Knobbe/Martens: Intellectual Property Law

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“Term Act of 2019” Proposes Shifting Patent Challenge Burdens to Branded Companies

June 18, 2019 Jonathan Bachand

A new bill introduced in Congress last week may limit the ability of branded pharmaceutical companies to extend the period of exclusivity products beyond the term of a single patent. 

The bill, titled “Terminating the Extension of Rights Misappropriated Act of 2019” or “TERM Act of 2019,” places greater scrutiny on the practice of obtaining multiple patents with overlapping terms to cover a single drug product or biological product.  

Reissue Patent Claims Not “Clearly and Unequivocally” Supported in Original Patent Are Invalid

June 17, 2019 Nathan J. Lee and Jeremy Anapol

FORUM US, INC. v. FLOW VALVE, LLC

Before Reyna, Schall and Hughes. Appeal from the U.S. District Court for the Western District of Oklahoma.

Summary: The original patent on which a broadening reissue patent is based must clearly and unequivocally disclose the invention claimed in the reissue patent.  

Years-Old R&D Investments Satisfy Domestic Industry Requirement

HYOSUNG TNS INC. V. ITC

Before Dyk, Clevenger, and O’Malley. Appeal from the International Trade Commission.

Summary: Past investments can satisfy the ITC’s domestic industry requirement if (1) the investments pertain to products covered by an asserted patent and (2) the complainant continues to make other investments relating to such products at the time the complaint is filed.

 

State Sovereign Immunity Does Not Bar an IPR

REGENTS OF THE UNIV. OF MINN. v. LSI CORPORATION

Before Dyk, Wallach, and Hughes.  Appeal from the Patent Trial and Appeal Board.

Summary: State sovereign immunity does not apply to IPR proceedings asserted against patents owned by or assigned to states, regardless of whether the state has asserted the patent claims in a district court litigation. 

 

One-Year Clock for Filing IPR Petition Applies to Litigants and Parties That Become Privies of the Litigant Prior to Institution

June 14, 2019 Clayton R. Henson and Mark Kachner

POWER INTEGRATIONS, INC v. SEMICONDUCTOR COMPONENTS

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

Summary: An IPR is time-barred under 35 U.S.C. § 315(b) if, at the time of institution, the petitioner is in privity with a party who was served with a complaint for patent infringement over a year before the petition was filed.

The More Complex the Harder to Show Obvious

June 14, 2019 David J. Grant and Nicole R. Townes

SAMSUNG ELECTRONICS CO., LTD. v. ELM 3DS INNOVATIONS, LLC

Before Moore, Reyna, and Chen. Appeal from the Patent Trial and Appeal Board.

Summary: If the technology is complex, a party may be required to provide more evidence of a reasonable expectation of success for obviousness.  

Ultratec Awarded more than $5.4 Million After Patent Determined Valid On Appeal

June 4, 2019 Mark Kachner

A federal court in Wisconsin recently awarded Ultratec, Inc. and Captel, Inc. more than $5.4 million in damages, based on a patent infringement claim brought against Sorenson Communications and CaptionCalls. 

Rule 19 Joinder Provisions Are Not Optional

June 3, 2019 Mark E. Davis and Andrea Cheek

LONE STAR SILICON INNOVATIONS v. NANYA TECHNOLOGY CORPORATION

Before O’Malley, Reyna, Chen.  Appeal from the Northern District of California.

Summary: When a patent assignee does not acquire all substantial rights in a patent, Rule 19 compels courts to join a patentee as a necessary party, when feasible.  Additionally, whether a party possesses all substantial rights in a patent does not implicate standing or subject matter jurisdiction.

 

Riddell awarded $5 million in patent damages against Kranos Corporation, dba Schutt Sports

May 24, 2019 Yanna S. Bouris

An Illinois jury awarded football equipment manufacturer, Riddell, $5 million in patent damages against Kranos Corporation, doing business as Schutt Sports. 

Federal Circuit Explores the Sham Affidavit Doctrine

May 22, 2019 Eric R. Malmgren and Mark Kachner

QUEST INTEGRITY USA, LLC v. COKEBUSTERS USA INC.

Before Dyk, Taranto, and Hughes.  Appeal from the U.S. District Court for the District of Delaware.

Summary: An affidavit should not be dismissed as a sham where: (1) the affidavit contradicts another witness’s prior deposition testimony; or (2) where the affidavit does not simply contradict the witness’s own prior deposition testimony but instead provides a detailed explanation why the prior testimony was incorrect.

 

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