After ten years of litigation, the Federal Circuit found that the district court conducted an improper collateral estoppel analysis and upheld ParkerVision’s position on each of the appealed issues.[1]Continue Reading Different Evidentiary Burdens in IPR Proceedings and District Court Means No Collateral Estoppel Effect on Related Patent Claims
This decision[1] emphasizes the significance of broader public dissemination to meet the statutory requirement of “publicly disclosed” for purposes of exceptions to prior art under 35 U.S.C. § 102(b)(2)(B).Continue Reading The Federal Circuit Clarifies the Meaning of “Publicly Disclosed”
In Dragon Intellectual Property LLC v. Dish Network L.L.C. No. 22-1621 (Fed. Cir. May 20, 2024), the Federal Circuit clarifies the standard for “exceptional” cases under 35 U.S.C. § 285. The case concerns attorneys’ fees and the application of § 285 attorneys’ fees to inter partes review (“IPR”) proceedings, and addresses attorney liability for § 285 fee awards.Continue Reading The Federal Circuit Interprets the Application of 35 USC § 285 and Attorney’s Fees
In 2010, Trading Technologies International, Inc. (“TT”) filed suit against IBG LLC and its subsidiary Interactive Brokers LLC for patent infringement. The four patents in question, U.S. Patent Nos. 6,766,304; 6,772,132; 7,676,411; and 7,813,996 — were related and directed to graphical user interfaces used by commodity traders. TT alleged that IBG’s software, TWS BookTrader, which is used by traders to buy and sell on exchanges, infringed its patents.Continue Reading Federal Circuit Applies WesternGeco Framework to Expert’s Effort to Seek Royalties Flowing from Customers Overseas
In BBK Tobacco & Foods LLP v. Cent. Coast Agric., Inc., 97 F.4th 668 (9th Cir. 2024), the Ninth Circuit Court of Appeals held that federal district courts have power to adjudicate trademark applications pursuant to the Lanham Act, 15 U.S.C. § 1119, provided that the litigation involves infringement of a registered trademark.Continue Reading Divided 9th Circuit Says District Court Has Power to Adjudicate TM Applications
In Medtronic, Inc. v. Teleflex Life Sciences Limited, 2022-1721, 2022-1722 (Fed. Cir. Nov. 16, 2023), the Federal Circuit considered whether U.S. Patent RE46,116 (“the ’116 patent”) was entitled to an alleged priority date sufficient to moot Medtronic’s asserted pre-AIA §102(e) prior art reference, which depended on whether Medtronic had waived its challenged to Teleflex’s asserted priority date by attempting to incorporate those arguments by reference in its Inter Partes Review (“IPR”) petitions, and whether the USPTO Patent Trial and Appeal Board (“PTAB”) correctly found that Teleflex sufficiently demonstrated not only the date of conception, but also that the inventors had diligently reduced the claimed invention to practice.Continue Reading Federal Circuit Rebukes Attempt to Incorporate Arguments by Reference to a Related IPR Petition
In Columbia Sportswear North America, Inc. v. Seirus Innovative Accessories, Inc. 2021-2299, 2021-2338 (Fed. Cir. Sept. 15, 2023), the Federal Circuit vacated a jury verdict of non-infringement in a design-patent infringement action filed by Columbia Sportswear against Seirus Innovative Accessories. It found that the lower court erred by failing to instruct the jury that “comparison prior art” must be tied to the same article of manufacture as that claimed.Continue Reading “Comparison Prior Art” Must Be Tied to the Same Article of Manufacture as That Claimed
The Federal Circuit vacated and remanded two Patent Trial and Appeal Board (“PTAB”) decisions because the PTAB erred in its obviousness analysis and found that Axonics failed to show a motivation to combine as to Medtronic’s ‘314 and ‘756 patents.Continue Reading Axonics v. Medtronic
In Medronic, Inc. v. Teleflex Life Sciences Limited, 2022-1721, 2022-1722 (Fed. Cir. Nov. 16, 2023), the Federal Circuit considered whether U.S. Patent RE46,116 (“the ’116 patent”) was entitled to an alleged priority date sufficient to moot Medtronic’s asserted pre-AIA §102(e) prior art reference, which depended on whether Medtronic had waived its challenged to Teleflex’s asserted priority date by attempting to incorporate those arguments by reference in its Inter Partes Review (“IPR”) petitions, and whether the USPTO Patent Trial and Appeal Board (“PTAB”) correctly found that Teleflex sufficiently demonstrated not only the date of conception, but also that the inventors had diligently reduced the claimed invention to practice.Continue Reading Federal Circuit Rebukes Attempt to Incorporate Arguments by Reference to a Related IPR Petition
The Federal Circuit reversed a Patent Trial and Appeal Board (“Board”) decision finding the challenged claims of Sanofi-Aventis’ ’614 patent unpatentable as obvious.Continue Reading Sanofi-Aventis Deutschlan GMBH v. Mylan Pharmaceuticals Inc.
We are excited to share Sheppard Mullin’s inaugural quarterly report on key Federal Circuit decisions. The Spring 2023 Quarterly Report provides summaries of most key patent law-related decisions from January 1, 2023 to March 31, 2023.Continue Reading 2023 Federal Circuit Case Summaries