Posts Tagged: "Patent Litigation"

Failure to Construe Claims ‘As a Whole’: A Hole in Our Strategy?

For decades, patent litigators have followed what can best be described as a forced march seeking to construe patent terms and thereafter litigate infringement and/or validity issues based on those constructions. We all know the drill: exchange contentions; flag contested claim terms; brief their constructions; apply the facts to the court’s constructions; and grind out infringement and validity evidence like so much sausage. Rarely do litigants ask courts to take a step back and construe an asserted claim “as a whole,” and rarely do courts do so if they have not been asked. But sometimes the lack of a holistic claim analysis can lead to a shock to the system at trial, at which time one narrowly construed term can steamroller another broader construed term. The result can be the loss of an infringement claim or an invalidity defense. Such losses may or may not be avoidable, but facing the music earlier can save everyone a great deal of time and resources.

G+ Communications v. Samsung: Splitting the FRAND Baby

A recent decision out of the Eastern District of Texas sheds further light on Judge Rodney Gilstrap’s interpretation of a patent owner’s commitment to the European Telecommunications Standards Institute (ETSI) pursuant to ETSI’s Intellectual Property Rights Information Statement and Licensing Declaration (“the ETSI Licensing Declaration”). The decision, however, also raises some questions for SEP owners. A little over a year ago, we considered how French and California law would interpret a patent owner ‘s commitment to ETSI pursuant to the ETSI Licensing Declaration. The in depth analysis can be found here, while a summary version published on IPWatchdog can be found here. At a high level, we considered the issue both from the perspective of performance being possible without implementer engagement, and from the perspective of performance requiring implementer cooperation.

Patent Filings Roundup: ‘Schedule A’ Filings Continue; Uptick in Discretionary Denials

It was an average week for patent filings at the Patent Trial and Appeal Board (PTAB) and a slightly above-average week in district courts, with 62 district court complaints filed and 21 new PTAB petitions—one petition for Post Grant Review (PGR), and 20 for Inter Partes Review (IPR). The PTAB instituted 13 cases; iInstitution was denied in 12 cases and 15 cases settled. In district courts, 62 new cases were filed and 12 cases were terminated.

The Federal Circuit Could Make the ITC a More Appealing Forum

In a pending case, the Federal Circuit is primed to provide much-needed clarity on the economic prong of the domestic industry requirement at the United States International Trade Commission (ITC). In ruling, the court will likely resolve a long-running dispute between individual commissioners regarding how to apply the so-called “mere importer” test when determining whether the domestic industry requirement is met. If the complainant, Lashify, prevails, it could make the ITC a more appealing forum for patent infringement suits involving entities that have under-utilized the ITC, including inventors, universities, and start-ups. The case at issue is Lashify, Inc. v. ITC, No. 23-1245.

Liquidia Urges SCOTUS to Restore Preclusive Effect to PTAB Final Written Decisions

Last week, biopharmaceutical company Liquidia Technologies filed a petition for writ of certiorari with the U.S. Supreme Court to appeal a Federal Circuit ruling that affirmed induced infringement findings against Liquidia following the patent at issue being invalidated at the Patent Trial and Appeal Board (PTAB). In the petition, Liquidia argues that two previous Supreme Court rulings lead to a result contrary to the Federal Circuit’s determination that the invalidation of patent claims at the PTAB do not have preclusive effect on infringement litigation pending an appeal of the PTAB’s decision.