| 12/6/2011 |
Patent Litigation Alert: In re Link_A_Media Devices Corp. |
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| On December 2, 2011, the Federal Circuit in In re Link_A_Media Devices made a significant ruling affecting the District of Delaware’s hold on suits filed against Delaware corporations that operate outside of the District. more |
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| 6/17/2011 |
Late Night With eDiscovery Nightmare-man? Top Ten Ways to Help Your CEO Sleep More Easily . . . |
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| Many an organization waits until it has seen the corporate body on the table in a lawsuit or in a government proceeding before implementing an electronic-discovery preparedness program. more |
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| 5/26/2011 |
Patent Alert: Federal Circuit's Therasense Decision Toughens Standards for Establishing Inequitable Conduct |
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| Responding to views from the United States Patent and Trademark Office ("PTO") and elsewhere about the unintended consequences of the inequitable conduct doctrine in its current form... more |
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| 3/18/2011 |
Patent Litigation Alert: Recent Developments and Potential Changes in the Litigation of False Marking Claims Under 35 U.S.C. § 292 |
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| Patent Litigation Alert: Recent Developments and Potential Changes in the Litigation of False Marking Claims Under 35 U.S.C. § 292 more |
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| 1/24/2011 |
Patent Law Year in Review: A Look Back at 2010 and a Look Ahead at 2011 |
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| Patent Law Year in Review: A Look Back at 2010 and a Look Ahead at 2011 more |
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| 1/6/2011 |
Patent Litigation Alert: What Kind of Bag Holds a $19B Cat? Uniloc v. Microsoft: Federal Circuit Rules on Reasonable Royalty Damages Issues |
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| On January 4, 2011 the Federal Circuit in Uniloc USA, Inc. v. Microsoft Corp. made two significant rulings on recurring issues in the area of patent damages... more |
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| 10/19/2010 |
Intellectual Property Bulletin Fall 2010 |
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| On September 10, 2010, the U.S. Court of Appeals, Ninth Circuit issued a much-awaited ruling on appeal in Vernor v. Autodesk, No. 09-35969, 2010 U.S. App. LEXIS 18957, addressing whether software purchasers are owners or licensees of the copies of the software in their possession more |
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| 9/2/2010 |
Patent/Antitrust Litigation Alert: Federal Circuit Limits Patent Misuse in Princo |
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| A sharply divided en banc U.S. Court of Appeals for the Federal Circuit significantly narrowed the scope of the patent misuse defense this week more |
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| 9/1/2010 |
Patent Litigation Alert: The Federal Circuit Rejects Attempt to Narrow Standing Requirements For False Patent Marking Claims under 35 U.S. C. § 292 |
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| Yesterday, the Federal Circuit rejected a procedural attempt to stem the recent flood of “false patent marking” lawsuits. more |
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| 8/5/2010 |
Intellectual Property Bulletin Summer 2010 |
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| A unanimous decision is not always what it seems. On June 28, the U.S. Supreme Court upheld without dissent the U.S. Court of Appeals for the Federal Circuit’s ruling that a patent application for hedging against price changes was not patentable. more |
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| 7/19/2010 |
Patent Strategy for Personalized Medicine in Light of Bilski |
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| Advanced medical diagnostics, such as those that use information derived from multiple genetic variations or biomarker expression levels, certainly fall within the scope of patentable subject matter, according to the guidance provided by the Bilski decision. Significant investment is required to develop and market complex personalized medicine diagnostics that prognose risk or outcome based on a number of genetic or biological markers. Such methods do not preempt any basic law of nature because alternative predictive models can be developed using different sets of markers. Consequently, they should not be subject to § 101 rejections under current law. more |
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| 6/28/2010 |
Patent Alert: Supreme Court Unanimously Rejects Bilski Patent Application but Narrowly Upholds Business Method Patents |
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| The Bilski case presented the Supreme Court with an opportunity to eliminate business methods from the scope of patentable subject matter more |
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| 6/11/2010 |
Patent Litigation Alert: Decision in Pequignot v. Solo Cup Company Provides Guidance for False Patent Marking Liability |
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| Yesterday the Federal Circuit issued a decision in Pequignot v. Solo Cup Company, No. 2009-1547 (Fed. Cir. Jun. 10, 2010), providing some much needed guidance on avoiding liability under the “false marking” statute, 35 U.S.C. § 292. more |
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| 5/7/2010 |
Dealing With the Uptick In False Marking Suits |
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| Recent months have witnessed a surge in the filing of "false marking" litigation – suits brought under 35 U.S.C. Section 292. The section provides penalties against any person that marks an "unpatented article" with any word or number indicating that the article is patented with the intent to deceive the public. more |
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| 1/13/2010 |
Bracing for Change in Patentability for Methods: Strategies for Companies and Venture Capitalists to Manage the Bilski Risk |
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| Four Fenwick attorneys recently attended an oral argument at the U.S. Supreme Court at which justices surprised the patent community by signaling that they likely will cut back on the types of methods that are eligible for patent protection. more |
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| 12/24/2009 |
Intellectual Property Bulletin Winter 2009/2010 |
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| Recent years have seen the development of online communities through which massive numbers of users can interact with each other and with the environment itself in ways that increasingly approach real-world interactions. more |
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| 12/9/2009 |
Patent Litigation Alert: Federal Circuit Limits Forum-Shopping |
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| The Federal Circuit last week issued two opinions that substantially impact the tactics used in Texas-based patent litigation more |
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| 12/3/2009 |
Patent Pools in Life Sciences |
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| A patent pool is defined as an arrangement among multiple patent holders to aggregate their patents where all pooled patents are made available to each member of the pool, and standard licensing terms are offered to licensees who are not members of the pool. more |
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| 11/13/2009 |
Are Juries Ready to Decide Underlying Questions of Fact? Obviously Not |
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| The Supreme Court has told us that obviousness in patent cases is a question of law, based on underlying findings of fact. What this means is that juries as fact-finders are supposed to decide the underlying factual issues, but judges are supposed to decide the ultimate legal question of patent validity. more |
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| 10/6/2009 |
IP Bulletin Fall 2009 |
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| A recent ruling in a highly publicized case in the United States District Court for the Central District of California rejected an aggressive legal theory that could have led to broad criminalization of the breach of terms conditioning access to websites and other computerized information. more |
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| 9/4/2009 |
Bilski Briefs Span Wide Range of Positions |
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| On June 1, the Supreme Court agreed to decide a case that will have a great impact on what types of inventions can be patented. more |
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| 9/2/2009 |
Ariad Written Description Ruling Could Significantly Impact Biotech Patents |
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| The fate of many chemical and biotechnology patents will soon depend on the Federal Circuit's interpretation of the first paragraph of section 112 of the Patent Act. more |
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| 8/24/2009 |
Litigation Alert: Cardiac Pacemakers, Inc. v. St. Jude Medical, Inc.—The Federal Circuit Holds 35 U.S.C. § 271(f) Inapplicable to Method Claims |
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| On August 19, 2009, the Federal Circuit, sitting en banc, limited the reach of 35 U.S.C. § 271(f), holding that the statute does not apply to method claims. The Federal Circuit's decision in Cardiac Pacemakers, Inc. v. St. Jude Medical, Inc., _F.3d_ (Fed. Cir. 2009) (en banc in part) (Lourie, J.), reversed its earlier holding in Union Carbide Chemicals Plastics Technology Corp. v. Shell Oil Co., 425 F.3d 1366 (Fed. Cir. 2005). more |
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| 7/7/2009 |
IP Bulletin Summer 2009 |
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| The Patent Prosecution Highway (PPH) began in July 2006 as a pilot, one-year cooperative agreement between the United States Patent and Trademark Office (USPTO) and the Japan Patent Office (JPO). more |
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| 3/20/2009 |
Intellectual Property Bulletin Spring 2009 |
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| A bipartisan quartet of senators and representatives held a press conference on March 3, 2009 announcing yet another push at patent law reform. Hearings commenced the following week... more |
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| 3/18/2009 |
Trolls 2.0 |
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| Last week, a bipartisan quartet of senators introduced yet another round of patent reform legislation. As with the prior unsuccessful attempts in recent years, the bills proposed in the House and the Senate address a variety of issues, such as the measure of damages that a patentee can recover from an infringer.... more |
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| 3/16/2009 |
Making Sense of the Revived "Machine-or-Transformation" Test in In re Bilski |
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| On October 30, 2008, in In re Bilski, No. 07-1130 (Fed. Cir. Oct. 30, 2008) the Federal Circuit handed down the latest judicial effort to provide guidance about the types of subject matter that are eligible for patent protection...
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| 3/16/2009 |
On Shaky Ground: The (Near) Future of Patents After Bilski |
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| On October 30, 2008, in In re Bilski, No. 07-1130 (Fed. Cir. Oct. 30, 2008) the Federal Circuit handed down the latest judicial effort to provide guidance about the types of subject matter that are eligible for patent protection...
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| 3/11/2009 |
FAQ on International Patent Strategy and Execution |
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| The selection of an invention for patenting must be based on the business goals and needs of the client. This mandates that the prosecutor take the time to understand the patentee's business, and not merely its technology–the mere technical 'coolness' of an invention is not a sufficient reason for patenting it....
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| 1/15/2009 |
Patent Law Year in Review: 2008-2009 |
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| A Look Back at 2008 and A Look Ahead at 2009....
more |
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| 1/13/2009 |
Costco Decision Could Significantly Change Scope of Attorney-Client Privilege |
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| The case of Costco Wholesale Corporation v. Superior Court, currently pending before the California Supreme Court, may dramatically affect the manner in which clients interact with and utilize their lawyers....
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| 1/8/2009 |
On Shaky Ground: The (Near) Future of Patents After Bilski |
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| Bernard Bilski did not intend to be a poster child for business method inventions. He filed his patent application more than a year before the Federal Circuit decided...
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| 12/23/2008 |
Intellectual Property Bulletin Winter 2008/2009 |
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| Personalized medicine companies should implement new strategies to deal with the challenges associated with protecting their inventions...
more |
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| 12/5/2008 |
In re Swanson: Ex Parte Reexamination in the Patent Office Provides Second Chance to Invalidate Patent |
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| It may not literally keep in-house attorneys up at night, but the chance that a relevant patent owned by another may unexpectedly show up on one's desk in the morning is certainly not a pleasant thought.
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| 10/31/2008 |
Patent Alert: Federal Circuit en banc Clarifies the Test for Determining When Processes are Patentable |
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| In a long-awaited decision, on October 30, 2008, the Federal Circuit en banc decided In re Bilski, clarifying the test for determining whether a process patent claim qualifies as patentable subject matter under Section 101 of the U.S. Patent Act.
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| 10/17/2008 |
Intellectual Property Bulletin Fall 2008 |
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| In Fisher Tool Co., v. Gillet Outillage, 530 F.3d 1063 (9th Cir. 2008), the Ninth Circuit adopted the Federal Circuit's standard requiring a showing of bad faith in order to maintain Lanham Act and state law claims premised on allegedly false representations of patent infringement made by a patentee, its distributors, agents and/or attorneys to third parties...
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| 8/11/2008 |
Corporate and Securities Alert: Auction Rate Securities—Recent Settlements with SEC and Other Regulators |
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| On August 7 and 8, the Securities and Exchange Commission announced settlements with Citigroup Global Markets and UBS Securities and UBS Financial Services Inc....
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| 7/28/2008 |
Opinion Letters in the Wake of In re Seagate Technology |
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| Patent infringement is a strict liability offense, the nature of which is only considered to determine whether infringement was willful and enhanced damages are warranted. For decades, accused infringers in patent infringement lawsuits relied on opinions of counsel to defend against willful infringement claims that may lead to enhanced damages...
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| 7/8/2008 |
Litigation Alert: Ninth Circuit Adopts Good Faith Defense for Lanham Act Claims Premised on Allegedly False Patent Infringement Allegations Made to Third Parties |
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| In Fisher Tool Co., Inc. v. Gillet Outillage, __ F.3d __, 2008 U.S. App. LEXIS 13727 (June 30, 2008), the Ninth Circuit adopted the Federal Circuit's standard requiring a showing of bad faith in order to maintain Lanham Act and state law claims premised on allegedly false representations...
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| 3/27/2008 |
Federal Circuit to Re-Assess Standards for Patent-Eligible Subject Matter |
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| The subject matter requirement prescribed in 35 U.S.C. section 101 has lately been back on the Federal Circuit Court's radar.
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| 1/17/2008 |
Patent Law Year in Review: With The Close Of An Active 2007, What Does 2008 Hold? |
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| Supreme Court Leaves Its Mark in 2007; Federal Circuit Weighs in on Patent Licensing; What’s Coming up in 2008; Patent Reform and Rule Changes; Reconsidering What Is Patentable Subject Matter; Reexamination Trends; Ethics Issues in Patent Law
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| 8/31/2007 |
Perspective: Patents, post-MedImmune |
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| Earlier this year, the Supreme Court shook the foundations of patent licensing and technology transfer, altering the balance of power between patent holders and their licensees and creating profound implications for the life-sciences industry.
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| 8/21/2007 |
Litigation Alert: In re Seagate Technology, LLC—Willful Infringement and the Scope of Waiver of the Attorney-Client Privilege and Work Product Doctrine |
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| On August 20, 2007, the Federal Circuit, sitting en banc, articulated a new standard for willful infringement: patentees must show at least objective recklessness.
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| 7/31/2007 |
Injunctions After eBay v. MercExchange |
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| More than a year has passed since the U.S. Supreme Court's decision in eBay, Inc. v. MercExchange, LLC, 126 S. Ct. 1837 (2006).
more |
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| 7/30/2007 |
Litigation Alert: Integra LifeSciences I, Ltd. v. Merck KGaA—Applying the Supreme Court's Broad Interpretation of the FDA Exemption for Patent Infringement |
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| On July 27, the Federal Circuit in Integra LifeSciences v. Merck ruled on the Supreme Court's broad interpretation of the patent infringement exemption set forth in 35 U.S.C. § 271(e)(1), for "uses reasonably related to the development and submission of information" to the Food and Drug Administration (FDA)
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| 7/5/2007 |
Litigation Alert: Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., Ltd. (Festo XIII) - Prosecution History Estoppel and the Foreseeability of Equivalents |
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| On July 5, the Federal Circuit issued the latest in a line of decisions addressing the scope of prosecution history estoppel and its limits on the doctrine of equivalents, this time addressing whether an equivalent is foreseeable and thus subject to surrender.
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| 5/1/2007 |
Litigation Alert: KSR International Co. v. Teleflex Inc.—Ordinary Innovation is Obvious |
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| On April 30, the Supreme Court in KSR International v. Teleflex, announced that "the results of ordinary innovation are not the subject of exclusive rights under the patent laws."
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| 5/1/2007 |
Litigation Alert: Microsoft Corp. v. AT&T Corp. — The Supreme Court Limits the Extraterritorial Effect of 35 U.S.C. § 271(f) |
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| On April 30, the Supreme Court issued an important decision affecting liability for patent infringement for computer software developed in the United States and distributed abroad.
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| 4/17/2007 |
Legal FAQ: Introduction to Patent Law |
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| A patent is a legal right to exclude others from practicing the patented invention for a limited period of time in exchange for disclosing the details of the invention to the public.
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| 4/17/2007 |
Legal FAQ: Introduction to Patent Litigation |
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| The U.S. Patent and Trademark Office grants a patent. Contrary to popular belief, a patent does not give its holder the right to practice the invention, but the right to preclude others from practicing it.
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| 1/10/2007 |
Litigation Alert - Supreme Court Knocks Down Federal Circuit Rule and Allows Licensees to Challenge a Licensed Patent |
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| Yesterday, the Supreme Court ruled in MedImmune v. Genentech that a patent licensee does not need to breach its license agreement before seeking a declaratory judgment in federal court that the underlying patent is invalid, unenforceable, or not infringed.
more |
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| 7/11/2006 |
Litigation Alert: LG Electronics, Inc. v. Bizcom Electronics, Inc. |
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| On July 7, 2006, the Federal Circuit ruled in the case of LG Electronics, Inc. v. Bizcom Electronics, Inc., Civ. 05-1261, that a license agreement that disclaimed an implied license may also establish a conditional sale, thus defeating the application of patent exhaustion.
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| 6/23/2006 |
Litigation Alert: Supreme Court Dismisses LabCorp Appeal |
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| The U.S. Supreme Court yesterday opted to dismiss a case having potentially broad implications for the question of what constitutes patentable subject matter.
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| 5/17/2006 |
Going to the Videotape: An Introduction to the Patent System |
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| Patentees enter every jury trial with one distinct advantage: an official, ribboned copy of the patent at issue in the case. This trial exhibit comes embossed with the seal of the Patent and Trademark Office and signed by the director of that office.
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| 5/15/2006 |
Litigation Alert: eBay v. MercExchange: Supreme Court Clarifies Test for Permanent Injunction in Patent Cases |
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| A decision today by the United States Supreme Court is likely to impact the dynamic in many patent litigation lawsuits brought by companies that purchase patents in order to sue other companies for infringing them.
more |
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| 3/6/2006 |
Antitrust Update - Supreme Court Eliminates Presumption of Market Power in Patent Tying Cases |
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| On March 1, 2006, the Supreme Court issued its decision in Illinois Tool Works, Inc. v. Independent Ink, which considered the long-standing presumption of market power in patent tying cases.
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| 1/23/2006 |
eBay v. MercExchange - Supreme Court to Reconsider Injunction Remedy in Patent Cases |
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| The U.S. Supreme Court will soon reconsider the long-lived standards for granting permanent injunctions in patent infringement cases in eBay Inc. v. MercExchange L.L.C., 401 F.3d 1323 (Fed. Cir. 2005).
more |
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| 1/19/2006 |
Patent Law Developments: 2006 |
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| The Year Past and the Year Ahead
more |
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| 10/17/2005 |
Patent Litigation |
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| This booklet is designed for those who wish to enforce their patents or who are accused of infringing another's patent. It provides an outline of patent law in the United States, and an overview of the procedure of patent cases.
more |
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| 9/20/2005 |
Extraterritorial Expansion of U.S. Patent Law |
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| With the advent of the global economy, the design, manufacturing, marketing, and sales activities of businesses are being performed increasingly overseas. Naturally, the owners of U.S. patents are increasingly attempting to enforce their U.S. patents against activities carried out at least in part, if not entirely, outside the U.S.
more |
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| 7/19/2005 |
Patent Infringement Under Section 271(f) and the Exportation of Software—Living in a Material World |
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| On July 13, 2005, the U.S. Court of Appeals for the Federal Circuit issued an opinion regarding whether the exportation of software code from the United States for distribution and use in foreign markets constitutes an infringement under U.S. patent law.
more |
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| 7/13/2005 |
Phillips v. AWH Corporation—Revisiting the Rules of Claim Construction: Still No Magic Formula |
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| Overview / Commentary / Authors of the Opinion / Summary of the Opinion / Dissents
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