September 22, 2015 – “The Evolving World of Biosimilars Litigation” (McDonnell Boehnen Hulbert & Berghoff LLP) – 10:00 am to 11:15 am (CT) September 22, 2015 – “Advanced Conflict Waivers: How to Avoid Unpleasant Surprises” (Intellectual Property Ow…Continue Reading ...
Almanac noted of Phil Silvers, the King of Chutzpah:Eventually renamed for its star, “The Phil Silvers Show” ran for just four years, but won EIGHT Emmys, including a Best Actor Award for Silvers in 1956.Related to patent reformers talking about the “p…Continue Reading ...
Strafford will be offering a webinar/teleconference entitled “USPTO Rule Changes for PTAB Trial Proceedings — Navigating Changes to New Testimonial Evidence, Rule 11-Like Requirement, Claim Construction Standard, Motions to Amend, and More” on October…Continue Reading ...
Takeaway: Grounds raised during a preliminary proceeding, but not made part of the instituted trial, are not raised “during” an inter partes review and thus cannot be the basis for estoppel under 35 U.S.C. § 315(e)(1). In its Decision, the … Continue reading →Continue Reading ...
Takeaway: The Board does not have the authority to determine whether an application was abandoned or improperly revived when determining whether a challenged claim is entitlted to claim priority to a an earlier-filed application. In its Decision, the Board denied institution and determined … Continue reading →Continue Reading ...
From TheHill –>
We must not erode this incentive to develop novel ideas or restrict the opportunity for inventors to license their know-how. Unfortunately, there is legitimate concern that patent legislation currently pending before the U.S. Congress — H.R. 9 (the Innovation Act) and S. 1137 (the PATENT Act) — would do just that.
A stated aim of the pending legislation is to stop abusive patent litigation. Without question those who seek to abuse the patent system should be rooted out for the same reasons that our courts guard against abusive litigation involving physical property. But as currently drafted, the bills would fundamentally weaken basic patent rights by protecting infringers at the expense of patent holders. This would be devastating to small and large entities that invent or seek licenses to use inventions of others.
A particularly problematic component of the House and Senate bills is the so-called “customer stay” provision, which like other parts of the legislation is much broader than necessary to achieve its stated goals. The provision seeks to ensure that a business that buys and uses a patent-infringing off-the-shelf product may avoid litigation that is more appropriately brought against the manufacturer of the product. The provision would “stay” or stop litigation against such “customers” and force patent holders to first go after “upstream” manufacturers. The problem is that the definition of “customer” is so broad that the right to stay litigation would also apply to large manufacturers, assemblers, and retailers that may reap millions or even billions in profits from using and selling the infringing product or component.Continue Reading ...
We convene en banc to resolve whether, in light of the
Supreme Court’s recent decision in Petrella v. MetroGoldwyn-Mayer, Inc., 134 S. Ct. 1962 (2014), laches
remains a defense to legal relief in a patent infringement
suit. We conclude that Congress codified a laches defense
in 35 U.S.C. § 282(b)(1) that may bar legal remedies.
Accordingly, we have no judicial authority to question the
law’s propriety. Whether Congress considered the quandary in Petrella is irrelevant—in the 1952 Patent Act,
Congress settled that laches and a time limitation on the
recovery of damages can coexist in patent law. We must
respect that statutory law.
Nevertheless, we must adjust the laches defense in
one respect to harmonize it with Petrella and other Supreme Court precedent. We emphasize that equitable
principles apply whenever an accused infringer seeks to
use laches to bar ongoing relief. Specifically, as to injunc-
tions, considerations of laches fit naturally within the
eBay framework. In contrast, Menendez v. Holt, 128 U.S.
514 (1888), and Petrella counsel that laches will only
foreclose an ongoing royalty in extraordinary circumstances.
As to reasoning:
Four different portions of Aukerman’s reasoning are
especially relevant to this case. First, we determined in
Aukerman that laches was codified in 35 U.S.C. § 282.
Aukerman explained that, “[a]s a defense to a claim of
patent infringement, laches was well established at the
time of recodification of the patent laws in 1952.” Id. at
1029. We also credited P.J. Federico’s Commentary on the
New Patent Act for its observation that the second paragraph
of § 282 includes “equitable defenses such as laches,
estoppel and unclean hands.” Id. (quoting P.J.
Federico, Commentary on the New Patent Act, 35 U.S.C.A.
1, 55 (West 1954) (hereinafter Federico Commentary)).
Second, Aukerman addressed the argument that laches
conflicts with 35 U.S.C. § 286, which limits recovery of
damages to the six years prior to the complaint. We
explained that “[i]n other areas of our jurisdiction, laches
is routinely applied within the prescribed statute of
limitations period for bringing the claim.” Id. at 1030
(citing Cornetta v. United States, 851 F.2d 1372 (Fed. Cir.
1988) (en banc) (military pay); Reconstruction Finance
Corp. v. Harrisons & Crosfield Ltd., 204 F.2d 366 (2d
Cir.), cert. denied, 346 U.S. 854 (1953) (breach of contract)).
Moreover, we observed that § 286 (or a virtually
identical analogue) “has been in the patent statute since
1897,” and that, “[w]ithout exception, all circuits recognized
laches as a defense to a charge of patent infringement
despite the reenactment of the damages limitation
in the 1952 statute.” Id. Aukerman also noted that
“section 286 is not a statute of limitations in the sense of
barring a suit for infringement.” Id. Rather, “the effect of
section 286 is to limit recovery to damages for infringing
acts committed within six years of the date of the filing of
the infringement action.” Id. Finally, we reasoned that
laches and a statute of limitations are not inherently
incompatible. “By section 286, Congress imposed an
arbitrary limitation on the period for which damages may
be awarded on any claim for patent infringement. Laches,
on the other hand, invokes the discretionary power of
the district court to limit the defendant’s liability for
infringement by reason of the equities between the particular
parties.” Id. (emphasis in original).
Third, we rejected the argument “that laches, by reason
of being an equitable defense, may be applied only to
monetary awards resulting from an equitable accounting,
not to legal claims for damages.” Aukerman, 960 F.2d at
1031. According to the Aukerman court, the merger of
law and equity courts allowed laches to bar legal relief.
When in 1915 Congress enacted 28 U.S.C. § 398—which
authorized parties to plead equitable defenses at law
without having to file a separate bill in equity—“laches
became available to bar legal relief, including patent
damage actions.” Id. We also found persuasive the fact
that Federal Rule of Civil Procedure 8(c) recognizes laches
as a defense in civil actions. Id.
Fourth, Aukerman considered whether laches bars recovery
of pre-filing damages only, or whether it precludes
the entire suit. In ruling that laches prohibits recovery of
pre-filing damages only, Aukerman relied on the Supreme
Court’s Menendez decision. Aukerman quoted the following
portion of Menendez:
link: http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/13-1564.Opinion.9-16-2015.1.PDFContinue Reading ...
Takeaway: Petition was not dismissed where Patent Owner was able to show some blurring of the corporate separation between parent and subsidiaries, because Petitioner was able to declare that the parent company was not paying or making any decisions related … Continue reading →Continue Reading ...
Takeaway: A request for reconsideration of the Board’s previous claim construction, without a cogent explanation of how the Board’s claim construction is in error, may not be persuasive. In its Final Written Decision, the Board concluded that Petitioner has shown … Continue reading →
The post Final Written Decision Turning on Claim Construction IPR2014-00639 appeared first on PTAB Trial Blog.Continue Reading ...
BERN – Everybody knows how annoying it is to run out of battery power for mobile devices. In the same way, storing energy is a continuing issue for renewable energy due to its non-continuous nature. A number of innovations presented at this week’s Swiss Energy and Climate Summit in Bern sought to address that problem.The yearly event invites Swiss and international speakers to put forward the latest in technology. And according to some participants from start-ups, intellectual property is key, but their IP strategy relies more and more on both patents and trade secrets.Continue Reading ...
Authored by Paul Qualey, Dervis Magistre, and Vivian Cheng Digest of Apple Inc. v. Samsung Electronics Co., Ltd., No. 2014-1802 (Fed. Cir. Sept. 17, 2015) (precedential). On appeal from N.D. Cal. Before Prost, Moore, and Reyna. Procedural Posture: Plaintiff Apple … Continue reading →Continue Reading ...
The American Intellectual Property Law Association (AIPLA) will be offering a webinar on “USPTO’s Proposed Changes to PTAB Practice: A Primer on the Recently Proposed Amendments to the Rules Governing PTAB Proceedings” on October 6, 2015 from 12:30 – 2…Continue Reading ...
The American Intellectual Property Law Association (AIPLA) will be offering a webinar on “Unitary Patent Protection in Europe – An Attunement on the Upcoming New System” on October 7, 2015 from 12:30 – 2:00 pm (Eastern). Jim Bell of Cabinet Beau de Lom…Continue Reading ...
By: Stuart P. Meyer Last week, I reported on a September 4 decision from the District of Massachusetts in which the court emphasized that the presumption of validity applies to subject matter eligibility. This week, another judge in the same district invalidated all asserted claims of a patent on a fever thermometer based on subject matter ineligibility. Exergen Corp. v. Thermomedics, Inc., 13-11243-DJC (D. MA. September 15, 2015). The case is noteworthy because, among other reasons, it makes no mention whatsoever of the presumption of validity or what burden of persuasion the defendants had with respect to their § 101…Continue Reading ...
The Munich Oktoberfest, the world-famous beer festival, is a display for a range of inventions, according to the Munich-based European Patent Office. A search in the patent database of the office revealed there are more than 2,000 European patents in e…Continue Reading ...
R+L Carriers, Inc. (“R+L”) brought suit against, inter
alia, Qualcomm, Inc. (“Qualcomm”), asserting infringement
of the claims of U.S. Patent No. 6,401,078 (“the ’078
patent”). While the case was pending, R+L filed for ex
parte reexamination of the ’078 patent. Although the
patent survived, R+L added language to all of the claims
at issue. Because the district court determined that the
new claims were not substantially identical to the initial
claims of the ’078 patent, and because there was no dispute
that Qualcomm ceased its allegedly infringing activity
before the reexamination certificate issued, R+L
stipulated to final judgment, dismissing its infringement
claim against Qualcomm. R+L appeals the district court’s
determination that the amendments made during reexamination
resulted in a substantive change in claim
scope. For the reasons set forth below, we affirm, albeit
on slightly different grounds than those relied upon by the
As to intervening rights
As an initial matter, we disagree with both Qualcomm
and R+L on the primary premises of their arguments. As
for Qualcomm, we do not agree that claim 1 was substantively
narrowed in reexamination because insertion of the
term “advance” into the claims limited claim 1 to only
computer-generated loading manifests. Qualcomm reads
too much into the term “advance,” which, as discussed
below, was added to the claim for reasons unrelated to the
format for preparing the loading manifests. Speculation
about what R+L was attempting to accomplish vis-à-vis
the N&M reference does not change our view.
Under the statute and our prior case law, it is irrelevant
why an amended claim is narrowed during reexamination,
or even whether the patentee intended to narrow
the claim in a particular way. If the scope of the amended
claim is not “substantially identical” to the scope of the
original claim—based on a normal claim construction
analysis—per § 252, that fact affects intervening rights.
See 35 U.S.C. § 307(b).
The bottom line
Accordingly, we conclude that amended claim 1 is not
“substantially identical” to original claim 1. 35 U.S.C.
§ 252. R+L is, thus, not entitled to infringement damages
prior to issuance of the reexamination certificate for the
’078 patent. Since R+L concedes that Qualcomm did not
perform any allegedly infringing conduct after the PTO
issued the reexamination certificate, the district court
properly entered judgment dismissing the case against
For the foregoing reasons, we affirm the judgment of
the district court dismissing R+L’s infringement claims
link: http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/14-1718.Opinion.9-15-2015.1.PDFContinue Reading ...
Authored by Paul Qualey, Dervis Magistre, and Vivian Cheng Digest of SCA Hygiene Products Aktiebolag v. First Quality Baby Products, LLC, No. 2013-1564 (Fed. Cir. Sept. 18, 2015) (precedential). On appeal from W.D. Ky. Before Prost, Newman, Lourie, Dyk, Moore, … Continue reading →Continue Reading ...
After four years of talks, committee members at the World Intellectual Property Organization have agreed on a definition for what constitutes an expenditure on development in the UN agency.Continue Reading ...
Several leading public health groups have sent a letter to United States Trade Representative and US Patent and Trademark Office director asking for more transparency on the US position on a request by least-developed countries to indefinitely extend t…Continue Reading ...
Injunction win for Apple in smart phone wars.
From the decision:
Despite the narrowness of Apple’s proposed injunction,
the district court denied Apple’s motion, finding that
Apple had not shown that it would suffer irreparable
harm without an injunction. Id. at *23. Predicated
entirely on this finding, the district court reasoned that
Apple could not establish that monetary damages were
inadequate. Id. at *19. Although the district court found
that the public interest favored Apple’s request and that
the narrowness of Apple’s proposed injunction tilted the
balance of hardships in Apple’s favor, it determined that
these factors did not overcome Apple’s lack of irreparable
harm. Id. at *23. Apple appealed. We have jurisdiction
under 28 U.S.C. § 1295(a)(1).
The district court erred when it found the first two
eBay factors weighed against an injunction. Although the
evidence may not make a strong case of irreparable harm,
Apple has satisfied the causal nexus requirement and
therefore established irreparable harm.2 Apple has also
established that the harm it will suffer is not easily
compensable at law. Moreover, as the district court
found, the balance of hardships and public interest weigh
strongly in favor of an injunction. Given this, the district
court abused its discretion when it did not enjoin Samsung’s
infringement. If an injunction were not to issue in
this case, such a decision would virtually foreclose the
possibility of injunctive relief in any multifaceted, multifunction
technology. We vacate the district court’s order
denying Apple’s proposed injunction and remand for
further proceedings consistent with this opinion.
See Wall Street Journal article.
link to case: http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/14-1802.Opinion.9-15-2015.1.PDFContinue Reading ...
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