Knobbe/Martens: Intellectual Property Law

Nicole R. Townes

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.

 

Supreme Court Clarifies When Commercial or Financial Information Is 'Confidential' Under the Freedom of Information Act

June 24, 2019 James Smith and Nicole R. Townes

FOOD MARKETING INSTITUTE V. ARGUS LEADER MEDIA.

Before the Supreme Court with J. Gorsuch delivering the majority opinion.

Summary: Commercial or financial information is confidential under the Freedom of Information Act (FOIA) when it is (1) both customarily and actually treated as private by its owner and (2) provided to the government under an assurance of privacy.

 

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.  

Trademark Decisions Rendered by the International Trade Commission Do Not Have Preclusive Effect

May 10, 2019 Ari Feinstein and Nicole R. Townes

SWAGWAY, LLC V. ITC

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

Summary: Trademark decisions of the International Trade Commission, like the Commission’s patent decisions, do not have preclusive effect. 

 

IN RE: SINY CORP.

Before Prost, Lourie and Stoll.  Appeal from the Trademark Trial and Appeal Board.

Summary: In evaluating whether a webpage printout is an acceptable specimen of use for a trademark in connection with goods, the USPTO may look for information on the webpage essential to purchasing decisions such as price for the goods, minimum quantities one may order, accepted methods of payment, and shipping information.  If the webpage simply provides a phone number or email address to contact for sales information, this is likely not enough to show the specimen is a point-of-sale display and thus an acceptable specimen of use. 

 

ARCTIC CAT INC. v. GEP POWER PRODUCTS, INC.

March 27, 2019 Shuchen Gong and Nicole R. Townes

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

Summary: Where the preamble of a claim merely identifies an intended use and does not impose a structural requirement, and only the body of the claim identifies an improvement, the applicant’s choice not to use the transitional phrase “wherein the improvement compromises” is also a “powerful reason” to deny the preamble any limiting effect.  Further, lack of diligence in reducing an invention to practice cannot be inferred when the invention was put into someone else’s hands for needed testing and there was diligent oversight. 

 

A Different Shade of Gray: The Scope and Limits of Gray Market Goods and Recent Developments in the Cosmetics Space

Under the first sale doctrine, once a trademark owner first authorizes its branded product to be sold to a consumer, the trademark owner’s right to control the further re-sale of that product is generally said to be “exhausted”, so long as the product is not “materially different” from the origin

IN RE: GOOGLE LLC

February 6, 2019 Clayton R. Henson and Nicole R. Townes

Before Prost, Newman, Lourie, Dyk, Moore, O’Malley, Reyna, Wallach, Taranto, Chen, Hughes, and Stoll. Dissenting opinion to denial of petition for rehearing written by Reyna and joined by Newman and Lourie. 

Summary: The Federal Circuit elected not to review en banc the issue of whether servers or similar equipment in third-party facilities constitute a regular and established place of business for purposes of determining whether venue is proper under 28 U.S.C. § 1400(b).  The dissenters argued that the Federal Circuit’s denial sidestepped the purpose of mandamus relief and left unanswered a critical question that affects venue. 

 

WESTERNGECO L.L.C. V. ION GEOPHYSICAL CORP. [OPINION ON REMAND]

January 14, 2019 Hans L. Mayer and Nicole R. Townes

Before Dyk, Wallach, and Hughes.  On remand from the Supreme Court.

Summary:  Even though the issue of the jury’s award of lost profits was still pending, a party could not reopen the issue of a reasonable royalty award based on the subsequent invalidation of a subset of asserted patent claims because the reasonable royalty award was the subject of a stipulation of final judgment resolving all issues except for lost profits.  When a lost profits award is based on multiple infringed claims and some of the claims are later found invalid, a new trial on lost profits may not necessarily be required if there is evidence that the technology covered by a remaining claim was required to perform the infringing activities.    

 

AMERIGEN PHARMACEUTICALS v. UCB PHARMA GMBH

January 14, 2019 Bita Kianian and Nicole R. Townes

Before Lourie, Chen, and Stoll. Appeal from the Patent Trial and Appeal Board.

Summary: A generic pharmaceutical company had standing to appeal the Board’s decision in an IPR that claims of a patent were not obvious even though it may be incapable of maintaining a parallel Hatch-Waxman suit because it demonstrated a controversy traceable to the patent and redressable by the Court.  

 

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).  

 

Nike's Shoe Patents Outrun Puma's Challenge

December 5, 2018 Brian M.Z. Reece and Nicole R. Townes

On May 3, 2018, Nike filed a lawsuit against Puma in the U.S. District Court for the District of Massachusetts accusing Puma of infringing seven of its utility patents related to footwear.  In an earlier post on this blog, we described some of the Nike shoe patents asserted.  Puma challenged Nike’s complaint and moved to dismiss Nike’s claims of alleged infringement as to two of the patents, specifically as to U.S. Patent No. 8,266,749 and No. 9,078,488, arguing that these two patents, which are directed to Nike’s “Flyknit®” technology, do not cover patentable subject matter.

 

In Re Oath Holdings Inc.

November 14, 2018 Douglas B. Wentzel and Nicole R. Townes

Before Dyk, Reyna, and Taranto, per curiam.  Petition for Writ of Mandamus from the District Court for the Eastern District of New York.

Summary: In a case pending before TC Heartland was decided, a venue challenge based on TC Heartland’s interpretation of the venue statute is not waived as it was not “available” and can be successfully raised later in the litigation if the defendant did not delay in raising the venue challenge once it became available.

 

GUST, INC. v. ALPHACAP VENTURES LLC

October 1, 2018 Nathan J. Lee and Nicole R. Townes

Before Wallach, Linn and Hughes.  Appeal from the United States District Court for the Southern District of New York. 

Summary: In determining whether to award sanctions under 28 U.S.C. § 1927, the domain of colorable claims is broader when the law is unsettled.

 

Damaged Hair Care Products: The Root of the Problem

September 25, 2018 Shuchen Gong and Nicole R. Townes

On September 7, 2018, Olaplex, LLC and LIQWD, INC. (collectively, “Olaplex”) filed suit in the United States District Court for the Southern District of Florida against Verbena Products, LLC d/b/a BEAUTYVICE and Robert Roque (collectively “Beautyvice”) based on Beautyvice’s sales of Olaplex hair care products.  Olaplex alleges that the products sold by Beautyvice do not bear certain codes that Olaplex includes on its products.

 

E.I. DUPONT DE NEMOURS & CO. V. SYNVINA C.V.

September 18, 2018 Mark Rubinshtein, Ph.D. and Nicole R. Townes

Before Lourie, O’Malley, and Chen.  Appeal from the Patent Trial and Appeal Board.

Summary: When the ranges identified in a claimed composition overlap with the ranges disclosed in the prior art, the burden shifts to the patentee to come forward with evidence of nonobviousness.  This burden-shifting framework is applicable both in the context of district court cases and inter partes review proceedings.

 

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