Federal Circuit Addresses Subject Matter Jurisdiction in Patent-Related Cases 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 […] Continue Reading →
New and Useful – January 31, 2013 · 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 […] Continue Reading →
New and Useful – January 23, 2013 · 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—opposed the […] Continue Reading →
New and Useful – Janurary 14, 2013 · 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. […] Continue Reading →
Federal Circuit to consider en banc whether new evidence may be introduced in a section 145 action 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 […] Continue Reading →
If there are no sources of proof in the Eastern District of Texas, expect to be transferred 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 […] Continue Reading →
Use of court-appointed expert not abuse of discretion, even when jury told of neutrality 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 […] Continue Reading →
Nondisclosure of test results disclosed to testifying expert results in sanctions, but not dismissal 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 […] Continue Reading →
Federal Circuit grants mandamus ordering transfer of case from Eastern District of Texas 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, […] Continue Reading →
Patent lawyer without expertise in relevant field cannot testify on infringement, invalidity 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 […] Continue Reading →