Infringement under the Doctrine of Equivalents is Barred by Prosecution History Estoppel

The Federal Circuit recently affirmed dismissal of the patent owner’s lawsuit brought for patent infringement under the doctrine of equivalents in Amgen Inc. v. Coherus Biosciences Inc., 2018-1993 (Fed. Cir. July 29, 2019).  The case illustrates one of the potential difficulties a patent owner may encounter under the doctrine of equivalents.  Prosecution history estoppel is a defense to a charge of infringement under the doctrine of equivalents, and prevents a patent owner from recapturing subject

Supreme Court Follows “On Sale” Bar Precedent in America Invents Act Decision

Earlier this year, the Supreme Court addressed the “on-sale” provision of the AIA, 35 U.S.C. Sec 102(a), in Helsinn Healthcare S.A. v. Teva Pharmaceuticals USA, Inc. In this case, the patent owner, Helsinn, entered into a license agreement and a supply and purchase agreement with a third party. These agreements gave the third party the right to distribute, promote, market and sell the drug in question. In return, Helsinn received upfront and future royalty payments. The

A Recent Opinion From The Eastern District Of Texas Addresses Numerous Alice/Section 101 Issues

In its September 24, 2018 opinion in Intellectual Ventures v. Sprint, et. al., the Eastern District of Texas Court made several rulings that touch on a number of issues that patent owners and parties defending patent infringement allegations should consider. This opinion was the result of two identical Section 101 Motions to Dismiss filed in two companion cases involving multiple asserted patents. The first issue addressed by the Court was whether the three claims that defendants’

Reasonable Royalty Damages For Patent Infringement

Damages for Patent Infringement If you have a patent that you believe is being infringed, you may have questions about recoverable damages. You may be asking “what are the damages for patent infringement, and how do I prove damages?” Or if you are being accused of infringement, you may be asking “what is the value of this patent?” The Federal Circuit’s opinion in Power Integrations, Inc. v. Fairchild Semiconductor International, Inc., decided July 3, 2018, provides a good analysis

US Supreme Court Allows Recovery Of Lost Foreign Profits

In WesternGeco LLC v. ION Geophysical Corp, decided today, the U.S. Supreme Court held that 35 U.S.C. Sections 271(f)(2) and 284 allow a patent owner to recover damages in the form of a reasonable royalty and lost foreign profits for patent infringement. In this case, the defendant manufactured the components in the United States, but then shipped those components (unassembled) abroad to companies for assembly and subsequent use of the assembled system. At trial, the plaintiff presented evidence

Pick Your Registered Agent Carefully

Domestic companies incorporated in the state of Texas (and other multi-judicial district states) accused of patent infringement have an additional tool in their venue arsenal. The Federal Circuit ruled last week in In re BigCommerce that a domestic company incorporated in a state having multiple judicial districts (such as Texas) “resides” for purposes of the patent venue statute only in the single district within that state where it maintains a principal place of business, and if it does not

Foreign Companies Are Subject to Patent Infringement Lawsuits In Any Judicial District

Subsequent to the Supreme Court’s ruling in TC Heartland, some foreign corporations were advancing the contention that venue for patent infringement lawsuits naming them as a defendant was not proper in any court in the United States. Today, the Federal Circuit addressed that contention in In re: HTC Corporation, ruling that foreign corporations are subject to suit in any judicial district. This ruling will likely give patent owners more flexibility in deciding where they file patent infringement cases against

How much Detail Is Required from Patent Owners To State A Claim for Patent Infringement?

The Federal Circuit’s opinion in Disc Disease Solutions Inc. v. VGH Solutions, Inc. et. al., handed down on May 1, 2018 may very well change the specificity that patent owners and patent attorneys provide in filing a lawsuit to enforce their intellectual property rights.  It suggests that, at least for “simple technology,” there is not much difference, if any, between the old Form 18 requirements and the Iqbal/Twombly standard. This case was an appeal of a dismissal with

Fact Issues Preclude Dismissal Under Alice

The Federal Circuit recently handed down two decisions that give guidance to patent owners contemplating patent litigation in the post-Alice world. The first was Berkheimer v. HP Inc. which was decided on February 8, 2018. Berkheimer was an appeal from the Northern District of Illinois court granting summary judgment in favor of the accused infringer, in part, that claims were patent ineligible under 35 U.S.C. Section 101. The Federal Circuit held the claims were directed to an abstract