Lawrence E. Ashery
Fans of movies about fictional superheroes are probably familiar with Captain America and his miraculous shield. Recently, however, his shield showed up in a most unlikely place: the U.S. Patent and Trademark Office (USPTO).
Elizabeth B. Hagan
The U.S. Supreme Court recently held that a patent owner may recover lost foreign profits for infringement under 35 U.S.C. §271(f)(2). The holding in WesternGeco LLC v. ION Geophysical rejects the Federal Circuit’s categorical exclusion of lost profits damages for foreign sales, and expands the potential for increased damages from domestic competitors operating in foreign markets.
Jon Bachand and Ari Feinstein
The U.S. Supreme Court agreed to consider a question raised by Helsinn Healthcare: whether, under the Leahy-Smith America Invents Act (AIA) an inventor’s sale of an invention to a third party that is obligated to keep the invention confidential qualifies as prior art for purposes of determining the patentability of the invention.
Howard Shire and Adam Fisher
Federal Circuit Holds That Tribal Sovereign Immunity Cannot Be Asserted in IPR Proceedings
Citing ‘Steep Burden’ on Plaintiffs, Federal Circuit Denies Use of ‘Entire Market Value Rule’ in Cases Involving Multicomponent Products
Brian Kramer and Kevin T. Kwon
In re: HTC Corporation
The Federal Circuit recently addressed motions to transfer and drew a distinction between motions based upon the convenience of parties and witnesses and those for improper venue. It also clarified that the Supreme Court’s recent decision in TC Heartland did not supplant the long-standing rule that venue laws do not protect foreign defendants.
Jeff Ginsberg and Zhiqiang Liu
A Split Federal Circuit Panel Finds That Petitioner Has Standing to Challenge PTAB’s Final Written Decision and That Petitioner Properly Submitted Evidence on Reply
Federal Circuit Rejects Patent Owner’s Time-Bar Defense Based on Privity
Federal Circuit Finds That District Court May Rely on a Ground Not Raised by Any Party in Granting a Motion for Summary Judgment of Invalidity
Richard Hung and Rachel Silverman Dolphin
In a 5-4 decision, with four justices dissenting, the U.S. Supreme Court struck down the Patent Trial and Appeal Board’s practice of instituting review on only a subset of an inter partes review (IPR) petitioner’s validity challenges.
Athul K. Acharya
Oil States Energy Services v. Greene’s Energy Group
Is inter partes review of a patent grant compatible with Article III and the Seventh Amendment? That was the question presented in Oil States Energy Services v. Greene’s Energy Group and the U.S. Supreme Court answered in the affirmative.
Howard Shire and Adam B. Fischer
Federal Circuit Holds USPTO Can Defend PTAB Decision After Original Petitioner Drops Out
Federal Circuit Says Alice Not Intervening Change
Nathan D. Renov
On March 27, 2018, in Oracle America, Inc. v. Google LLC, the Federal Circuit overturned a jury verdict in favor of Google from the U.S. District Court for the Northern District of California. In doing so, the court revived Oracle’s claim that Google’s use of Oracle’s open-source Java language code did not constitute “fair use.”