Sydney E. McDermott
Subscribe to Sydney E. McDermott's PostsSydney McDermott is a member of the Intellectual Property Practice Group. Read Sydney McDermott's full bio.
Pre-Markman Claim Construction Is OK, Within Limits
By Sydney E. McDermott on Oct 31, 2024
Posted In Patents
In an appeal stemming from the denial of a preliminary injunction and dismissal of the complaint, the US Court of Appeals for the Federal Circuit clarified its precedent and explained that a district court may construe claims at the motion to dismiss Rule 12(b)(6) stage, but only to the extent necessary to decide the motion....
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No Need to Call for Backup at the PTAB (Sometimes)
By Sydney E. McDermott on Oct 24, 2024
Posted In America Invents Act
The US Patent & Trademark Office (PTO) published a final rule entitled, Expanding Opportunities to Appear Before the Patent Trial & Appeal Board; 89 Fed. Reg. 82172 (Oct. 10, 2024). The new rule, set to take effect on November 12, 2024, will apply to America Invents Act (AIA) proceedings, which, until now, have required that...
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No Matter How You Slice and Dice It, Conclusory Evidence Can’t Support Entire Market Value Damages
By Sydney E. McDermott on Oct 10, 2024
Posted In Patents
The US Court of Appeals for the Federal Circuit concluded that the entire market value rule was not applicable where conclusory expert testimony was the only evidence that a product’s infringing features drove consumer demand, and therefore reversed. Provisur Techs., Inc. v. Weber, Inc., Case No. 23-1438 (Fed. Cir. Oct. 2, 2024) (Moore, C.J.; Taranto,...
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When Can Same Claim Limitation Have Different Meanings? When It’s Functional, Of Course
By Sydney E. McDermott on Sep 26, 2024
Posted In Patents
Addressing for the first time whether a functional limitation must carry the same meaning in all claims, the US Court of Appeals for the Federal Circuit determined that it need not, vacating a district court decision to the contrary. Vascular Sol. LLC v. Medtronic, Inc., Case No. 2024-1398 (Fed. Cir. Sept. 16, 2024) (Moore, Prost,...
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Beware Equitable Doctrine of Issue Preclusion in Multiparty, Multivenue Patent Campaigns
By Sydney E. McDermott on Aug 1, 2024
Posted In Patents
Addressing for the first time whether an invalidity order merges with a voluntary dismissal for purposes of finality, the US Court of Appeals for the Federal Circuit held that an interlocutory order merges with the final dismissal, rendering the interlocutory order final for purposes of issue preclusion. Koss Corp. v. Bose Corp., Case No. 22-2090...
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Credibility at Issue? Court May Compel Party Representative to Appear In Person
By Sydney E. McDermott on Jul 25, 2024
Posted In Patents
Addressing for the first time whether a district court can compel a witness to appear in person for testimony involving fraud on the court, the US Court of Appeals for the Federal Circuit affirmed the district court’s determination that it could require an in-person appearance of the sole corporate representative to make a credibility determination....
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How Close Are They? PTO Looking for “Significant Relationship” Between Sequential IPR Petitioners
By Sydney E. McDermott on May 9, 2024
Posted In Patents
Addressing the issue of whether to discretionally deny a petition for inter partes review (IPR) under the General Plastics factors when there is no “significant relationship” between the petitioners, the Director of the US Patent & Trademark Office (PTO) vacated the Patent Trial & Appeal Board’s decision denying institution. Videndum Prod. Sol., Inc. v. Rotolight...
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Is Evidence of All Claimed Elements in Prior Art Enough? Not Without Motivation to Combine
By Sydney E. McDermott on Apr 4, 2024
Posted In Patents
The US Court of Appeals for the Federal Circuit reversed a Patent Trial & Appeal Board obviousness decision, finding that disclosure in the prior art of all recited claim elements across multiple references, without more, does not establish obviousness unless there is evidence of a motivation to combine. Virtek Vision Int’l ULC v. Assembly Guidance...
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Same Product in Different Packaging May Constitute Separate Market for Antitrust Purposes
By Sydney E. McDermott on Mar 28, 2024
Posted In Antitrust, Patents
Addressing an issue of first impression, the US Court of Appeals for the Second Circuit concluded that two medications that contain the same ingredients but are packaged in different forms constitute separate markets for purposes of assessing antitrust violations. Regeneron Pharm., Inc. v. Novartis Pharma AG, Case No. 22-0427 (2d Cir. Mar. 18, 2024) (Parker,...
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Stay in the Know: Informational Message Is Not a Source Identifier
By Sydney E. McDermott on Feb 1, 2024
Posted In Trademarks
Addressing whether the mark EVERYBODY VS. RACISM was registrable, the US Court of Appeals for the Federal Circuit affirmed the Trademark Trial & Appeal Board’s final refusal to register the mark because it failed to function as a source identifier. In re: GO & Assoc., LLC, Case No. 22-1961 (Fed. Cir. Nov. 13, 2023) (nonprecedential)...
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