Patent Exhaustion Redux: A Sale Is a Sale Is a Sale–And Once Sold, It’s Gone. The Supreme Court Reaffirms the Scope of Patent Exhaustion

On May 30, 2017, in Impression Products, Inc. v. Lexmark International, Inc.,[1] the U.S. Supreme Court held that patent exhaustion applies to sales made anywhere in the world, thereby extinguishing the patent owner’s rights under patent law once the patent owner sells a patented product. For the second time in little more than a week, the Supreme Court voted overwhelmingly to reverse the [...]

This Dog No Longer Hunts in Marshall: The Supreme Court Limits Patent Venue

Today, in TC Heartland LLC v. Kraft Food Group Brands LLC,[1] the US Supreme Court held that, for purposes of the patent venue statute,[2] a domestic corporation “resides” only in its state of incorporation, and not wherever the corporation may be subject to personal jurisdiction. In so ruling, the Court reaffirmed a prior holding that the patent venue statute “is the sole and exclusive [...]

Take Your Time to Sue:  The Supreme Court Says Laches Is the Same for Patents as for Copyrights

In SCA Hygiene Prods. Aktiebolag v. First Quality Baby Prods., LLC,[1] a patent infringement case, the US Supreme Court ruled that laches cannot be invoked to bar legal relief in the face of a statute of limitations enacted by Congress.[2] The Court held that the defense of laches in patent infringement cases is not available within the six-year damages period set forth in 35 U.S.C. § 286. [...]

Quantitative, Not Qualitative – The Supreme Court Overrules the Federal Circuit Again

In Life Techs. Corp. v. Promega Corp.,[1] the US Supreme Court reversed the Court of Appeals for the Federal Circuit yet again, holding that making a single component of a patented invention in the US, and sending that component outside the US to manufacture a patented product, is not an infringing act under 35 U.S.C. § 271(f)(1).

IPRs: Federal Circuit Affirms Nonappealability of PTAB Institution Decision

The Patent Trial and Appeal Board (PTAB) decides petitions to institute post-grant proceedings, including inter partes reviews (IPRs).  PTAB institution decisions, as contrasted with the merits of any final written decision, are nonappealable.[1]  Despite the statutory language barring appealability, from time to time litigants have attempted to appeal institution decisions to the Court of [...]

The Aahs Have It: Ordered Combination of Elements Morphs Into Patent-Eligible Subject Matter

In the fourth of a recent series of appellate decisions establishing patent-eligibility of patent claims post-Alice, in McRO, Inc. v. Bandai Namco Games America,[1] the Court of Appeals for the Federal Circuit reversed a district court ruling of ineligibility. We have written previously about several recent Federal Circuit decisions in this area, in which the […]

IPRs: Federal Circuit Vacates “Unreasonable” PTAB Denial of Motion to Amend

The Patent Trial and Appeal Board (PTAB) has received a lot of criticism because of how rarely the PTAB has granted patent owner motions to amend in post-grant proceedings, including inter partes reviews (IPRs).  Much of the criticism has focused on PTAB requirements for the patent owner to show that proposed amended claims are patentable […]

Order in the Court – “Ordered Combination” of Method Elements Makes Liver Cell Preservation Invention Patent-Eligible

In recent articles, we have written about Federal Circuit reversals of invalidity decisions from district courts, based on patent-ineligibility under 35 U.S.C. § 101, in Enfish[1] and BASCOM.[2] During oral argument in BASCOM, some Federal Circuit judges intimated that, after BASCOM, there might be other similar decisions waiting in the wings.  Rapid Litigation Management, Ltd. […]

IPRs:  Pre-Institution Patent Owner Evidence Does Not Include Petitioner’s Expert’s Deposition

In April, we wrote about the revisions to the rules of practice for trials before the Patent Trial and Appeal Board (PTAB).[1]  Among those revisions was a rule enabling patent owners to introduce evidence in opposing a petition to institute an inter partes review (IPR) proceeding.[2] At the end of June, the PTAB issued an […]

Not Dead Yet – BASCOM Gives Alice a Different View Through the Looking Glass

More closely on the heels of the Enfish, LLC v. Microsoft Corp.[1] decision than we might have expected, the Court of Appeals for the Federal Circuit has reversed yet another district court holding of patent-ineligibility of software claims under 35 U.S.C. § 101. In BASCOM Global Internet Servs. v. AT&T Mobility LLC,[2] the Federal Circuit […]

Cuozzo:  It’s OK for the PTO to Use BRI in IPRs

In Cuozzo Speed Technologies v Lee[1], the US Supreme Court actually affirmed the Federal Circuit in a patent case, an increasingly rare event.  The Supreme Court confirmed, unanimously, that the US Patent and Trademark Office (PTO) can construe claims using the broadest reasonable interpretation (BRI) standard, rather than the district court “ordinary meaning” standard.[2]  BRI […]

Did the Supreme Court Put Willful Infringement Back in the Money?

In Halo Electronics, Inc. v. Pulse Electronics, Inc.,[1] the US Supreme Court rejected an enhanced damages test that the Court of Appeals for the Federal Circuit had required in cases of willful patent infringement.  At least three aspects of that test appeared to trouble the Supreme Court: The test required a finding of objective recklessness; […]

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