Collateral Estoppel Is Applicable in IPRs When the Question of Patentability Is the Same In Google LLC v. Hammond Development International, Inc. Appeal No. 21-2218, the Federal Circuit held that Google filed an IPR on Hammond’s ’816 patent, which related to and shared a specification with Hammond’s ’483 patent. The... read more →

Evidence of Actual Physician Practice Is Relevant in Determination of Direct Infringement In Genentech, Inc. v. Sandoz Inc. Appeal No. 22-1595, the Federal Circuit held that the district court did not clearly err in considering evidence of actual physician practice when determining whether a generic drug’s instructions encouraged, recommended, or... read more →

Standing Cured by Revoking an “Irrevocable” License Prior to Commencing Suit In Uniloc 2017 LLC v. Google LLC, Appeal No. 21-1498, the Federal Circuit held that  an “irrevocable” patent license could be terminated by mutual agreement and such a license was not a right that by its nature would fall... read more →

Once You’re In, You’re In: Amending Claims Addressing an Instituted Ground Allows for More Unrelated Amendments. In American National v. Sleep Number Corporation, Appeal No. 21-1321, the Federal Circuit held that once a patent owner includes at least one amendment that is responsive to an instituted unpatentability ground, the patent... read more →

A Computer Method Claim Must Improve the Functions of the Computer to Survive § 101 In International Business Machines Corp. v. Zillow Group, Inc., Appeal No. 21-2350, the Federal Circuit held that a patentee’s allegation that computer method claims made data analysis more efficient, without reference to the function or operation... read more →

Lack of Advance Notice Vacates District Court’s Orders In ABC Corporation I v. Partnership And Unincorporated Associations, Appeal No. 22-2150, the Federal Circuit held that failure to provide advance notice under Federal Rule of Civil Procedure 65(a) required vacatur of a preliminary injunction. ABC Corporation (“ABC”) asserted four design patents... read more →

The Applicant-Action (or Inaction) Exception In Gilbert P. Hyatt v. United States Patent And Trademark Office, Appeal No. 21-2324, the Federal Circuit held that for a patent application filed but not yet granted before the Uruguay Rounds Agreement Act (which changed patent terms to be 20 years from the effective... read more →

Plausible Factual Allegations Concerning Inventive Concepts Preclude Motion to Dismiss In Cooperative Entertainment, Inc. v. Kollective Technology, Inc. Appeal No. 21-2167, the Federal Circuit held that plausible allegations of an inventive concept in a complaint precluded a motion to dismiss for lack of patent eligibility because determining whether such a... read more →

New Patent Cases Filed in Waco Will Be Randomly Assigned Among Western District of Texas Courts and Divisions by Daniel L. Moffett, Andy Rosbrook & Hannah D. Price July 28, 2022 District Court, Patent Litigation, Federal Circuit In response to the recent concentration of patent cases filed in a single... read more →

PTAB Applies Director’s Guidance and Holds That Compelling Evidence of Unpatentability Precludes Fintiv Denial by Megan R. Mahoney, Jason Weil & Rubén H. Muñoz September 13, 202 Patent Trial and Appeal Board, Inter Partes Review, Expert Testimony In an IPR institution decision issued shortly after the USPTO issued interim guidance... read more →