Inter partes review (IPR) offers parties an expedited opportunity to challenge the validity of a patent outside of court. But, as one challenger recently learned the hard way, it’s critical that arguments against patentability be raised at the proper time.
Federal Circuit rejects narrow approach to relation back doctrine The U.S. Court of Appeals for the Federal Circuit, the appellate court that hears all patent-related appeals, recently revived an infringement lawsuit based on the relation back doctrine. The court found the trial court’s application of the doctrine, which resulted in the case being dismissed because of the statute of limitations, “overly restrictive.”
The strength of a company’s intellectual property portfolio often drives the value of corporate transactions. Regardless of whether you are the acquisition target or the buyer in a transaction involving IP, the due diligence process should be designed to reveal the value of the intangible assets—patents, trademarks, copyrights, and trade secrets. IP due diligence should ideally be conducted at the onset of negotiations. This not only allows a more reasoned value of the IP to be determined, but also enables proactive corrective action if any legal concerns are identified that may otherwise affect its valuation.
The U.S. Federal Circuit Court of Appeals, the court that hears all patent-related appeals, continues to wield the so-called Alice test to knock down patents for abstract ideas. As part of one such decision, the court explained that abstract ideas aren’t patent-eligible in the absence of an inventive concept that makes a claim “significantly more” than just the abstract idea — and the underlying abstract idea can’t provide that inventive concept.
When a party challenging a patent’s validity alleges that multiple prior references made the invention obvious, it may need to show that someone would have been motivated to combine those references into the invention. However, in a recent case, the U.S. Court of Appeals for the Federal Circuit found that no motivation to combine is required where a secondary reference is used only to explain the primary reference.
Circumstantial evidence seals induced patent infringement liability It may seem apparent to patentees when someone is inducing third parties to infringe their patents, but it’s not always easy to prove in a court of law. The U.S. Court of Appeals for the Federal Circuit, which hears all patent-related appeals, recently provided a welcome reminder that sometimes circumstantial evidence can go a long way. The court also weighed in on the proper calculation of lump-sum reasonable royalty damages.
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