• Karen L. Beckman, Ph.D.
• Jeffrey D. Blake
• Eric R. Chad
• Joseph W. Dubis, Ph.D.
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January 15, 2019

Fed. Cir. Remands Lost Profits After Supreme Court Reversal

Last week, the United States Court of Appeals for the Federal Circuit decided WesternGeco v. ION Geophysical, 2013-1527, 2014-1121, 2014-1526, 2014-1528(Fed. Cir. January 11, 2019). The Supreme Court remanded the case on the sole issue of lost profits, having reversed the Federal Circuit’s prior decision that an award of lost profits constituted an unauthorized extraterritorial application of the patent laws. 

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January 8, 2019

Consumer Has Standing To Oppose Registration Of Mark

Last week, the Trademark Trial and Appeal Board (TTAB) issued an opinion in Rebecca Curtin v. United Trademark Holdings Inc., Opposition No. 91241083 (December 28, 2018). The TTAB denied United Trademark Holdings’ Rule 12(b)(6) motion to dismiss for lack of standing, holding a party need not have a specific commercial interest in a mark to oppose its registration.

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January 2, 2019

Federal Circuit Affirms Rejection of Claims Under § 101

Last week, the United States Court of Appeals for the Federal Circuit issued an opinion in In re: Marco Guldenaar Holding B.V., 2017-2465 (December 28, 2018). The patent examiner rejected several of applicant’s patent claims as being directed to patent ineligible subject matter under 35 U.S.C. § 101, and the Patent Trial and Appeal Board (PTAB) affirmed the examiner’s rejections.

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December 26, 2018

Federal Circuit Affirms § 101 Dismissal of Patent Suit

Last week, the United States Court of Appeals for the Federal Circuit issued an opinion in Glasswall Solutions Limited v. Clearswift Ltd., 2018-1407 (December 20, 2018). The district court dismissed Glasswall’s patent infringement action under Rule 12(b)(6) after concluding all asserted claims of Glasswall’s patents are invalid as patent ineligible abstract ideas under 35 U.S.C. § 101.

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December 18, 2018

Court Affirms Attorney Fee Denial & Cautions Future Litigants

Last week, the United States Court of Appeals for the Federal Circuit issued an opinion in Spineology, Inc. v. Wright Medical Technology, Inc., 2018-1276 (December 14, 2018). At the district court, Wright and Spineology advanced competing claim constructions for a key disputed claim term. During the initial claim construction phase of the case, the district court declined to adopt either party’s construction.

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December 11, 2018

Demand Letters Enough For Personal Jurisdiction & Venue

Last week, the United States Court of Appeals for the Federal Circuit issued an opinion in Jack Henry & Assocs., Inc. v. Plano Encryption Techs. LLC, 2016-2700 (December 7, 2018). Jack Henry brought a declaratory judgment action in the Northern District of Texas seeking a declaration that its software did not infringe patents owned by Plano Encryption Technologies (PET). PET—a Texas corporation with its registered address in the Eastern District of Texas—moved to dismiss the complaint for improper venue.

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December 4, 2018

Dismissal of DJ Action for Lack of Personal Jurisdiction Affirmed

Last week, the United States Court of Appeals for the Federal Circuit issued an opinion in Maxchief Investments Ltd. v. Wok & Pan, Ind., Inc., 2018-1121 (November 29, 2018). At the district court, Maxchief asserted claims seeking declaratory judgments of noninfringement and invalidity of various Wok patents and a claim for tortious interference.

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November 27, 2018

Lump Sum Reasonable Royalty Damages Award Vacated and Remanded

Last week, the United States Court of Appeals for the Federal Circuit issued an opinion in Enplas Display Device Corp. v. Seoul Semiconductor Co., Ltd., No. 2016-2599 (Nov. 19, 2018). After affirming the district court judgment of induced infringement, the Federal Circuit vacated and remanded the damages award as to one of the asserted patents.

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November 20, 2018

District Court Erred in Applying Collateral Estoppel

Last week, the United States Court of Appeals for the Federal Circuit issued an opinion in ArcelorMittal Atlantique et Lorraine v. AK Steel Corp., 2017-1637 (November 14, 2018). The district court had granted summary judgment against ArcelorMittal, concluding its infringement claims were collaterally estopped by a judgment of non-infringement entered in a prior case between the same parties.

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Visit IP Case Updates Blog

Camtek v. Rudolph, Nos. 2012-1681, 2013-1023 (Fed. Cir. 2013) (obtained favorable result for client Rudolph; court dismissed Camtek’s appeal of civil contempt sanctions)

Phil-Insul Corp. v. Reward Wall Systems, Inc., No. 14-1078 (Fed. Cir.) – obtained favorable claim construction and summary judgment of non-infringement for accused infringer; obtained affirmance of claim construction and non-infringement decision on appeal

Rudolph v. Integrated Technology, Nos. 2012-1593, -1618 (Fed. Cir. 2013) (obtained favorable result for client Rudolph; court affirmed jury’s finding that Rudolph did not literally infringe, reversed doctrine of equivalents infringement and willfulness findings, and vacated more than $20 million in damages)

Camtek v. Rudolph, Nos. 2012-1681, 2013-1023 (Fed. Cir. 2013) (obtained favorable result for client Rudolph; court dismissed Camtek’s appeal of civil contempt sanctions)

Phil-Insul Corp. v. Reward Wall Systems, Inc., No. 14-1078 (Fed. Cir.) – obtained favorable claim construction and summary judgment of non-infringement for accused infringer; obtained affirmance of claim construction and non-infringement decision on appeal

Rudolph v. Integrated Technology, Nos. 2012-1593, -1618 (Fed. Cir. 2013) (obtained favorable result for client Rudolph; court affirmed jury’s finding that Rudolph did not literally infringe, reversed doctrine of equivalents infringement and willfulness findings, and vacated more than $20 million in damages)

W.L. Gore & Associates, Inc., v. Medtronic, Inc., Medtronic USA, Inc., and Medtronic Vascular, Inc., No. 2012-1538 (Fed. Cir. Sept. 12, 2013) (obtained Rule 36 affirmance of non-infringement decision in favor of client Medtronic)

Cooper Notification v. Twitter et al., No. 12-1615 (Fed. Cir. Aug. 30, 2013) (obtained affirmance of summary judgment of non-infringement in favor of client Federal Signal)

Metso Minerals, Inc. v. Powerscreen Int'l Distrib., Nos. 11-1572, 12-1168, -1169, 2013 U.S. App. LEXIS 9645 (Fed. Cir. May 14, 2013) (obtained reversal of validity on obviousness grounds in favor of client Powerscreen; willfulness and infringement also vacated in favor of client Powerscreen).

AstraZeneca Pharms. LP v. Apotex Corp., 669 F.3d 1370 (Fed. Cir. 2012) (in highly important case on the issues of pharmaceutical method patents and Section viii statements under the Hatch-Waxman Act, obtained affirmance of dismissal of patent infringement case involving patents covering methods of  treatment with Crestor®).

Integrated Tech. Corp. v. Rudolph Techs., Inc., Nos. 12-1593, -1618, -1665, 2012 U.S. App. LEXIS 21086 (Fed. Cir. Oct. 10, 2012) (obtained a stay of the district court’s permanent injunction order).

August Tech. Corp. v. Camtek, Ltd., 655 F.3d 1278 (Fed. Cir. 2011) (obtained affirmance of patent validity and no inequitable conduct in favor of client August).

Alfred E. Mann Found. for Sci. Research v. Cochlear Corp., 604 F.3d 1354 (Fed. Cir. 2010) (obtained reversal of a dismissal for lack of standing based on the finding that the terms of an exclusive license did not qualify as a virtual assignment of the patents-in-suit, preserving client AMF’s standing to sue accused infringers).

Bowling v. Hasbro, Inc., No. 09-1039, 2009 U.S. App. LEXIS 20408 (Fed. Cir. Sept. 15, 2009) (obtained affirmance without an opinion of infringement, validity, marking, and damages in favor of client Bowling).

For Your Ease Only, Inc. v. Calgon Carbon Corp., 560 F.3d 717 (7th Cir. 2009) (obtained reversal of a denial of recovery of judgment under a fraudulent conveyance theory).

Mostly Memories, Inc. v. For Your Ease Only, Inc., 526 F.3d 1093 (7th Cir. 2008) (obtained reversal of a denial of attorney’s fees in copyright case; attorney’s fees awarded under 17 U.S.C. § 505).