading

Do Secret Sales Bar Patents?

Posted in Patent Law

There is some confusion about what constitutes an “on-sale bar” in patent law. The on-sale bar, set forth in 35 U.S.C §102, prohibits a patent if the invention sought to be patented was offered for sale or sold more than one year before the patent application was filed. In other words, there is a one-year… Continue Reading

Federal Circuit Weighs in on Reasonable Royalties as Patent Infringement Damages

Posted in Patent Law

In Exmark Manufacturing Company v. Briggs & Stratton Power Products, 2018 U.S. App. LEXIS 783 (Fed. Cir. 2018), the Federal Court of Appeals addressed patent infringement damages based on a reasonable royalty. Exmark Manufacturing Company owned a patent for a lawn mower with an improved flow control baffle (the part that controls the flow of… Continue Reading

Surviving Alice Challenges to Patent Claims

Posted in Patent Law

The Court of Appeals for the Federal Circuit just highlighted another approach plaintiffs can use to overcome early challenges to the validity of patent claims under 35 U.S.C. §101.   What is that approach?  It is a classic one:  show there is a genuine issue of fact.  That approach saved a subset of claims from summary… Continue Reading

U.S. District Court for the Central District of California Makes Rare FRAND Royalty Rate Determination

Posted in Patent Law

The U.S. District Court for the Central District of California recently issued its opinion in TCL Communications v. Ericsson (SACV 14-341 JVS(DFMx) and CV 15-2370 JVS (DFMx)) on standard-essential patents and whether a commit to license them was on terms that are fair, reasonable and nondiscriminatory, or FRAND.  The Court determined Ericsson did not offer… Continue Reading

Federal Circuit Clarifies Waiver of Venue Issue in Light of TC Heartland, but Issues Still Remain For District Courts to Address

Posted in Patent Law

The U.S. Supreme Court’s May 22, 2017 ruling in TC Heartland v. Kraft Foods held that personal jurisdiction alone does not convey venue for patent cases under the patent venue statute.  Previously, the Court of Appeals for the Federal Circuit and the United States district courts had interpreted the patent venue statute, 28 U.S.C. §1400(b), to allow… Continue Reading

USPTO Finalizes Rule for Privileged Communications in Trials Before the PTAB

Posted in Copyright Law, Legal Info, Patent Law

The Leahy-Smith America Invents Act (“AIA”) provided for trials before the Patent Trial and Appeal Board (“PTAB”) of the United States Patent and Trademark Office (“USPTO”) in inter partes reviews, post-grant reviews, the transitional program for covered business method patents, and derivation proceedings.  While patent agents are registered to practice before the USPTO, they are… Continue Reading

Can Patent Owners Buy Sovereign Immunity?

Posted in Patent Law

The latest issue in the patent world is one no one would have expected – sovereign immunity. How did this issue arise? Allergan, the company that makes the dry-eye drug Restasis, has employed an aggressive strategy in attempting to protect its $1.5 billion market by selling its Restasis patents to a Native American Tribe.  In… Continue Reading

Allegan’s Restasis Patents Invalidated by a Federal District Court Even After Transfer to Native American Tribe and Sovereign Immunity Claim.

Posted in Patent Law

In Allergan, Inc. v. Teva Pharmaceuticals USA, Inc. et al, Case No. 2:15-cv-1455-WCB (EDTX October 16, 2017 Order), a Federal District Court recently invalidated several patents covering Allergan’s dry-eye drug Restasis.  The ruling is notable because these are the same six patents Allegan just weeks ago transferred to the Saint Regis Mohawk Native American tribe… Continue Reading