Miller Mendel Inc. filed a lawsuit against the City of Anna, Texas (“the City”), in the U.S. District Court for the Eastern District of Texas, alleging infringement of Claims 1, 5, and 15 of U.S. Patent No. 10,043,188 (the “’188 patent”). The ’188 patent primarily pertains to a software system designed to manage pre-employment background investigation processes. Specifically, Claim 1 exemplifies a computerized method that involves: (1) receiving data related to an applicant; (2) storing new applicant information; (3) transmitting an applicant hyperlink; (4) receiving an electronic response from the applicant; (5) determining a reference class; (6) selecting a reference
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Koss Corporation v. Bose Corporation
This case addresses the application of issue preclusion in relation to the validity of three patents. In particular, this case focuses on the implications of decisions made during the dismissal of pending litigations and examines whether these decisions render judgments final, justifying the application of issue preclusion to invalidate concurrently asserted patents.
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Inline for a New Trial
Inline Plastics Corp. (“Inline”) filed a lawsuit against Lacerta Group, LLC (“Lacerta”), alleging infringement of several patents related to tamper-resistant containers and methods of making such containers using thermoformed plastic. The district court granted Inline summary judgment of infringement on a subset of claims, but the jury found that the remaining asserted claims were not infringed and that all the asserted claims (including those already held infringed) were invalid. The parties then filed posttrial motions, including Inline’s motion for judgment as a matter of law and Lacerta’s motion for attorneys’ fees under 35 U.S.C. § 285, both of which were…
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Federal Circuit Lacked Jurisdiction to Address Appeal Based on Arguments Under The PREP Act
In Copan Italia S.p.A. et al. v. Puritan Medical Products Company LLC et al., the Federal Circuit addressed the issue of whether the Federal Circuit had jurisdiction to handle an appeal based on arguments under the Pandemic Readiness and Emergency Preparedness (“PREP”) Act.
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Clearing the Path Forward: The Critical Role of Patent Searches
In the rapidly changing world of innovation and intellectual property protection, understanding the landscape of existing patents is not merely beneficial – it’s a necessity. Patent searches stand as a fundamental step in the intellectual property lifecycle, providing a critical tool for inventors, companies, and legal professionals. This article delves into the significance of conducting thorough patent searches, considerations for timing these searches, and the methodologies employed. We also will explore the benefits and drawbacks of conducting searches internally at law firms versus outsourcing to specialized search firms, aiming to spark a discussion on the strategic use of patent searches.
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Slicing Through Insufficient Evidence of Infringement, Willfulness, and Damages
The sufficiency of evidence required to support a denial of a motion for judgment as a matter of law and a motion for a new trial for infringement, willful infringement, and damages.
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Precluded, Not Repeated: WARF & Apple Continue to Shape our Understanding of Issue Preclusion in Patent Law
This case addresses[1] the application of issue preclusion in scenarios where two closely related cases allege patent infringement against different versions of the same technology. Specifically, this case discusses whether a party’s waiver of a doctrine-of-equivalents theory in an initial lawsuit extends to a subsequent case involving a newer iteration of the technology previously litigated.
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Different Evidentiary Burdens in IPR Proceedings and District Court Means No Collateral Estoppel Effect on Related Patent Claims
After ten years of litigation, the Federal Circuit found that the district court conducted an improper collateral estoppel analysis and upheld ParkerVision’s position on each of the appealed issues.[1]…
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Celanese v. ITC: How the On-Sale Bar Can Turn Sweet Sales into Spoiled Patents
Celanese International Corporation, Celanese (Malta) Company 2 Limited, and Celanese Sales U.S. Ltd. (collectively, “Celanese”) filed a petition before the United States International Trade Commission (the “ITC”), alleging that Anhui Jinhe Industrial Co., Ltd., Jinhe USA LLC (collectively “Jinhe”) and other entities violated 19 U.S.C. § 337.[1] Celanese alleged that Jinhe and other entities were importing Ace-K (an artificial sweetener) made using a process that infringed Celanese’s patents. Each of the patents asserted by Celanese had an effective filing date of September 21, 2016, and as a result are governed by the America Invents Act (“AIA”).
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Understanding Preliminary Injunction: A Review of a Recent Federal Circuit Decision
This Federal Circuit opinion addresses a district court’s decision granting plaintiff’s motion for a preliminary injunction.[1]…
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Federal Circuit Clarifies Test for Exception to Increasingly Rare Interference Proceedings
Speck v. Bates, No. 2023-1147 (Fed. Cir. May 23, 2024) addressed two issues, (1) whether courts should apply a one-way test or a two-way test to determine if pre-critical claims materially differ from post-critical claims, such that an exception to the one-year time-bar on interference proceedings applies, and (2) whether Bates’ pre-critical claim language materially differed from his post-critical claim language, which dictates whether his claims were time-barred.
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Federal Circuit Clarifies Requisite Analysis for Unclean Hands, Inequitable Conduct, Summary Judgement Determinations of Obviousness, and Awards of Fees and Costs
Luv N’ Care, Ltd. and Nouri E. Hakim v. Lindsey Laurain and Eazy-PZ, LLC, Nos. 2022-1905, 2022-1970 (Fed. Cir. April 12, 2024) addressed several issues, including: (1) what evidence of litigation misconduct may support a finding of unclean hands, barring relief for related claims, (2) the appropriate legal analysis for finding a patent unenforceable due to inequitable conduct before the USPTO, (3) how to appropriately construe disputed facts underlying obviousness determinations at the summary judgment stage, and (4) the legal standard and timing for determinations of “prevailing party,” “exceptional case,” and “closeness” of the case, which underlie awards of attorney’s…
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The Federal Circuit Clarifies the Meaning of “Publicly Disclosed”
This decision[1] emphasizes the significance of broader public dissemination to meet the statutory requirement of “publicly disclosed” for purposes of exceptions to prior art under 35 U.S.C. § 102(b)(2)(B).
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Federal Circuit Clarifies Waiver Regulations for Rehearings Before the PTAB
In Voice Tech Corp., v. Unified Patents, LLC 2022-2163 (Fed Cir. August 1, 2024), the court addresses whether failure to re-raise arguments in a request for rehearing before the Patent Trial and Appeals Board (“PTAB”) forfeits such arguments on appeal to the Federal Circuit. This case also addresses what an appellant must show to have claim construction arguments considered on the merits on appeal.
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LLM Customization with a Path to Human Inventorship and Patent Rights
This article was first published by ALM / Law.com in The Intellectual Property Strategist…
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Federal Circuit Provides Insight on Induced Infringement Claims in Amarin Pharma Inc. v. Hikma Pharmaceuticals USA Inc.
The case of Amarin Pharma, Inc. and its affiliates versus Hikma Pharmaceuticals USA Inc. and Hikma Pharmaceuticals PLC presents a fascinating intersection of patent law, FDA regulatory strategy, and pharmaceutical marketing. Central to this legal dispute are U.S. Patents 9,700,537 and 10,568,861, owned by Amarin, which describe methods of reducing cardiovascular risk by administering icosapent ethyl, a compound found in the drug Vascepa®. Vascepa® had initially received FDA approval for treating severe hypertriglyceridemia, a condition marked by high levels of triglycerides in the blood. However, Amarin’s continued research into the drug’s benefits led to an expanded FDA approval in 2019,…
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