State Sovereignty Cannot Be Used as a Sword to Overcome Federal Venue Rules for Patent Infringement Suits When the State is Solely a Plaintiff in the Case

In July of 2018, the U.S. Court of Appeals for the Federal Circuit (“Federal Circuit”) held that tribal sovereign immunity does not apply in inter partes review (IPR) proceedings. Saint Regis Mohawk Tribe v. Mylan Pharm., Inc., 896 F.3d 1322, 1329 (Fed. Cir. 2018). But they left “for another day the question of whether there …

Statements Made During Patent Prosecution Held to Limit a Coined Term of Degree Despite No Clear Disavowal of Claim Scope by the Patentee

SUMMARY:  Acknowledging a lack of clear disavowal of claim scope, the U.S. Court of Appeals for the Federal Circuit nevertheless recently upheld the U.S. District Court for the Eastern District of Texas’ claim construction limiting the scope of the phrase “high quality of service connection.” Iridescent Networks, Inc. v. AT&T Mobility, LLC, No. 2018-1449, 2019 …

A Document Accessible to the Public May Qualify as a Prior Art Reference Even If the Document Was Not Accessed

Summary: Whether a reference is publicly accessible and, therefore, available as prior art depends on whether a person of ordinary skill in the art could, after exercising reasonable diligence, access a reference.  The question of accessibility may depend on a careful, case-by-case examination of how the particular reference was disseminated, to whom, for how long, …

What’s in a Name? Establishing Irreparable Harm to Brand Equity Can Help Support a Preliminary Injunction

SUMMARY: To obtain a preliminary injunction in a copyright, patent, or trademark infringement case, a party must establish, among other things, a likelihood of success on the merits of its claims and irreparable harm resulting from the infringement.  The party may demonstrate irreparable harm through evidence showing lost brand equity, likely consumer confusion, lost goodwill, …

Vehicle Terrain Response Technology Found to Qualify as Patent-Eligible Subject Matter

Summary: In Jaguar Land Rover Ltd. v. Bentley Motors Ltd., the Eastern District of Virginia addressed whether claims directed to Jaguar Land Rover Ltd.’s Terrain Response technology qualified as patent-eligible subject matter under 35 U.S.C. § 101. No. 2:18CV320, 2019 U.S. Dist. LEXIS 108878 (E.D. Va. June 26, 2019).  Using the two-part test set forth …

A Pre-Institution Merger May Prevent Inter Partes Review Challenges

Summary: The Court of Appeals for the Federal Circuit (“Federal Circuit”) recently addressed the issue of privity relationships and the inter partes review (“IPR”) institution time bar set forth in 35 U.S.C. § 315(b) in Power Integrations, Inc. v. Semiconductor Components Industries, No. 2018-1607 (Fed. Cir. June 13, 2019).  The Federal Circuit held that privity and …

Design-Around to Patented Technology Requiring Several Months for Production May Not Qualify as an Available Noninfringing Alternative in a Patent Infringement Damages Determination

Summary:  A finding of infringement may result in an award of actual damages or a reasonable royalty to a patent owner.  To be entitled to actual damages, the patent owner must at least prove the absence of acceptable noninfringing alternatives.  Even if the accused infringer did not have an acceptable noninfringing alternative on the market …

Federal Circuit Suggests Infringement May Be Found Under the Doctrine of Equivalents Only in Exceptional Cases

SUMMARY:  A recent decision from the Federal Circuit examined the application of the doctrine of equivalents in an infringement suit relating to biological products.  In particular, the Federal Circuit stated that the doctrine only applies in exceptional cases, thereby suggesting a limitation of the application of the doctrine. In Amgen Inc. v. Sandoz Inc., No. …

Failure to Conduct an Adequate Pre-Suit Investigation May Lead to an Award of Fees in Exceptional Cases

SUMMARY:  A court may grant a prevailing party’s motion for attorney’s fees in exceptional cases in which the court determines that the non-prevailing party failed to conduct an adequate pre-suit investigation.  In particular, a court may grant a prevailing party’s motion for attorney’s fees in cases in which the non-prevailing party failed to examine an …

Patent Exhaustion May Not Protect Parties Upstream of an Initial Authorized Sale of a Patented Product

SUMMARY: Patent exhaustion can protect parties downstream of an initial authorized sale of a patented product in the chain of commerce but may not protect parties upstream of the sale.  In this respect, when a retailer is granted a license from a patent holder to sell an otherwise infringing product, any upstream parties, such as …