Knobbe/Martens: Intellectual Property Law

IP Practice

Amended Complaint May Relate Back to Original Complaint Despite Asserting Different Patents

August 16, 2019 Josepher Li and Jeremy Anapol

ANZA TECHNOLOGY, INC. v. MUSHKIN, INC.

Before Prost, Newman, and Bryson.  Appeal from the United States District Court for the District of Colorado.

Summary:  Patent infringement claims in an amended complaint may relate back to the date of an original complaint that asserted different patents if the facts underlying the original infringement claims gave notice to the defendant of the nature of the allegations in the amended complaint.

 

A “Substantially Equivalent” Disclosure May Satisfy the Written Description Requirement

August 16, 2019 Nathan J. Lee and Karen M. Cassidy

NALPROPION PHARMACEUTICALS, INC. v. ACTAVIS LABORATORIES FL, INC.

Before Prost, Lourie and Wallach. Appeal from the U.S. District Court for the District of Delaware. 

Summary: A “substantially equivalent” disclosure may satisfy the written description requirement where the “equivalent disclosure” relates only to resultant parameters rather than operative claim steps.

Failure of ITC to Follow Its Own Rules May Constitute Harmless Error

August 15, 2019 Jacob R. Rosenbaum and Andrea Cheek

SWAGWAY, LLC v. ITC [REVISED OPINION - PRECEDENTIAL]

Before Dyk, Mayer, and Clevenger.  Appeal from the International Trade Commission.

Summary:  Although the ITC must strictly comply with its rules, failure to do so may constitute harmless error.  Additionally, the Federal Circuit withdrew its prior holding that ITC decisions on trademark issues do not have preclusive effect.

 

Disclaimed Patent Claims Fail to Give Rise to an Article III Case or Controversy

August 14, 2019 Ashley C. Morales and Andrea Cheek

SANOFI-AVENTIS U.S., LLC v. FRESENIUS KABI USA, LLC

Before Lourie, Moore, and Taranto.  Appeal from the United States District Court for the District of New Jersey.

Summary: District courts lack the authority to declare disclaimed patent claims invalid because no case or controversy exists with respect to such claims.  Additionally, a case or controversy must exist at the time a court enters judgment, and not only at the time a complaint is filed.

 

Corresponding Structure in the Specification Does Not Render a Means-Plus-Function Term Structural

August 13, 2019 Clayton R. Henson and Adam Powell

MTD PRODUCTS INC. V. IANCU

Before Reyna, Taranto, and Stoll.  Appeal from the PTAB.

Toro petitioned for IPR of an MTD Products patent relating to lawnmowers.  MTD argued the term “mechanical control assembly” was a means-plus-function term.  The Board concluded the disputed phrase was primarily functional, but that a personal skilled in the art would have understood the term to denote structure based on the specification and prosecution history. Thus, the Board determined the term was not a means-plus-function term and held the challenged claims were obvious.

 

Court Upholds $4.3 Million of Jury Verdict Against Depuy Synthes

August 12, 2019 Brian Horne

Acantha LLC sued Depuy Synthes Sales Inc. and DePuy Synthes Products, Inc., alleging that Depuy’s Vectra and Zero-P VA products infringe U.S. Reissued Patent No. RE 43,008.  The patent relates to an orthopedic implant used for joining bone segments.

A jury found that all accused products infringed and awarded over $8.2 million in damages.  Depuy moved for judgment as a matter of law that it did not infringe.

 

Arguments During Prosecution Can Limit the Scope of a Coined Term with No Ordinary and Customary Meaning

August 12, 2019 David J. Grant and Adam Powell

IRIDESCENT NETWORKS, INC. v. AT&T MOBILITY, LLC

Before Prost, Reyna and Taranto. Appeal from the U.S. District Court for the Eastern District of Texas

Iridescent sued AT&T and Ericsson for infringement of a patent relating to network communication that provides guaranteed bandwidth, while minimizing data delay and loss. 

The Tangential Exception to Prosecution History Estoppel

August 12, 2019 Daniel A. Kamkar and Nicole R. Townes

ELI LILLY AND COMPANY v. HOSPIRA, INC.

Before Lourie, Moore, and Taranto.  Appeal from the District Court for the Southern District of Indiana.

Summary: A narrowing claim amendment does not necessarily surrender all equivalents of the claim element if the prosecution history shows that an equivalent is merely tangentially related to the amendment.

 

Jurisdiction over Foreign Entities and Foreign Sovereigns

August 12, 2019 Brian M.Z. Reece and Nicole R. Townes

GENETIC VETERINARY SCIENCES v. LABOKLIN GMBH & CO. KG

Before Wallach, Hughes, and Stoll.  Appeal from the Eastern District of Virginia.

Summary:  (1) If a foreign entity is not subject to jurisdiction in any state’s courts of general jurisdiction, but the claims against the entity arise under federal law and the exercise of jurisdiction comports with due process then personal jurisdiction may exist over a foreign entity in any federal court in the U.S.  (2) A foreign sovereign that obtains a U.S. patent, engages in licensing the patent and/or threatens enforcement of the patent may be subject to jurisdiction of U.S. courts under the “commercial activity” exception to the doctrine of sovereign immunity.

 

Court Declines to Apply Prosecution History Estoppel Based on the “Tangential Relation” Exception

August 7, 2019 Mark E. Davis and Kendall Loebbaka

AJINOMOTO CO., INC. v. ITC

Before Dyk, Moore, and Taranto.  Appeal from the ITC.

Ajinomoto filed a complaint against CJ America, Inc. with the International Trade Commission (“ITC”), alleging that CJ used several strains of E-coli bacteria to make products imported into the United States that infringed its patent.  The ITC determined that two of CJ’s E-coli strains infringed the asserted patent under the doctrine of equivalents.  The ITC found that Ajinomoto did not surrender the equivalent during prosecution because the “tangential relation” exception applied.  CJ appealed.

 

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