Latest updates

Supreme Court: patent owners can recover lost profits damages based on foreign acts
Fitzpatrick, Cella, Harper & Scinto
  • Intellectual Property
  • USA
  • July 23 2018

The US Supreme Court recently held that patent owners can recover lost profits damages under 35 USC Section 271(f)(2) based on acts occurring outside the United States. Section 271(f)(2) imposes patent infringement liability where a party supplies components from the United States that are not "suitable for substantial noninfringing use" which it intends to be combined abroad in a manner that would infringe if the combination had occurred within the United States.

PTAB provides 'informative' guidance concerning motions to amend in inter partes reviews
Fitzpatrick, Cella, Harper & Scinto
  • Intellectual Property
  • USA
  • June 25 2018

The Patent Trial and Appeal Board (PTAB) has designated a recent order as 'informative'. Although not precedential, the order provides guidance concerning the PTAB's treatment of motions to amend patent claims challenged in inter partes review proceedings following Aqua Products, Inc v Matal, wherein it was held that a patent owner in an inter partes review proceeding does not bear the burden of demonstrating the patentability of substitute claims presented in a motion to amend.

Jury awards Apple $533 million in damages
Fitzpatrick, Cella, Harper & Scinto
  • Intellectual Property
  • USA
  • June 18 2018

After a week-long trial and four days of deliberation, a federal jury has determined that Samsung owes Apple over $533 million in damages for infringing three design patents asserted by Apple. The jury also found Samsung liable to pay more than $5 million for infringing two utility patents.

When USPTO institutes inter partes review, it must decide patentability of all challenged claims
Fitzpatrick, Cella, Harper & Scinto
  • Intellectual Property
  • USA
  • June 04 2018

In a recent case, the Supreme Court held that when the US Patent and Trademark Office (USPTO) institutes an inter partes review, it must decide the patentability of all of the claims challenged by the petitioner, based on the plain text of 35 USC Section 318(a). The court found no basis in the statutory text or framework for the USPTO's partial institution practice.

Federal Circuit clarifies venue issues in patent cases
Fitzpatrick, Cella, Harper & Scinto
  • Intellectual Property
  • USA
  • May 28 2018

Two recent Federal Circuit orders have provided answers to certain venue-related questions that have arisen in patent cases. The first order stipulates that alien corporate defendants remain subject to venue in any judicial district, reaffirming the Supreme Court's long-established Brunette ruling. Further, the second order confirms that when a defendant moves to dismiss for improper venue, the burden of proving that venue is proper rests with the plaintiff and is governed by Federal Circuit law.

Supreme Court hears oral argument on lost profit patent damages
Fitzpatrick, Cella, Harper & Scinto
  • Intellectual Property
  • USA
  • May 07 2018

The Supreme Court recently heard oral argument in a case which will determine whether US patentees can recover lost profits damages arising under 35 USC Section 271(f) for certain activities occurring outside the United States. Among other things, the justices who asked questions seemed to accept the argument that the application of proximate cause would be sufficient to limit the risk of excessive damages awards and mitigate any potential harm to international comity.

Federal Circuit overturns fair use ruling in Oracle v Google
Fitzpatrick, Cella, Harper & Scinto
  • Intellectual Property
  • USA
  • April 30 2018

In a precedential copyright decision, the Federal Circuit recently held that Google Inc's use of Oracle America, Inc's Java application programming interface was not fair use as a matter of law, contrary to a jury's finding. In so doing, the Federal Circuit reversed a decision denying Oracle's requests for judgment as a matter of law and for a damages trial.

Second Circuit rejects fair-use defence for online service allowing users to watch Fox News content
Fitzpatrick, Cella, Harper & Scinto
  • Intellectual Property
  • USA
  • March 26 2018

The US Court of Appeals for the Second Circuit recently held that certain aspects of TVEyes's service – which allows users to watch video clips of programmes on Fox News and other channels – are not protected by the copyright fair-use doctrine under 17 USC Section 107. The Second Circuit addressed each of the four statutory fair-use factors and reversed the district court's determination that TVEyes's watch function constituted fair use.

Federal Circuit identifies circumstances militating against early or summary Section 101 determinations
Fitzpatrick, Cella, Harper & Scinto
  • Intellectual Property
  • USA
  • March 19 2018

A number of district court decisions have held patent claims to be ineligible under Section 101 during motions brought at the start of litigation or on motions for summary judgment. However, two recent Federal Circuit decisions indicate that factual disputes over aspects of the two-step test for assessing patent eligibility established by the Supreme Court, including the tangibility of claims, may hinder such early or summary Section 101 determinations.

'Repeat infringers' under Digital Millennium Copyright Act not repeat infringers as adjudged by court
Fitzpatrick, Cella, Harper & Scinto
  • Intellectual Property
  • USA
  • February 26 2018

In a recent case, the US Court of Appeals for the Fourth Circuit held that an internet service provider (ISP) was not entitled to the safe harbour of 17 USC Section 512(a) of the Digital Millennium Copyright Act. In so holding, the Fourth Circuit rejected the ISP's argument that the safe harbour requires that an ISP take action only against subscribers who are adjudged in court to be 'repeat infringers'.

Federal Circuit clarifies that wilful infringement must be decided by jury
Fitzpatrick, Cella, Harper & Scinto
  • Intellectual Property
  • USA
  • February 05 2018

The Federal Circuit recently handed down a decision in which it clarified that wilful infringement is an issue to be decided by a jury, rather than a district court. It held that the district court had erred in excluding as unreasonable prior art evidence concerning the defendant's litigation defences, because that evidence may also have been relevant to its subjective intent or knowledge at the time of the alleged infringement.

Federal Circuit holds that time bar determinations for inter partes reviews may be appealed
Fitzpatrick, Cella, Harper & Scinto
  • Intellectual Property
  • USA
  • January 22 2018

The US Court of Appeals for the Federal Circuit sitting en banc recently issued a majority opinion holding that a determination made by the Patent and Trademark Office concerning whether a petition for an inter partes review is time barred is subject to judicial review. Specifically, the majority held that the limit on judicial review pertaining to institution decisions does not apply to time bar determinations under 35 USC Section 315(b).

Court rules that immoral or scandalous matter can be registered
Fitzpatrick, Cella, Harper & Scinto
  • Intellectual Property
  • USA
  • January 15 2018

A three-judge panel of the Court of Appeals for the Federal Circuit recently held that although the mark FUCT comprises immoral or scandalous matter, it is still federally registrable because the bar on registering such marks set out in Section 2(a) of the Lanham Act is an unconstitutional restriction of free speech, thereby violating the First Amendment.

Supreme Court hears oral argument on constitutionality of inter partes review in oil states
Fitzpatrick, Cella, Harper & Scinto
  • Intellectual Property
  • USA
  • December 18 2017

The Supreme Court recently heard oral argument in Oil States Energy Services, LLC v Greene's Energy Group, LLC. The Supreme Court's decision in this case will either spare or strike down inter partes review as a means for challenging the validity of issued patents in the United States.

Federal Circuit holds that TC Heartland was change of law
Fitzpatrick, Cella, Harper & Scinto
  • Intellectual Property
  • USA
  • December 04 2017

The Federal Circuit recently held that TC Heartland represented a change of law and that Micron Technology Inc's failure to raise a venue objection in its initial motion to dismiss did not waive the objection under Rule 12 of the Federal Rules of Civil Procedure. However, the court also explained that there may be other bases on which a defendant could be found to have forfeited a venue objection.

Two bites of the apple: five facts about drug patent inter partes review final written decisions
Fitzpatrick, Cella, Harper & Scinto
  • Intellectual Property
  • USA
  • November 20 2017

As of July 2017 there had been at least 363 inter partes review petitions filed against patents listed in the Food and Drug Administration's Orange Book and 74 filed against patents that have been identified as reading on Purple Book Centre for Drug Evaluation and Research-listed biologic drugs. Of these 437 inter partes reviews, 116 resulted in a final written decision. There are a number of lessons to be learned from these.

Pharma at Patent Trial and Appeal Board
Fitzpatrick, Cella, Harper & Scinto
  • Intellectual Property
  • USA
  • November 06 2017

There has been some concern regarding the statistics periodically issued by the US Patent Trial and Appeal Board, owing to the fact that the reported numbers overlook multiple inter partes review challenges to the same patents and, potentially, different outcomes in those challenges. While certain drug patents have been challenged in multiple inter partes review petitions, concern as to different outcomes appears to be unfounded.

Divided Federal Circuit holds that petitioner must prove all propositions of unpatentability
Fitzpatrick, Cella, Harper & Scinto
  • Intellectual Property
  • USA
  • October 30 2017

A divided en banc Federal Circuit recently issued several opinions addressing the burden of proof concerning a motion to amend claims in inter partes review proceedings. While none of the opinions garnered a full majority, the leading opinion placed the burden of persuasion with respect to the patentability of amended claims on the petitioner.

Amgen obtains $70 million damages award against Hospira for erythropoietin patent infringement
Fitzpatrick, Cella, Harper & Scinto
  • Intellectual Property
  • USA
  • October 23 2017

The verdict in a recent patent infringement case between two pharmaceutical companies is the first instance in which a patent owner has recovered significant infringement damages under the Biologics Price Competition and the Innovation Act. It is also the first time that a patent owner has recovered damages under the act for infringement that a competitor carried out before the commercial marketing of the competitor's biosimilar.

Determining 'regular and established place of business' under patent venue statute
Fitzpatrick, Cella, Harper & Scinto
  • Intellectual Property
  • USA
  • October 16 2017

In a recent patent infringement case, a Federal Circuit panel rejected an Eastern District of Texas judge's proposed four-factor test for determining whether venue is proper over a defendant in a patent infringement action under the 'regular and established place of business' prong of the US patent venue statute. In its place, the Federal Circuit introduced its own three requirements to determine what constitutes a 'regular and established place of business'.

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