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Category Archives: Patent Law

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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

Federal Circuit Clarifies Venue Requirements for Patent Cases

Posted in Patent Law

Until the U.S. Supreme Court’s May 22, 2017 ruling in TC Heartland v. Kraft Foods, 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 plaintiffs to bring a patent infringement case against a domestic corporation in any district court… Continue Reading

Wine and Spirits Are not Always Confusingly Similar

Posted in Copyright Law, Patent Law, Trademark Law

  Brand litigation can be extreme in the consumer products space and even more so for alcoholic beverages (legal cannabis brand owners take note and start stockpiling your war chest).  It’s not uncommon for litigation to arise whenever an alcoholic beverage brand owner believes that another alcoholic beverage brand infringes.  Such was the case for… Continue Reading

Federal Circuit: PTO Can’t Shift Burden of Proof of Patentability to Applicant

Posted in Copyright Law, Patent Law

In In re Stepan Co., 2017 U.S. App. LEXIS 16246, decided August 25, 2017 the Federal Circuit Court of Appeals made it very clear that during patent prosecution, the burden of proving patent ability lies with the PTO examiner.  The patent applicant was Stepan Co., who filed a patent application for formulas of an herbicide. … Continue Reading

Court Denies Plaintiff’s Motion to Disqualify its Former Counsel as Counsel for Defendant in a Patent Litigation Action After Plaintiff Delayed Filing its Disqualification Motion for Over A Year After Discovering the Conflict.

Posted in Patent Law

In Eolas Technologies Incorporated v. Amazon.com, Inc., 3-17-cv-03022 (CAND August 24, 2017, Order) (Tigar, USDJ) the United States District Court for the Northern District of California recently denied plaintiff Eolas Technologies Incorporated’s (“Eolas”) motion to disqualify its former counsel, Latham and Watkins (“Latham”), as counsel for defendant Amazon.com (“Amazon”) because Eolas delayed filing its disqualification… Continue Reading

California Finally Rolling Out Its Own Cannabis Trademark Laws

Posted in Legal Info, Patent Law, Trademark Law

California was the first state to legalize marijuana for medical use.  In 1996, California approved Proposition 215, the California Compassionate Use Act.  Two decades later, California voters approved  Proposition 64, the Control, Regulate and Tax Adult Use of Marijuana Act (AUMA).  Despite the fact that cannabis has been legal in California since 1996, you still… Continue Reading

Patent Myths Corrected – Part One

Posted in Patent Law

Patent law is a complicated area of law governed by a confusing set of statutes and regulations that are interpreted by the United States Patent and Trademark Office (PTO) and the federal courts.  Patents themselves are sometimes almost unintelligible and, if intelligible, may require many hours of reading to understand.  It is no wonder that… Continue Reading

Supreme Court Cuts Back Patent Owners’ Post-Sale Rights

Posted in Patent Law, Trademark Law

Patent owners can no longer restrict the use of their patented products after the products are sold.  Under the doctrine of patent exhaustion, a patent owner’s rights are “exhausted” once the patent owner sells the product.  In Impression Products v. Lexmark International, Inc., 2017 U.S. LEXIS 3397 (May 30, 2017), the Supreme Court expanded the… Continue Reading

U.S. Supreme Court Allows Early Notice For Biosimilars

Posted in Patent Law

In SANDOZ INC. v. AMGEN INC. et al., the United States Supreme Court in a unanimous opinion ruled that biosimilar makers can give their required 180-day statutory notice of sales before their products win approval by the United States Food and Drug Administration (“FDA”).  In short, the Court held a biosimilar maker “may provide notice… Continue Reading

Eagles Ltd. v. Hotel California Baja, LLC: Any Time of Year, You Can Find Infringement Here

Posted in Copyright Law, Patent Law, Trademark Law

Recently, Eagles Ltd. (the “Eagles”), the entity in control of legendary rock band The Eagles’ business affairs, filed a lawsuit against Hotel California Baja, LLC for trademark infringement. While I’m sure most of us are familiar with the Eagles’ song Hotel California, it may come as a surprise to most trademark aficionados that the Eagles… Continue Reading

Did the Supreme Court Just Close the Door on Eastern District of Texas Patent Plaintiffs?

Posted in Patent Law

For over 25 years, the Court of Appeals for the Federal Circuit and the United States district courts have interpreted the patent venue statute 28 U.S.C. §1400(b) to allow plaintiffs to bring patent infringement cases against a corporation in any district court where there is personal jurisdiction over that corporate defendant.  The U.S. Supreme Court… Continue Reading

Federal Circuit Holds Non-Public Sales Can Still Satisfy the On-Sale Bar for Patents under the AIA

Posted in Patent Law

In Helsinn Healthcare S.A. v. Teva Pharmaceuticals USA, Inc., the United States Court of Appeals for the Federal Circuit recently ruled that the America Invents Act’s (“AIA”) did not change the meaning of the on-sale bar provision in 35 U.S.C. § 102.   The on-sale bar provision holds that sales of an invention one year prior… Continue Reading

Are the Tides Turning for Motions to Amend Claims in IPR Proceedings?

Posted in Patent Law

The Patent Trial and Appeal Board (“PTAB”) has rarely allowed patent owners to replace or modify claims during inter partes review (“IPR”), covered business method review, or post-grant review.  In fact, in April 2016 the PTAB’s Motion to Amend Study reported that only 6 of 118, or about 5%, of such motions to amend claims… Continue Reading

More Patent Invalidated as Abstract Ideas

Posted in Patent Law

Apple just escaped a $533 million jury verdict by invalidating the plaintiff’s patents on the grounds that the patents cover abstract ideas. The case is Smartflash, LLC v. Apple Inc., decided by the Federal Circuit Court of Appeals on March 1, 2017.  Smartflash owned three patents for technology that limited Internet access to data (video,… Continue Reading

U.S. Supreme Court Limits Laches Defense in Patent Cases

Posted in Patent Law

In SCA Hygiene Products AB et al. v. First Quality Baby Products LLC et al., the United States Supreme Court held that laches cannot be invoked as a defense against a claim for patent infringement damages brought within U.S.C §286’s 6-year limitations period.  The U.S. Court of Appeals for the Federal Circuit had previously held… Continue Reading

One Is Not Enough for Patent Infringement Under 35 U.S.C. §271(f)(1)

Posted in Patent Law

In Life Technologies v. Promega Corporation, the U.S. Supreme Court addressed whether supplying a single component from the United States of a multicomponent invention assembled abroad constitutes patent infringement under 35 U.S.C. §271(f)(1).    Under §271(f)(1), a party can be liable for patent infringement if it supplies from the United States “all or a substantial portion… Continue Reading

Divided Infringement – Expanding Patent Infringement Liability

Posted in Patent Law, Web/Tech

By Audrey Millemann In 2015, the Federal Circuit Court of Appeals cast the net of patent infringement liability even more broadly, to cover direct infringement by “divided” (or “joint”) infringement.  Akamai Technologies, Inc. v. Limelight Networks, Inc., 797 F.3d 1020 (Fed. Cir. 2015) (“Akamai V”).  In that case, the Federal Circuit established that a defendant… Continue Reading

Northern District of California Revises Local Patent Rules

Posted in Copyright Law, Legal Info, Patent Law

On January 17, 2017, the United States District Court for the Northern District of California issued revisions to its Local Patent Rules requiring early disclosure of damages-related discovery and contentions. The revised rules are effective immediately in all patent cases pending in the Northern District.  Local Patent Rules are rules that apply to all civil… Continue Reading