Knobbe/Martens: Intellectual Property Law

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WESTERNGECO LLC V. ION GEOPHYSICAL CORP.

June 22, 2018 April K. White and Mark Kachner

Before the Supreme Court. Thomas delivered opinion, joined by Roberts, Kennedy, Ginsburg, Alito, Sotomayor, and Kagan.  Gorsuch dissenting, joined by Breyer.

Summary: Patentee may recover foreign lost profits, where infringer violated § 271(f)(2) by exporting from the United States a component of a patented invention.

SIRONA DENTAL SYSTEMS GMBH v. INSTITUT STRAUMANN AG

June 19, 2018 Scott R. Seeley and Andrea Cheek

Before Prost, Moore, and Stoll.  Appeal from the Patent Trial and Appeal Board.

Summary: An IPR petitioner bears the burden of persuasion concerning the patentability of proposed substitute claims. 

Four New Rules at the ITC That Patent Litigators Need to Know

June 18, 2018 Sheila Swaroop and Jonathan Bachand

The ITC has issued a series of new rules applying to all Section 337 investigations instituted after June 7, 2018.  Although the overall impact of these new rules is not yet known, attorneys will find the following four changes of particular interest.

 

XITRONIX CORPORATION v. KLA-TENCOR CORPORATION [ORDER]

June 15, 2018 Ashley C. Morales and Mark Kachner

Before Prost, Newman, Mayer, Lourie, Dyk, Moore, O’Malley, Reyna, Wallach, Taranto, Chen, Hughes, and Stoll.  Petition for panel rehearing and rehearing en banc.

 

USPTO Provides New Guidance on Motions to Amend During IPR

June 15, 2018 Mark E. Davis and Benjamin Anger

On June 1, 2018 the U.S. Patent and Trademark Office designated a Board order in Western Digital Corporation v. SPEX Technologies, Inc. as informative on the issue of Motions to Amend during an IPR.  At the same time, the USPTO de-designated two previously designated orders concerning Motions to Amend.  The Western Digital order provides eight separate areas of guidance for the parties in the event the patent owner elects to file a Motion to Amend.  Some of the information may be familiar to IPR practitioners because of overlap with the de-designated orders, but the Western Digital order importantly incorporates new guidance from recent cases and Board practice.  Thus, IPR litigants should be aware of several important practice changes reflected in the order.

 

Stone Basket Innovations, LLC v. Cook Medical, LLC

Before PROST, Wallach, and Taranto.  Appeal from the Southern District of Indiana.

Summary:  In determining whether a party’s actions were “exceptional” under Octane Fitness, the District Court properly considered the totality of the evidence, including clear notice of the prevailing party’s invalidity position and litigation conduct.

MEDTRONIC, INC. v. BARRY

June 11, 2018 James Smith and Karen M. Cassidy

Before Taranto, Plager, and Chen.  Appeal from the Patent Trials and Appeals Board.

Summary: In determining whether materials distributed at meetings or conferences are reasonably accessible to the public, the Board must consider numerous factors, not just the exclusive nature and expertise of a group. 

PGS GEOPHYSICAL AS v. IANCU

June 8, 2018 Vicki Y. Nee and Nicole R. Townes

Before Wallach, Taranto, and Stoll.  Appeal from the Patent Trial and Appeal Board.

Summary: The Federal Circuit determined that it had jurisdiction to hear an appeal from a Board decision in an IPR even though the Board erred in limiting the scope of the IPR by not instituting on all claims and grounds. 

 

IN RE: DURANCE

Before Lourie, Reyna, and Chen.  Appeal from the Patent Trial and Appeal Board (“PTAB”).

Summary: Nothing in § 41.41(b)(2) bars a reply brief from addressing new arguments raised in the examiner’s answer that are not articulated in the Final Office Action, regardless of whether the examiner designated the new argument as a new ground of rejection.

AATRIX SOFTWARE, INC. v. GREEN SHADES SOFTWARE, INC. and BERKHEIMER v. HP INC.

June 1, 2018 Josepher Li and Christie Matthaei

Before Prost, Newman, Lourie, Dyk, Moore, O’Malley, Reyna, Wallach, Taranto, Chen, Hughes, and Stoll.  On petition for rehearing en banc.

Summary:  Under step two of the Alice framework, whether a claim element or combination would have been well-understood, routine, and conventional is a question of fact.

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