Grant of stay while preliminary injunction motion pending abuse of discretion 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 […] Continue Reading →
Existence of other licenses under patent does not preclude finding of irreparable harm In a decision Tuesday, the Federal Circuit affirmed a district court's grant of a permanent injunction. The district had previously granted a permanent injunction after a jury found willful infringement. In a previous appeal, the Federal Circuit affirmed the finding of willful infringement, but vacated the permanent injunction because the district court did not consider […] Continue Reading →
District court’s order dismissing the action with prejudice held to be nonfinal due to counterclaims In a decision Thursday, the Federal Circuit affirmed a district court's denial of a preliminary injunction, and held it did not have jurisdiction over the remainder of the appeal because there was no final judgment. It was undisputed there was no infringement under the district court's claim construction of the single element at issue. After […] Continue Reading →
Substantial question regarding validity insufficient to defeat likelihood of success? In a recent decision, the Federal Circuit affirmed a district court's grant of a preliminary injunction concerning the manufacture of an extended release formulation of an antibiotic. In a lengthy opinion, the Federal Circuit applied the Supreme Court's obvious-to-try logic from KSR to pharmaceutical patents. Notably, the court used the unpredictability of the pharmaceutical arts […] Continue Reading →
High materiality without explanation for nondisclosure leads to inference of intent to deceive In a recent decision, the Federal Circuit affirmed a district court's finding of inequitable conduct for one patent but reversed on a second, affirmed a finding of no invalidity of the second patent, but vacated the finding of infringement after modifying the district court's claim construction of a claim term. The court also reversed the […] Continue Reading →
Advice of counsel evidence still relevant to intent to induce infringement In a recent decision, the Federal Circuit affirmed a jury's finding of infringement of two patents and the related injunction, but reversed the district court's claim construction and the concomitant finding of infringement regarding a third patent. The court affirmed the district court's injunction despite the fact that the patentee licensed, rather than manufactured, the […] Continue Reading →
Irreparable harm to exclusive licensee cannot support injunction; willfulness vacated post-Seagate In a decision Monday, the Federal Circuit addressed a range of issues and ultimately affirmed a district court's denial of injunctive relief and, in light of the intervening Seagate decision, vacated and remanded the case for reconsideration regarding willfulness. The court also affirmed the district court's finding of no invalidity and the infringement of some […] Continue Reading →
First Circuit: District court’s determination that “duck tour” is nongeneric doesn’t hold water In a lengthy decision last week, the First Circuit held a district court erred in finding the term "duck tour" nongeneric in the context of sightseeing tours on amphibious vehicles. The district court, based largely on the nongenericness of this aspect of the parties' marks, found the plaintiff was likely to succeed in its infringement […] Continue Reading →
Fifth Circuit passes on eBay’s applicability in trademark cases In a decision last week, the Fifth Circuit affirmed a district court's conclusion it had subject matter jurisdiction over a trademark case, as well as its grant of a preliminary injunction. While the activities giving rise to the claim of trademark infringement took place in Mexico, they had a "substantial effect" on United States commerce, […] Continue Reading →
Eleventh Circuit: eBay may eliminate presumption of irreparable harm in trademark cases In a recent decision, the Eleventh Circuit vacated a district court's injunction against the use of a competitor's trademarks in the meta tags of a defendant's website. The court held that while the plaintiffs had shown likelihood of success on both their trademark infringement and false advertising claims, because the district court relied on a […] Continue Reading →