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Category: Civil procedure


Supreme Court Revisits Standard for Awarding Attorneys' Fees in Copyright Cases
April 28, 2016
Post by Brandon W. Clark
Brandon W. Clark Earlier this week the Supreme Court heard oral arguments addressing the relevant standard for awarding attorneys' fees in cases involving copyright law. The Court's ruling, expected later this spring, will likely have a significant impact on copyright litigation cases. Section 505 of the Copyright Act provides that a district court "may"award a reasonable attorney's fee to a "prevai.......
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Shifting Pre-Trial Strategy in the Wake of Alice and Ultramercial
December 04, 2014
Post by Blog Staff
Four recent Supreme Court cases involving patentable subject matter under 35 U.S.C. § 101 (Bilski v. Kappos, Mayo Collaborative Services v. Prometheus Laboratories, Inc., Ass'n for Molecular Pathology v. Myriad Genetics, Inc., and Alice Corp. v. CLS Bank International ) have had the practical effect of heightening the standard for patentability. However, these cases may also be altering the way patent c.......
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Is the Supreme Court Re-Aiming Markman?
October 17, 2014
Post by Blog Staff
The 1996 United States Supreme Court decision in Markman v. Westview Instruments established a landmark change for claim construction in patent infringement cases. That case established that the meaning of the claim language of a patent is a matter of law for a judge to decide, and not a matter of fact that should be determined by the jury. Since the decision, what is now known as a "Claim Construction Heari.......
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USPTO Patent Invalidation Precludes Judicial Equitable Remedies and Sanctions
July 31, 2014
Post by Blog Staff
The U.S. Court of Appeals for the Federal Circuit has issued a decision inePlus, Inc. v. Lawson. ePlus sued Lawson asserting infringement of two patents—U.S. Patent Nos. 6,023,683 ("the '683 patent") and 6,505,172 ("the '172 patent"). At trial, the district court held two of ePlus's asserted system claims and three of ePlus's asserted method claims not invalid, and the j.......
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Federal Circuit Weighs in on Stays for Post-Grant Review
July 24, 2014
Post by Blog Staff
The Federal Circuit has issued an opinion in VirtualAgility Inc. v. Salesforce.com, Inc., providing clarification regarding how court should properly determine whether to stay litigation during later-requested post-grant PTO proceedings. Under the America Invents Act, a district court is permitted, but not required, to grant such a stay. The statute also provides a list of four factors that the district court is.......
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PTO Interference Decisions do not Preclude Invalidity Defenses in Court
July 23, 2014
Post by Blog Staff
The Federal Circuit has issued a decision in AbbVie v. Janssen Biotech and Centocor Biologics, which relates to patents that broadly cover antibodies which can neutralize activity of human interleukin 12 (IL-12) and have useful application in the treatment of autoimmune disorders. The patent owner, AbbVie, sued Janssen and Centocor for infringement of the patents at issue. At trial, the jury found that all of the.......
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The Ongoing Battle of Copyright Protection and Pre-1972 Sound Recordings
April 23, 2014
Post by Blog Staff
Federal Copyright Law generally protects works that are fixed in a tangible medium from unauthorized use, including copying, performance, exhibition, and broadcasting. However, sound recordings from before 1972 are treated uniquely under the law—a situation that has resulted in real legal problems. When enacted, the Federal Copyright Law preempted any state rights relating to copyright protection. Howeve.......
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New and Useful - August 26, 2013
August 26, 2013
Post by Blog Staff
· InUniversity of Utah v. Max-Planck-Gesellschaft, the Federal Circuit held that a patent lawsuit between a state university and the officers of another state university is not a controversy between two states. The case began when the University of Utah (“UUtah”) sued the Max Planck Institute and the University of Massachusetts (“UMass”) to correct inventorship of two paten.......
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New and Useful - April 23, 2013
April 23, 2013
Post by Blog Staff
· InK-Tech Telecoms v. Time Warner Cable, the Federal Circuit confirmed that the standard for evaluating the adequacy of complaints alleging direct patent infringement remains Form 18 of the Appendix of Forms to the Federal Rules of Civil Procedure ("Form 18"). K-Tech filed separate complaints against Direct TV and Time Warner Cable (“TWC”) on the same day, alleging infringeme.......
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U.S. Supreme Court Addresses Jurisdiction In Patent Related Case
February 21, 2013
Post by Blog Staff
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Federal Circuit Addresses Subject Matter Jurisdiction in Patent-Related Cases
February 14, 2013
Post by Blog Staff
In Semiconductor Energy Lab. Co., Ltd. v. Yujiro Nagata, the Federal Circuit weighed in on federal subject matter jurisdiction and provided two important reminders: (1) Just because a cause of action originates from a patent, standards in the patent statute, or even from other patent litigation, it is the present cause of action and claims that dictate whether subject matter jurisdiction is proper; and (2) .......
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New and Useful - January 31, 2013
January 29, 2013
Post by Blog Staff
· In Soverain Software LLC v. Newegg Inc. the Federal Circuit vacated in part and reversed in part an Eastern District of Texas decision finding Newegg Inc. liable for infringement of U.S. Patent Nos. 5,715,314, 5,909,492, and 7,272,639, all relating to electronic commerce. The Federal Circuit offered clarifying insight on the obviousness doctrine. The background facts are as follows: Soverain Soft.......
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New and Useful - January 23, 2013
January 23, 2013
Post by Blog Staff
· In Wax v. Amazon Techs., the Federal Circuit upheld the TTAB’s denial of registration of the mark AMAZON VENTURES. Applicant filed and intent-to-use application to register the mark for “investment management, raising venture capital for others, . . . and capital investment consultation.” Amazon Technologies, Inc.—online retailer and owner of several AMAZON.COM marks&mdas.......
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New and Useful - Janurary 14, 2013
January 14, 2013
Post by Blog Staff
· The Supreme Court handed down its decision in Already, LLC v. Nike, Inc. The Court held that Nike’s covenant not to sue Alreadyfor alleged infringement of Nike’s AIR FORCE 1 trademark—entered into after Nike had filed suit and Already had filed a counterclaim challenging the mark’s validity—rendered both Nike’s claims and Already’s counterclaims moot. Th.......
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Federal Circuit to consider en banc whether new evidence may be introduced in a section 145 action
February 18, 2010
Post by Blog Staff
In an order yesterday, the Federal Circuit has agreed to consider the scope of evidence to be considered in an action filed under 35 U.S.C. § 145 to obtain review of a decision of the Board of Patent Appeals and Interferences. The case is Hyatt v. Kappos. Specifically, the court ordered briefing on the following issues:(a) Are there any limitations on the admissibility of evidence in section 145 proceedings.......
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If there are no sources of proof in the Eastern District of Texas, expect to be transferred
December 15, 2009
Post by Blog Staff
After the Fifth Circuit's Volkswagen and the Federal Circuit's TS Tech decisions, potential patent plaintiffs should be getting the message: Don't file in the Eastern District of Texas unless there are actually some sources of proof there. The Federal Circuit has again granted mandamus ordering the district court to transfer another case out of the district.In this case, there were no witnesses wi.......
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Use of court-appointed expert not abuse of discretion, even when jury told of neutrality
April 16, 2009
Post by Blog Staff
In a recent decision, the Federal Circuit held it was not an abuse of discretion for a district court to retain an independent expert pursuant to Rule 706 to assist the jury in understanding the technology relating to a complicated electrical patent. The district court was frustrated with the technology, and observed "the notion that a jury is going to understand [the technical details], to me, is foolishne.......
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Nondisclosure of test results disclosed to testifying expert results in sanctions, but not dismissal
April 09, 2009
Post by Blog Staff
In a recent decision, the Federal Circuit affirmed-in-part and reversed-in-part a district court's ruling sanctioning the plaintiffs and their attorney in a case both monetarily and by striking the plaintiffs' pleadings. The sanctionable conduct was the withholding of certain test results of the allegedly infringing product that arguably showed the product did not infringe. The test results were disclos.......
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Federal Circuit grants mandamus ordering transfer of case from Eastern District of Texas
March 25, 2009
Post by Blog Staff
In a recent decision, the Federal Circuit granted a petition for a writ of mandamus after a district court denied transfer of the case. The defendants/petitioners had been denied transfer of a patent case from the Eastern District of Texas (a venue perceived to be plaintiff-friendly in patent cases) to the Southern District of Ohio, where two of the three defendants were located. The district court gave essenti.......
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Patent lawyer without expertise in relevant field cannot testify on infringement, invalidity
March 24, 2009
Post by Blog Staff
The Federal Circuit recently reversed a district court's post-verdict grant of judgment as a matter of law of nonobviousness, applying the KSR obviousness standard and addressing the requirements for expert testimony for legal conclusions of obviousness. The Federal Circuit clearly set forth that patent attorneys without specific skill and training in the area of the technology involved in the patent-in-suit .......
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Grant of stay while preliminary injunction motion pending abuse of discretion
January 05, 2009
Post by Blog Staff
In a recent decision, the Federal Circuit found that a district court's grant of a stay pending inter partes reexamination without considering the patentee's pending motion for a preliminary injunction was an abuse of discretion. The Federal Circuit held the grant of the stay effectively denied the preliminary injunction motion, thereby making the stay order appealable. The court then held the district c.......
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On appeal, BPAI cannot group claims that do not share a common reason for rejection
January 02, 2009
Post by Blog Staff
In a recent decision, the Federal Circuit affirmed a distirct court's vacatur of a decision of the Board of Patent Appeals and Interferences. In an appeal of rejections in twelve different applications involving approximately 2,400 claims, the Board only addressed the rejection of 21 "represntative" claims pursuant to 37 C.F.R. § 1.192(c)(7) [now 37 C.F.R. § 41.37(c)(vii)]. The Board too.......
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Claim construction from different case against different defendant applies in subsequent case
June 03, 2008
Post by Blog Staff
In a decision yesterday, the Federal Circuit affirmed a district court's construction of a patent claim in an infringement case. However, the court vacated the district court's grant of summary judgment of noninfringement and remanded. The Federal Circuit held that a prior interpretation of the claim in a suit against a different alleged infringer required the claim construction adopted by the district co.......
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New appeallate counsel insufficient reason to consider arguments not raised before district court
May 21, 2008
Post by Blog Staff
In a decision today, the Federal Circuit affirmed a district court's decision finding two claims of a patent anticipated. The district court, adopting a magistrate judge's Report and Recommendation, held that the claims were invalid and granted summary judgment. After retaining new counsel for the appeal, the patentee argued the prior art did not anticipate the claims based on a claim element not argued.......
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Request to stay injunction pending appeal may also be considered notice of appeal; estoppel bars DOE
February 12, 2008
Post by Blog Staff
In a decision yesterday, the Federal Circuit reversed a jury's verdict of infringement under the doctrine of equivalents. The court had previously vacated-in-part and reversed-in-part the district court's earlier summary judgment of infringement, the result of which was the jury trial conducted by the district court. The combination of the Federal Circuit's mandate in the earlier appeal and applicat.......
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Mandamus inappropriate unless no other way to get relief, even if result is unnecessary trial
February 04, 2008
Post by Blog Staff
In a precedential order last week, the Federal Circuit denied a petition for a writ of mandamus seeking to direct a district court to vacate its summary judgment order in favor of a patent infringement plaintiff and to enter judgment in favor of the alleged infringer. The district court's order did not completely resolve the case, but did prevent the alleged infringer from presenting several defenses, includ.......
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When market entry fee part of damages for patent infringement, permanent injunction inappropriate
January 21, 2008
Post by Blog Staff
In a recent decision, the Federal Circuit affirmed a finding of infringement of a patent relating to the detection and classification of Hepatitis C Virus, but remanded the case for a determination of anticipation. In arguably the most interesting aspect of the decision, the court vacated the permanent injunction entered against the defendant. The plaintiff asked for and was awarded damages to compensate for th.......
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Fourth Circuit: Subpoena to foreign corporation valid even though no U.S. business contacts
December 31, 2007
Post by Blog Staff
The Fourth Circuit last week addressed a district court's ability to issue subpoenas to foreign witnesses in USPTO administrative proceedings. The court held that a district court may issue a Rule 30(b)(6) subpoena to a foreign corporation who is party to an opposition, even if the party has no officers, directors or managing agents who reside within the jurisdiction. The decision generated a lengthy dissent.......
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Allegedly false statements insufficient to warrant setting aside judgment under Rule 60(b)(3)
November 17, 2007
Post by Blog Staff
In a decision yesterday, the Federal Circuit affirmed a district court's decision denying a motion to set aside a judgment under Rule 60(b)(3) on charges of fraud. In an earlier litigation, a patent was invalidated under § 102(g) as previously invented by another. That decision was affirmed on appeal.More than a year later, new evidence came to light that some statements made during the original litig.......
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Plaintiff successfully skirts the minimum requirements for pleading, dismissal of complaint reversed
September 17, 2007
Post by Blog Staff
In a decision issued Friday, the Federal Circuit applied the Supreme Court's recent Twombly decision to the pleading requirements for patent and trademark causes of action. The court held that patent infringement plaintiffs need not specifically plead the claims infringed. Further, the court applied a similarly open standard to pleading trademark infringement cases. The pro se nature of the plaintiff combin.......
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Infringement and royalty rate affirmed; dismissal of willful infringement claim reversed
September 06, 2007
Post by Blog Staff
In a recent decision, the Federal Circuit affirmed-in part a district court's grant of summary judgment of infringement of a patent, finding that the claims were properly held to include measuring devices that either directly or indirectly compare two signals to determine the proper measurement. The court reversed-in part the district court's damages award. The district court properly determined the rea.......
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Equitable inventorship correction claim must be resolved after factually-overlapping fraud claim
August 27, 2007
Post by Blog Staff
The Federal Circuit issued a ruling Friday addressing the right to a jury trial in a case involving combined equitable (in the form of a correction of inventorship claim under 35 U.S.C. § 256 ) and legal (in the form of various tort claims) issues. The court held that the jury trial on the legal issues must precede the bench trial on inventorship when the legal issues have a common issue of fact with the inv.......
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Attorney cannot directly appeal finding of inequitable conduct absent formal sanctions
August 13, 2007
Post by Blog Staff
The Federal Circuit today addressed whether a prosecuting attorney who was found to have committed inequitable conduct during an infringement suit of the patent prosecuted may intervene to contest the finding. The court held that when an attorney is merely criticized by the court, not formally reprimanded, they have no standing to appeal. As a result, the court affirmed the district court's decision denying.......
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Proper successor shielded from patent infringement claim
May 16, 2007
Post by Blog Staff
In General Mills, Inc. v. Kraft Foods Global, Inc., the Federal Circuit affirmed the judgment of the district court holding that General Mills's claim for patent infringement against Kraft Foods was barred by a covenant not to sue that General Mills granted to Farley Candy Company, Kraft's predecessor in interest. In affirming the district court's decision, the Court held that Kraft, when it acquir.......
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Supreme Court proposes revisions to Federal Rules of Civil Procedure
April 30, 2007
Post by Blog Staff
In can what only be described as a busy day at the Supreme Court, the Court, in addition to rendering opinions in five cases (including two patent cases, see here and here), also proposed revisions to the Federal Rules of Civil, Criminal, Bankruptcy, and Appellate Procedure. While the Rules of Appellate Procedure only have a single change (adding Rule 25(a)(5) relating to privacy protection), the Civil Rules .......
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Federal Circuit Puts the Brakes on District Court's Claim Construction
April 19, 2007
Post by Blog Staff
The Federal Circuit today issued a fairly routine claim construction decision, vacating part of the district court's claim construction and remanding. The Court also affirmed the district court's decision to deny Rule 11 sanctions (applying Ninth Circuit law).More details of the case after the jump. Intamin Ltd. sued Magnetar Technologies Corp. for infringement of its patent relating to braking syste.......
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Certificate of correction invalid, infringement case continues with original claims
April 04, 2007
Post by Blog Staff
The Federal Circuit yesterday voided a certificate of correction which had been issued changing the scope of a patent's claims. Because the error corrected broadened the claims and was not the type of error that was "immediately apparent and leave no doubt as to what the mistake is," the certificate of correction was inappropriate. As a result, the finding of infringement under the "corrected&.......
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Federal Circuit again deals with standing
March 02, 2007
Post by Blog Staff
In yet another case, the Federal Circuit has dealt with whether a party asserting a patent infringement claim had title to the patent, and thus standing to bring the claim against the defendant. Here, once the standing issue was raised at the district court, the Plaintiff opted to fix the chain of title, voluntarily dismiss its claim, and refile a new case against the defendant. The court granted the dismissal (.......
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Today's lesson from the Federal Circuit (that you should already know): Don't miss deadlines
February 27, 2007
Post by Blog Staff
In a case decided today, the Federal Circuit affirmed the TTAB's dismissal of a party's cancellation claim. The party seeking cancellation sought to do so by proving uncontrolled licensing of the trademark, but failed to file a notice of reliance with regard to the relevant testimony on the issue before the deadline. The TTAB denied the motion to reopen the testimony period, finding no excusable neglect. The Fe.......
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Voluntary dismissal prevents award of attorney fees under § 285
February 27, 2007
Post by Blog Staff
In a recent case, the Federal Circuit found that when a plaintiff voluntarily dismisses its case under Rule 41(a)(1)(i) before an answer is served, the defendant is not a "prevailing party." As a result, attorney fees under § 285 could not be awarded by the district court. More details of the case after the jump. RFR Industries holds two patents directed toward railroad crossing fillers, .......
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Jurisdiction over Foreign Patents Requires - 1367(c) Analysis
February 02, 2007
Post by Blog Staff
The question before the Federal Circuit in Jan K. Voda, M.D. v. Cordis Corporation was whether where an accused infringer is shown to have moved its infringing activities offshore to Germany, the U.K. and elsewhere, does supplemental jurisdiction of the court, pursuant to 28 U.S.C. ? 1367, permit an infringement determination under the parallel foreign patents, where all patents originate from a single Patent Coo.......
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Federal Circuit Places Members of the Bar on Notice
January 29, 2007
Post by Blog Staff
It's not over until it's over. In International Electronic Technology Corp. v. Hughes Aircraft Company, DirecTV, Inc. and Thomson Consumer Electronics, Inc., the Federal Circuit dismissed International Electronic's appeal for lack of jurisdiction. In its ruling, the Federal Circuit stated: "The court takes umbrage at parties who have not carefully screened their cases to ascertai.......
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University Can't Have Its Cake and Eat It Too - Immunity Negated
January 25, 2007
Post by Blog Staff
The University of Missouri's waived its constitutional immunity under the Eleventh Amendment when it fully participated in an interference action against Vas-Cath, Inc. A Vas-Cath patent had issued while the University's application, although filed before the Vas-Cath application, was still pending. The University invoked the procedures to institute an interference between the University's pending .......
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Federal Circuit proposes revised circuit rules
January 23, 2007
Post by Blog Staff
The Federal Circuit Court of Appeals has proposed changes to its Circuit Rules. The revised rules would require parties, in addition to filing paper copies of briefs and appendices, to also file the briefs and appendices in electronic form unless counsel certifies that filing an electronic copy would not be practical or constitute hardship. The purpose of the new rule is to facilitate posting of the briefs and a.......
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Appeals Court holds Transclean Corporation to its stated position
January 18, 2007
Post by Blog Staff
The United States Court of Appeals for the Federal Circuit decided in Transclean v. Jiffy Lube that Transclean should be bound by its repeated statements proffered during the course of litigation and not be allowed to take a contrary position during a second phase of litigation. Transclean is the sole licensee of U.S. Patent No. 5,318,080 that is directed to an apparatus for changing automatic transmission fluid........
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Speak Now or Forever Hold Your Peace - Failure to Raise Verdict Inconsistency Defeats Appeal
December 14, 2006
Post by Blog Staff
In L&W, Inc. v. Shertech, Inc. and Steven W. Sheridan ("Shertech"), the Court affirmed in part the decision of the US District Court for the Eastern District of Michigan holding claim 7 valid and claim 10 invalid of Shertech's '264 patent, and affirming the portion of the judgment holding that the '264 patent was not unenforceable due to inequitable conduct. At issue was a patent ("the '265 paten.......
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02 Micro takes strike three
November 16, 2006
Post by Blog Staff
02 Micro International Limited and 02 Micro, Inc. (collectively "02 Micro") recently appealed a Northern District of California district court's grant of summary judgment of non-infringement in favor of Monolithic Power Systems, Inc. ("MPS") to the United States Court of Appeals for the Federal Circuit. 02 Micro contended that the district court errored in denying it leave to amend its infringement contentions an.......
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The attorneys of McKee, Voorhees & Sease, P.L.C. designed this blog as an informational and educational resource about intellectual property law for our clients, other attorneys, and the public as a whole. Our goal is to provide cutting-edge information about recent developments in intellectual property law, including relevant case law updates, proposed legislation, and intellectual property law in the news.

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