Knobbe/Martens: Intellectual Property Law

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The Impact of Fact Issues on Patent Eligibility after Berkheimer Published
Wednesday, June 19, 2019
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The Federal Circuit’s 2018 decision in Berkheimer v. HP Inc. was likely the most consequential development in patent eligibility since the Supreme Court introduced its two-part eligibility framework in Alice Corp. v. CLS Bank and Mayo Collaborative Services v. Prometheus Laboratories. Alice and Mayo had a dramatic impact on patent law, paving the way for lower courts to invalidate thousands of claims from hundreds of patents for failure to claim patent-eligible subject matter under 35 U.S.C. § 101. Berkheimer tempers Alice and Mayo by imposing procedural requirements that may insulate patent claims from § 101 challenges.

“Term Act of 2019” Proposes Shifting Patent Challenge Burdens to Branded Companies Published
Tuesday, June 18, 2019
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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.  

Years-Old R&D Investments Satisfy Domestic Industry Requirement Published
Monday, June 17, 2019
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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.

 

Reissue Patent Claims Not “Clearly and Unequivocally” Supported in Original Patent Are Invalid Published
Monday, June 17, 2019
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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.  

The More Complex the Harder to Show Obvious Published
Friday, June 14, 2019
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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.  

One-Year Clock for Filing IPR Petition Applies to Litigants and Parties That Become Privies of the Litigant Prior to Institution Published
Friday, June 14, 2019
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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.

State Sovereign Immunity Does Not Bar an IPR Published
Friday, June 14, 2019
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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. 

 

11th Circuit Decides Dispute on Kardashian’s Beauty Mark Published
Tuesday, June 4, 2019
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A lawsuit was filed in the U.S. Central District of California regarding the likelihood of confusion between the Khroma and KROMA brands.  On March 11, 2013, the California district court issued a preliminary injunction prohibiting Boldface from using the “Khroma” mark.  

Ultratec Awarded more than $5.4 Million After Patent Determined Valid On Appeal Published
Tuesday, June 4, 2019
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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 Published
Monday, June 3, 2019
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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.

 

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