A Pre-Institution Merger May Prevent Inter Partes Review Challenges

Summary: The Court of Appeals for the Federal Circuit (“Federal Circuit”) recently addressed the issue of privity relationships and the inter partes review (“IPR”) institution time bar set forth in 35 U.S.C. § 315(b) in Power Integrations, Inc. v. Semiconductor Components Industries, No. 2018-1607 (Fed. Cir. June 13, 2019).  The Federal Circuit held that privity and …

Design-Around to Patented Technology Requiring Several Months for Production May Not Qualify as an Available Noninfringing Alternative in a Patent Infringement Damages Determination

Summary:  A finding of infringement may result in an award of actual damages or a reasonable royalty to a patent owner.  To be entitled to actual damages, the patent owner must at least prove the absence of acceptable noninfringing alternatives.  Even if the accused infringer did not have an acceptable noninfringing alternative on the market …

Federal Circuit Suggests Infringement May Be Found Under the Doctrine of Equivalents Only in Exceptional Cases

SUMMARY:  A recent decision from the Federal Circuit examined the application of the doctrine of equivalents in an infringement suit relating to biological products.  In particular, the Federal Circuit stated that the doctrine only applies in exceptional cases, thereby suggesting a limitation of the application of the doctrine. In Amgen Inc. v. Sandoz Inc., No. …

Failure to Conduct an Adequate Pre-Suit Investigation May Lead to an Award of Fees in Exceptional Cases

SUMMARY:  A court may grant a prevailing party’s motion for attorney’s fees in exceptional cases in which the court determines that the non-prevailing party failed to conduct an adequate pre-suit investigation.  In particular, a court may grant a prevailing party’s motion for attorney’s fees in cases in which the non-prevailing party failed to examine an …

Dority & Manning Hosts Annual AIPLA Women in IP Global Networking Event

Dority & Manning was proud to be a part of the 12th Annual Women in IP Global Networking Event held on April 4th, 2019.  The AIPLA provides an opportunity for women in IP to connect internationally by joining many sub-events together with a conference call held by AIPLA hosts. Allison Richmond, a Dority & Manning …

Patent Exhaustion May Not Protect Parties Upstream of an Initial Authorized Sale of a Patented Product

SUMMARY: Patent exhaustion can protect parties downstream of an initial authorized sale of a patented product in the chain of commerce but may not protect parties upstream of the sale.  In this respect, when a retailer is granted a license from a patent holder to sell an otherwise infringing product, any upstream parties, such as …

Recently Formed “Precedential Opinion Panel” of the USPTO Issues First Decision, Addresses Joinder Rules and the One Year Time Bar for Petitioning for Inter Partes Review

The U.S. Patent and Trademark Office (“USPTO”) recently created a Precedential Opinion Panel (“Panel”) to establish “binding agency authority” for “issues of exceptional importance.” United States Patent and Trademark Office, Patent Trial and Appeal Board, Standard Operating Procedure 2 (Revision 10) (Sept. 20, 2018), available at https://www.uspto.gov/sites/default/files/documents/SOP2%20R10%20FINAL.pdf, at 1-3 (last viewed March 19, 2019).  These …

Supreme Court Resolves Circuit Split Holding That Registration by the Copyright Office is a Prerequisite to a Civil Action for Infringement

The United States Supreme Court recently clarified a significant issue of copyright law in Fourth Estate Public Benefit Corp. v. Wall-Street.com, LLC, No. 17-571 (Mar. 4, 2019), settling any dispute concerning when copyright owners may sue for infringement.  Copyright protection exists “in original works of authorship fixed in any tangible medium of expression.” 17 U.S.C. …

Questions of Inventorship and Pre-AIA Pitfalls: A Patent-Holder’s Earlier-Filed Patent May Anticipate A Later-Filed Patent Application When the Inventors Differ

Summary: A patent-holder’s own pre-AIA patent may be anticipatory prior art, which invalidates a patent that issued from a later-filed patent application, under pre-AIA 35 U.S.C. § 102(e) if the inventors are not the same in both patents. When an invention is developed by a team, apportioning credit can be difficult.  Nonetheless, the inventors, applicants, or …

Allison Richmond and Seth Jones Elected Principals

Dority & Manning is proud to announce the election of Allison L. Richmond and Seth E. Jones as Principals of the firm. Allison and Seth have been practicing intellectual property law with Dority & Manning since 2011. Seth specializes in strategic patent portfolio management and has extensive experience in drafting and prosecuting both U.S. and …