Author Archive | George Schooff

Laches Is a Defense to Patent Infringement No More

The United States Supreme Court recently held that under the Patent Act, laches is not a defense to claim for damages when the infringing acts occurred within the six-year time limitation provided for recovering damages under 35 U.S.C. §286.  SCA Hygiene Prods. AB v. First Quality Baby Prods., LLC, slip op. No. 15-927 (U.S. Sup. […]

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Objectively Reasonable Defenses Do Not Preclude Finding of Willful Patent Infringement

The Federal Circuit has held that even if an accused infringer’s defenses to patent infringement are objectively reasonable, Supreme Court precedent does not preclude a willful infringement finding, or enhancing damages.  WBIP, LLC v. Kohler Co., Nos. 2015-1038, 2915-1044 (Fed. Cir. July 19, 2016). In WBIP, the district court decided the willful infringement question under […]

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PTAB Grants Request for Re-hearing from Denial of Petition to Institute Inter Partes Review

Requests to the Patent Trial and Appeal Board for rehearing of decisions on Petitions for Inter Partes Review are commonplace.  PTAB decisions summarily denying them are as well.  In AVX Corporation v. Greatbatch, Ltd., IPR2015-00710, Paper 13 (Jan. 13 2016), however, a Petitioner succeeded in convincing a PTAB panel to reverse itself (in part) on […]

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USPTO Holds First-Ever Inter Partes Review Hearing in Midwest Regional Office in Detroit

Back in 2012, the U.S. Patent and Trademark Office officially opened its first satellite Office—the Midwest Regional Office—in Detroit, Michigan. In another first for the Detroit Regional Office, on January 11, 2016, the Office conducted the first oral hearings in an inter partes review proceeding outside of the Patent Office’s Alexandria, Virginia headquarters. A few […]

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Different Patent Claim Terms Can Have Same Meaning

Courts will presume different meanings attach to different words when construing claim language. See, e.g., Ethicon Endo-Surgery, Inc. v. U.S. Surgical Corp., 93 F.3d 1572, 1579 (Fed. Cir. 1996) (reversing lower court’s ruling that a “pusher assembly” and a “pusher bar” have the same meaning). But a recent Patent Trial and Appeal Board decision construed […]

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Suit Tossed on Alice Grounds Does Not Merit Attorneys Fees Under Octane Fitness

A California district court recently considered the intersection between the patent-eligibility law of Alice and the fee award standard of Octane Fitness, set against the backdrop of a (mostly) successful challenge to the patent-in-suit’s claims before the Patent Trial and Appeal Board.  In Credit Acceptance Corp. v. Westlake Servs., LLC, No. CV 13-01523 SJO (MRWx) […]

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Federal Circuit Will Not Allow Mandamus Relief Of PTAB Decisions To Initiate Inter Partes Review

In In re The Procter & Gamble Company. LLC, No. 121 (Fed. Cir. Apr. 24, 2014), Clio filed a declaratory judgment action against Procter & Gamble (“P&G”), asserting three P&G patents were invalid.  After unsuccessfully moving to stay an already-pending P&G lawsuit for patent infringement against a Clio customer, Clio dismissed its complaint without prejudice […]

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Federal Circuit Will Not Allow Mandamus Relief Of PTAB Decisions Not To Initiate Inter Partes Review

In In re Dominion Dealer Solutions. LLC, No. 109 (Fed. Cir. Apr. 24, 2014), Dominion petitioned the Patent Office Trial and Appeal Board (“PTAB”) to institute inter partes review of five patents.  The PTAB denied them all.  Dominion petitioned the Federal Circuit for a writ of mandamus.  Id. at 2. The Federal Circuit denied Dominion’s […]

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Federal Circuit Will Not Allow Appeals Of PTAB Decisions Not To Initiate Inter Partes Review

In St. Jude Medical, Cardiology Div., Inc. v. Volcano Corp., No. 2014-1183 (Fed. Cir. Apr. 24, 2014), St. Jude sued Volcano for patent infringement.  Volcano counterclaimed against St. Jude, asserting St. Jude was infringing a Volcano patent.  Two years later, the district court dismissed all claims against St. Jude relating to the Volcano patent.  Six […]

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Supreme Court Rejects Federal Circuit’s Exceptional Patent Case Standard

A unanimous Supreme Court announced that the Federal Circuit’s “objectively baseless” test for awarding attorney fees to the prevailing party in patent cases is “unduly rigid, and it impermissibly encumbers the statutory grant of discretion to district courts.”  Octane Fitness, LLC v. Icon Health & Fitness, No. 12-1188, at 7 (U.S. Sup. Ct. Apr. 29, 2014). […]

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