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Posted in Litigation, Patents

In a stinging decision that will impact its patent portfolio, Arthrex recently suffered a setback in a patent dispute over suture anchors with Smith & Nephew. The Federal Circuit upheld a PTAB judgment entering adverse judgment against claims 1-9 of Arthrex’s U.S. Pat. No. 8,821,541, which S&N challenged in a 2016 IPR. This decision will affect the related patent portfolio because of the estoppel provisions of 37 CFR 42.73.

Posted in Litigation, Patents

The Federal Circuit rejected the patent venue test recently established by Judge Rodney Gilstrap of the Eastern District of Texas, the judge who has been reported to preside over about one quarter of all patent infringement cases in America. The three judge panel held that Judge Gilstrap abused his discretion and applied an incorrect legal standard in Raytheon Co. v. Cray Inc. when he refused to transfer the patent suit after applying his own four-factor test and determined defendant Cray maintained “a regular and established place of business” in the district where only one of its employees worked from home. As a result of its findings, the Federal Circuit ordered the case to be transferred.

Posted in Litigation, Patents

Written opinions of counsel are gaining renewed interest as a valuable tool for avoiding enhanced damages for willful patent infringement following the Halo decision. A written opinion may set forth the factual and legal basis for finding a third party patent not infringed, invalid, and/or unenforceable. However, to be effective, the timing of the opinion may be critical.

Posted in Litigation, Patents

For declaratory judgment (DJ) actions concerning patents, whether a patent owner’s conduct is sufficient for there to be a real and immediate controversy is the usual jurisdictional hurdle. In BASF Plant Science, LP v. Nuseed Americas Inc., a District of Delaware court recently examined a different issue–who must be named as a defendant to support DJ jurisdiction when there is an exclusive patent licensee.

In a recent decision denying defendants’ motion for Rule 11 sanctions, the District of Massachusetts interpreted its local rule regarding the district’s filing deadline. The decision gives guidance to litigators regarding the use of the court’s electronic filing system.

Key Takeaway

  • Despite the fact that no Local Rule for the District of Massachusetts expressly addresses the question of after-hours electronic service, the 6:00 p.m. filing deadline provides a “useful—and sensible—analogy for timeliness of electronic service.” Service on opposing parties should generally be filed by 6:00 p.m. of the due date.
Posted in Litigation, Patents
Fantastic Beast Sighting in the District of Massachusetts—Motion to Strike Allowed

The District of Massachusetts recently issued something of a legal unicorn;1 it granted a plaintiff’s motion to strike two of the defendant’s affirmative defenses. This uncommon result offers some insight into the importance of careful pleading.

Supreme Court’s Ruling on AIA Patent Reviews Could Reverberate Across Patent Law Landscape

On June 12, 2017, the U.S. Supreme Court granted certiorari in Oil States Energy Services LLC v. Greene’s Energy Group, LLC to decide whether the AIA (America Invents Act) patent review program for challenging the validity of issued patents is constitutional. Specifically, the Court will decide the question of “whether inter partes review – an adversarial process used by the Patent and Trademark Office (PTO) to analyze the validity of existing patents – violates the Constitution by extinguishing private property rights through a non-Article III forum without a jury.”

The Supreme Court held in Matal v. Tam that the Lanham Act’s provision forbidding the registration of disparaging trademarks is unconstitutional in violation of the First Amendment. The Court explained that “[s]peech may not be banned on the ground that it expresses ideas that offend.”

Posted in Litigation, Patents
Federal Circuit Reverses Fee Award in Case Tagged as Exceptional

While the Supreme Court’s decisions in Octane Fitness, LLC v. ICON Health & Fitness, Inc. and Highmark Inc. v. Allcare Health Management System, Inc. significantly relaxed the standard for awarding attorney fees under 35 U.S.C. § 285, a recent decision by the Federal Circuit provides a reminder of the limits to a district court’s discretion. In Checkpoint Systems, Inc. v. All-Tag Security S.A., the Federal Circuit found that the district court abused its discretion in awarding fees to All-Tag because Checkpoint’s conduct relied upon by the district court did not render the case exceptional.

Posted in Litigation, Patents
Supreme Court Provides Additional Clarity on the Scope of Patent Exhaustion

According to a recent Supreme Court decision, when it comes to the applicability of patent exhaustion, “restrictions and location are irrelevant; what matters is the patentee’s decision to make a sale.” In Impression Products, Inc. v. Lexmark International, Inc., the Supreme Court confirmed that the authorized sale of a patented article by a patentee exhausts all patent rights in that article, even where the patentee and the buyer agree to post-sale restrictions on the use and resale of the article. The Court also held that the authorized sale of a patented product abroad triggers patent exhaustion, just as a sale in the U.S. does.

Maximizing the protection and value of intellectual property assets is often the cornerstone of a business's success and even survival. In this blog, Nutter's Intellectual Property attorneys provide news updates and practical tips in patent portfolio development, IP litigation, trademarks, copyrights, trade secrets and licensing.

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