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In recent years, a substantial number of “Schedule A” trademark infringement cases have been filed in the Northern District of Illinois. In such a case, the trademark owner may file a trademark infringement complaint against a number of defendants, with the complaint identifying the defendants as “The Individuals, Corporations, Limited Liability Companies, Partnerships and Unincorporated Associations Identified on Schedule A hereto.” [See, e.g., Opulent Complaint
Continue Reading How to Recover Attorneys’ Fees in a Schedule A Trademark Case in the Northern District of Illinois

In BBK Tobacco & Foods LLP v. Cent. Coast Agric., Inc., 97 F.4th 668 (9th Cir. 2024), the Ninth Circuit Court of Appeals held that federal district courts have power to adjudicate trademark applications pursuant to the Lanham Act, 15 U.S.C. § 1119, provided that the litigation involves infringement of a registered trademark.
Continue Reading Divided 9th Circuit Says District Court Has Power to Adjudicate TM Applications

In University of South Florida Board of Trustees v. United States,[1] the Federal Circuit rejected a strict temporal limitation on when the Government’s license rights in patents stemming from federally funded research is triggered under the Bayh-Dole Act. Specifically, where a recipient of federal funds subcontracts out work to be performed using those federal funds and the subcontractor reduces an invention to practice, the Government’s license rights can be triggered by that reduction to practice even if no formal subcontractor agreement was in place between the fund recipient and subcontractor at the time of reduction to practice.
Continue Reading Federal Circuit Weighs in on Temporal Rigidity of the Bayh-Dole Act’s Licensing Provisions

In Weber, Inc. v. Provisur Techs., Inc., Nos. 2022-1751, 2022-1813 (Fed. Cir. Feb. 8, 2024), the Federal Circuit reversed the Patent Trial and Appeal Board’s legal conclusion that Weber’s operating manuals were not prior art printed publications based on the public accessibility of the operating manuals.
Continue Reading Federal Circuit Concluded that Operating Manuals Subject to Confidentiality Restrictions are Prior Art Printed Publications

EcoFactor, Inc. is the holder of U.S. Patent No. 8,498,753, titled “System, Method and Apparatus for Just-In-Time Conditioning Using a Thermostat,” which focuses on optimizing climate control systems, particularly HVAC systems, in residential and commercial buildings. The patented technology utilizes a thermostat that considers external weather conditions and the thermal characteristics of individual structures to dynamically adjust temperature settings, aiming to improve energy efficiency and comfort. Within Claim 1, a method is outlined for decreasing the cycling time of a climate control system, comprising steps such as accessing historical temperature data, determining thermal performance values, and calculating the optimal activation
Continue Reading Federal Circuit Rules on when the Patent Trial and Appeal Board is Engaging in Erroneous Claim Construction

ParkerVision, Inc., v. Katherin K. Vidal, Under Secretary of Commerce for IP and USPTO Director No. 2022-1548, (Fed. Cir. December 15, 2023) primarily involved three topics: (1) the type of language in a patent specification that “clearly expresses” that the inventor was acting as a lexicographer, i.e., redefining a term against the term’s plain and ordinary meaning, (2) the appropriate scope of a reply brief when a patent owner introduces a claim construction for the first time in the patent owner response, and (3) the appropriate scope of a sur-reply brief to a reply brief. The Federal Circuit also engaged
Continue Reading Federal Circuit Rules on Inventor-as-Lexicographer Definitions and the Proper Scope of Reply and Sur-Reply Briefing Following Patent Owner Responses to IPR Institution Decisions

In Medtronic, Inc. v. Teleflex Life Sciences Limited, 2022-1721, 2022-1722 (Fed. Cir. Nov. 16, 2023), the Federal Circuit considered whether U.S. Patent RE46,116 (“the ’116 patent”) was entitled to an alleged priority date sufficient to moot Medtronic’s asserted pre-AIA §102(e) prior art reference, which depended on whether Medtronic had waived its challenged to Teleflex’s asserted priority date by attempting to incorporate those arguments by reference in its Inter Partes Review (“IPR”) petitions, and whether the USPTO Patent Trial and Appeal Board (“PTAB”) correctly found that Teleflex sufficiently demonstrated not only the date of conception, but also that the inventors
Continue Reading Federal Circuit Rebukes Attempt to Incorporate Arguments by Reference to a Related IPR Petition

In Sisvel International S.A. v. Sierra Wireless, Inc. et al., Nos. 22-1493, 22-1547 (Fed. Cir. 2023), Sierra Wireless challenged claims 1-10 of Sisvel’s U.S. Patent No. 6,529,561 (“the ’561 patent”) in an inter partes review. The Patent Trial and Appeal Board’s final written decision found claims 1-3 and 9 unpatentable, but upheld the patentability of claims 4-8 and 10.
Continue Reading Identifying Protocols by Name May Disclose Sufficient Structure for Computer-Implemented Means-Plus-Function Limitations

In VLSI Technology LLC v. Intel Corporation, No. 22-1906 (Fed. Cir. 2023), VLSI sued Intel for infringement of U.S. Patent Nos. 7,523,373 (the “’373 patent”) and U.S. Patent No. 7,725,759 (the “’759 patent”). After a jury trial in 2021, VLSI was awarded $1.5 billion for literal infringement of the ’373 patent and an additional $675 million for infringement of the ’759 patent under the doctrine of equivalents. Prior to trial, Intel sought to amend its answer to assert a licensing defense. Intel argued that due to a recent change in ownership of Finjan, Inc., Intel was covered under Finjan’s license
Continue Reading The Importance of Reasonable Particularity in a Doctrine of Equivalents Argument

In H. Lundbeck A/S, et al. v. Lupin Ltd., et al., Nos. 2022-1194, 2022-1208, and 2022-1246 (December 7, 2023), the Federal Circuit held that generic pharmaceutical companies may continue to use skinny labels to avoid infringement of method of treatment claims as long as they do not engage in advertising or promotional activities that encourage infringement of the patents.
Continue Reading Federal Circuit Affirms Skinny Label Carve Outs

In Elekta Limited v. Zap Surgical Systems, Inc., No. 21-1985 (Fed. Cir. Sept. 21, 2023), the case addresses the interplay between findings related to motivation to combine and reasonable expectation of success in determining obviousness under 35 U.S.C. § 103. 
Continue Reading The Intertwining Nature of Motivation to Combine and Reasonable Expectation of Success

In K-Fee System GMBH, v. Nespresso USA, Inc. No. 2022-2042 (Fed. Cir. December 26, 2023) (“Opinion”), the case addresses how the construction of terms in claim limitations is critical in analyzing infringement.
Continue Reading Federal Circuit Reverses District Court’s Holding of Prosecution Disclaimer and Narrow Claim Construction

The Biden administration recently determined that it has the right to seize patents covering certain high-priced medicines, in an apparent effort to take a more aggressive approach to lowering drug prices. See Targeting costly meds, Biden admin asserts authority to seize certain drug patents – POLITICO. Pursuant to this plan, the Commerce Department announced it plans to issue a framework that lists the factors the government should consider in determining whether to seize drug patents. Id. The department will seek public feedback and comment on the framework. Id.
Continue Reading Pharmaceutical Companies Have Rights if the Federal Government Seized their Patents