McDermott Will & Emery
Subscribe to McDermott Will & Emery's PostsGame Reset: Extrinsic Evidence Can’t Limit Claim Scope Beyond Scope Based on Unambiguous Intrinsic Evidence
By McDermott Will & Emery on Apr 7, 2022
Posted In Patents
The US Court of Appeals for the Federal Circuit reversed a district court’s grant of summary judgment of noninfringement after concluding that the district court erred by relying on expert testimony to construe a claim term in a manner not contemplated by the intrinsic evidence. Genuine Enabling Tech. LLC v. Nintendo Co., Ltd., et al.,...
Continue Reading
Bargained-Away Rights to File for IPR May Not Be Recovered
By McDermott Will & Emery on Feb 17, 2022
Posted In Patents
In a precedential opinion, the US Court of Appeals for the Federal Circuit reversed a district court’s denial of a plaintiff’s requested injunction seeking to force a patent challenger to abandon its petitions for inter partes review (IPR). Nippon Shinyaku Co. Ltd. v. Sarepta Therapeutics, Inc., Case No. 2021-2369 (Fed. Cir. Feb. 8, 2022) (Newman,...
Continue Reading
Can’t Overturn Jury Verdicts Based on Reasonable Inferences, but Broad Injunction Is Nonstarter Even for Willfully Misappropriated Trade Secrets
By McDermott Will & Emery on Jan 6, 2022
Posted In Trade Secrets
In a rare appellate trade secret opinion, the US Court of Appeals for the Eleventh Circuit affirmed a district court’s denial of a defendant’s request for a new trial on liability and its refusal of the plaintiff’s requested injunction. It also reversed in part the district court’s denial of judgment as a matter of law...
Continue Reading
No More Bites at the Apple: Imminent and Non-Speculative Standing Still Required
By McDermott Will & Emery on Nov 18, 2021
Posted In Patents
The US Court of Appeals for the Federal Circuit reiterated that a patent challenger did not have Article III appellate standing to obtain review of a final Patent Trial & Appeal Board (PTAB) ruling because the underlying district court proceedings had been dismissed with prejudice after the parties reached a settlement and license agreement. Apple...
Continue Reading
Update: Absent Explicit Statutory Language? The American Rule Still Applies
By McDermott Will & Emery on Oct 21, 2021
Posted In Patents
The US Court of Appeals for the Federal Circuit updated its earlier opinion to remove language ascribing motive to a prolific inventor’s actions before the US Patent & Trademark Office (PTO). Hyatt v. Hirshfeld, Case Nos. 020-2321; -2325 (Fed. Cir. Aug. 18, 2021) (modified Oct. 12, 2021) (Hughes, J.) The original opinion noted that Gilbert...
Continue Reading
Bascom Cannot Save Your Claims if Your Own Patent Says You Used Known Technology
By McDermott Will & Emery on Sep 9, 2021
Posted In Patents
The US Court of Appeals for the Federal Circuit affirmed a district court determination that claims of several patents were patent ineligible under 35 U.S.C. § 101 because they did not recite an innovation with sufficient specificity to constitute an improvement to computer functionality. Universal Secure Registry LLC v. Apple Inc., Case No. 20-2044 (Fed....
Continue Reading
Absent Explicit Statutory Language? The American Rule Still Applies
By McDermott Will & Emery on Sep 2, 2021
Posted In Patents
The US Court of Appeals for the Federal Circuit vacated a district court’s award of attorney’s fees under the prevailing party rule but affirmed the district court’s denial of the US Patent & Trademark Office’s (PTO) request for expert witness fees under 35 U.S.C. § 145. Hyatt v. Hirshfeld, Case Nos. 20-2321;–2325 (Fed. Cir. Aug....
Continue Reading
Without More, Mere Automation is Abstract—Not Construing Interchangeable Terms Doesn’t Give Them the Cold Shoulder
By McDermott Will & Emery on Aug 19, 2021
Posted In Patents
In the latest development relating to patent eligibility of content-based identifier patents, the US Court of Appeals for the Federal Circuit affirmed decisions finding patent claims ineligible under 35 U.S.C. § 101. PersonalWeb Techs. LLC v. Google LLC, YouTube, LLC, Case No. 20-1543 (Fed. Cir. Aug. 12, 2021) (Prost, J.) (consolidating PersonalWeb Techs. LLC v....
Continue Reading
As Due Process Recognizes, it’s Hard to Shoot at a Moving Claim Construction Target
By McDermott Will & Emery on Aug 5, 2021
Posted In Patents
The US Court of Appeals for the Federal Circuit vacated several Patent Trial & Appeal Board (PTAB) decisions as violating due process and the Administrative Procedure Act (APA), referencing the parties’ inability to respond to the PTAB’s sua sponte construction of a term on which the parties had previously agreed. Qualcomm Inc. v. Intel Corp.,...
Continue Reading
What You Say Can and Will be Used Against You – Prosecution History and Prior Infringement Arguments
By McDermott Will & Emery on Jun 10, 2021
Posted In Patents
Noting patent owner’s prior litigation statements, the US Court of Appeals for the Federal Circuit upheld a district court ruling that a clear and unmistakable disclaimer in the prosecution history affected claim construction of an asserted patent. SpeedTrack, Inc. v. Amazon.com, Inc., Case No. 20-1573 (Fed. Cir. June 3, 2021) (Prost, J.) In 2009, SpeedTrack...
Continue Reading
