Knobbe/Martens: Intellectual Property Law

IP Practice

Subscribe to IP Practice Blog

SPINEOLOGY, INC., V. WRIGHT MEDICAL TECHNOLOGY INC.

December 14, 2018 Adam R. Aquino and Karen M. Cassidy

Before Prost, Dyk and Moore.  Appeal from the United States District Court for the District of Minnesota.

Summary: A party’s continued, but ultimately unsuccessful, pursuit of a claim construction may not warrant attorneys’ fees.  In addition, district courts are not required to resolve every issue mooted by summary judgment to rule on a motion for attorneys’ fees.

 

VIRNETX INC., v. APPLE, INC.

December 10, 2018 Alexander D. Zeng and Christie Matthaei

Before Newman, O’Malley, and Chen.  Appeal from the PTAB.

Summary: Patent Owner Vertnetx Inc. (“Virnetx”) was collaterally estopped from arguing that a reference was not a printed publication because the Federal Circuit had already determined the reference was a printed publication in a Rule 36 judgement in a separate but related appeal.

 

JACK HENRY & ASSOCIATES, INC. V. PLANO ENCRYPTION TECHNOLOGIES

December 10, 2018 Lindsay Laddaran and Nicole R. Townes

Before Newman, Wallach, and Stoll.  Appeal from the District Court of the Northern District of Texas. 

Summary:  There is no generalized rule that sending letters alleging patent infringement by themselves does not create personal jurisdiction.

 

NOVARTIS PHARMACEUTICALS CORP. V. BRECKENRIDGE PHARMACEUTICAL

Before Prost, Wallach, and Chen.  Appeal from the United States District Court for the District of Delaware.

Summary: A post-URAA patent that issues after but expires before a related pre-URAA patent is not a double-patenting reference against the pre-URAA patent. 

 

NOVARTIS AG v. EZRA VENTURES LLC

December 10, 2018 Janet M. Olsen, Ph.D. and Nicole R. Townes

Before Moore, Chen, and Hughes.  Appeal from the United States District Court for the District of Delaware.

Summary: Obviousness-type double patenting does not invalidate an otherwise validly obtained patent term extension under 35 U.S.C. § 156.

 

LAERDAL MEDICAL CORP. V. ITC

December 10, 2018 Sean S. Kim and Nicole R. Townes

Before Lourie, O’Malley, and Stoll.  Appeal from the United States International Trade Commission.

Summary: After institution, the Commission cannot without opposition or appearance from respondents assert insufficient pleadings as a basis for denying relief under 19 U.S.C. § 1337(g)(1).  

 

Will New PTO Guidance Be The Antidote to Alice In The Medical Device Patenting Process?

December 5, 2018 Philip M. Nelson and Ronald J. Schoenbaum

Medical devices are increasingly incorporating software and other computer elements, but software and computer patents are in the middle of a multi-year battle between different worldviews.  This battle is destined to trap more and more medical device patents in a strange procedural limbo.

 

Invalidating Patents Under §101 in the Early Stages of Litigation Still Possible Post-Berkheimer and Aatrix

December 3, 2018 Suyoung Jang and Cheryl T. Burgess

Patent eligibility challenges under 35 U.S.C. §101 have been effective tools for defendants to obtain early dismissal of a case without extensive fact finding since the Supreme Court ruling in Alice. Whether a claim recites patent eligible subject matter is a question of law.[1] Thus, defendants can challenge patent eligibility at the outset of the case, either through a motion to dismiss under 12(b)(6) or on a motion for summary judgment, with the goal of concluding the litigation without incurring the expense of discovery and trial. 

 

MAXCHIEF INVESTMENTS LIMITED V. WOK & PAN, IND., INC.

November 30, 2018 Derek M. Abeyta and Andrea Cheek

Before Dyk, Reyna, and Hughes.  Appeal from the United States District Court for the Eastern District of Tennessee.

Summary: In the context of a suit for a declaration of non-infringement and invalidity of a patent, the “minimum contacts” prong of personal jurisdiction is satisfied only if the patentee directed some patent enforcement activity to the forum state.

 

SCHLAFLY V. THE SAINT LOUIS BREWERY, LLC

November 27, 2018 Chanell Khosrowabadi and Adam Powell

Before Newman, Mayer, and Stoll.  Appeal from the Trademark Trial and Appeal Board.

Summary: Words that are primarily a surname can be registered as trademarks if they have acquired secondary meaning, even if the public also associates the surname with a famous individual.  

Pages

Attorney Finder