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.”
Despite Possibility of ‘Chaos,’ Presumption Against Extraterritorial Application May Give Way to Simple Proximate Cause Test, Justices Suggest
The U.S. Supreme Court seemed to be mulling a flexible test for foreign patent damages last month, with the categorical presumption against extraterritoriality taking a back seat.
Jeff Ginsberg and Dorothy LeRay
Federal Circuit Affirms Dismissal of Declaratory-Judgment Action Based Under Rule Against Piecemeal Adjudication
Federal Circuit Affirms Non-Infringement Finding Despite Defendant’s Discovery Violation
Exmark Manufacturing Company Inc. v. Briggs & Stratton Power Products Group, LLC
The rate of the reasonable royalty awarded to a successful patent plaintiff must be based on the facts of the case. A damages expert cannot merely pay lip service to the Georgia-Pacific factors and then “pluck” a royalty rate from thin air.
Howard Shire and Michael Block
Claim Preclusion Requires Analysis that Claims in Newly Asserted Patents are Patently Indistinct from Claims in Previously Adjudicated Patents
Claim Elements Taught by Prior Art for Purposes of Novelty and Obviousness are not Necessarily ‘Well-Understood, Routine, and Conventional’ Under §101
Morgan Chu and Dominik Slusarczyk
The U.S. Supreme Court recently agreed to consider whether a patentee may recover foreign lost profits resulting from infringement of a United States patent.
Finjan, Inc. v. Blue Coat Sys., Inc.
The Federal Circuit ruled that basing a reasonable royalty calculation on the “smallest salable unit” does not obviate the need to apportion damages to the patented contribution within that unit.
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