Photo of Don Geiger

Don Geiger

Subscribe to Don Geiger's Posts

Don Geiger is an associate in the Intellectual Property Practice Group in the firm's San Diego (Del Mar) office.

Contact:Read more about Don Geiger

In Acorda Therapeutics, Inc. v. Alkermes PLC, the Federal Circuit held that it did not have appellate jurisdiction to review a decision by the district court in the Southern District of New York not to modify an arbitral award of patent royalties. Though the Appellant, Accorda Therapeutics, Inc., presented a first ground to modify the arbitral award based in patent law, its presentation of a second and alternative ground based on contract law effectively undermined the Federal Circuit’s appellate jurisdiction.Continue Reading Federal Circuit Denies Appellate Jurisdiction Based on Alternative Ground for Relief

In CQV Co. Ltd. v. Merck Patent GmbH, the Federal Circuit addressed (1) the interaction of indemnification agreements with Article III standing for appeals of post-grant review decisions of the Patent Trial and Appeal Board; and (2) whether all evidence must be addressed by the Board when qualifying prior art. Continue Reading Federal Circuit Touches on Appellate Standing and Prior Art Determinations in the Context of Post-Grant Review Proceedings

Speck v. Bates, No. 2023-1147 (Fed. Cir. May 23, 2024) addressed two issues, (1) whether courts should apply a one-way test or a two-way test to determine if pre-critical claims materially differ from post-critical claims, such that an exception to the one-year time-bar on interference proceedings applies, and (2) whether Bates’ pre-critical claim language materially differed from his post-critical claim language, which dictates whether his claims were time-barred.Continue Reading Federal Circuit Clarifies Test for Exception to Increasingly Rare Interference Proceedings

Luv N’ Care, Ltd. and Nouri E. Hakim v. Lindsey Laurain and Eazy-PZ, LLC, Nos. 2022-1905, 2022-1970 (Fed. Cir. April 12, 2024) addressed several issues, including: (1) what evidence of litigation misconduct may support a finding of unclean hands, barring relief for related claims, (2) the appropriate legal analysis for finding a patent unenforceable due to inequitable conduct before the USPTO, (3) how to appropriately construe disputed facts underlying obviousness determinations at the summary judgment stage, and (4) the legal standard and timing for determinations of “prevailing party,” “exceptional case,” and “closeness” of the case, which underlie awards of attorney’s fees and costs.Continue Reading Federal Circuit Clarifies Requisite Analysis for Unclean Hands, Inequitable Conduct, Summary Judgement Determinations of Obviousness, and Awards of Fees and Costs

In University of South Florida Board of Trustees v. United States,[1] the Federal Circuit rejected a strict temporal limitation on when the Government’s license rights in patents stemming from federally funded research is triggered under the Bayh-Dole Act. Specifically, where a recipient of federal funds subcontracts out work to be performed using those federal funds and the subcontractor reduces an invention to practice, the Government’s license rights can be triggered by that reduction to practice even if no formal subcontractor agreement was in place between the fund recipient and subcontractor at the time of reduction to practice.Continue Reading Federal Circuit Weighs in on Temporal Rigidity of the Bayh-Dole Act’s Licensing Provisions

ParkerVision, Inc., v. Katherin K. Vidal, Under Secretary of Commerce for IP and USPTO Director No. 2022-1548, (Fed. Cir. December 15, 2023) primarily involved three topics: (1) the type of language in a patent specification that “clearly expresses” that the inventor was acting as a lexicographer, i.e., redefining a term against the term’s plain and ordinary meaning, (2) the appropriate scope of a reply brief when a patent owner introduces a claim construction for the first time in the patent owner response, and (3) the appropriate scope of a sur-reply brief to a reply brief. The Federal Circuit also engaged in a fact-specific obviousness inquiry regarding capacitor elements disclosed in the prior art.Continue Reading Federal Circuit Rules on Inventor-as-Lexicographer Definitions and the Proper Scope of Reply and Sur-Reply Briefing Following Patent Owner Responses to IPR Institution Decisions

RAI Strategic Holdings, Inc. v. Phillip Morris Products S.A., No. 2022-1862 (Fed. Cir. February 9, 2024) addressed two issues: (1) when the written description requirement is met in the context of a claimed range that is narrower than the ranges disclosed in the patent specification, and (2) the kind of prior art disclosure language which supports a finding of a motivation to combine for an obviousness rejection.Continue Reading Federal Circuit Rules on Written Description Requirement and Prior Art Statements Supporting a Motivation to Combine

In Medtronic, Inc., Medtronic Vascular, Inc., v. Teleflex Innovations S.A.R.L., the case addresses the weight the Patent Trial and Appeal Board (PTAB) should give to the intended purpose of a primary reference when evaluating a Person of Ordinary Skill in the Art’s (POSITA) motivation to combine that primary reference with secondary references.Continue Reading Federal Circuit Weighs in on Relevance of Primary Reference’s Intended Purpose to a POSITA’s Motivation to Combine

This case is primarily about the Daubert standard as applied to expert testimony on damages. The Federal Circuit reversed the Northern District of California’s admission of expert testimony on damages, which relied on calculations that failed to differentiate between infringing products and non-infringing products. The Federal Circuit also reiterated the standards for a judgment as a matter of law (“JMOL”) of non-obviousness, and clarified that “by means of” claim language does not limit to but-for causation, i.e., it does not mean “by the exclusive means of.”Continue Reading Cyntec Company, Ltd. v. Chilisin Electronics Corp., Chilisin America Ltd. Nos. 2022-1873, (Fed. Cir. October 16, 2023)