Book

Patents and the Federal Circuit, Thirteenth Edition, with 2018 Supplement

The most complete commentary available on the state of patent law. This monumental reference places federal patent law decisions, both high-profile and less-celebrated, into an analytical framework that demonstrates their relevance and impact. It details the ever-changing issues and developments in substantive patent law, infringement litigation, and procedure.

 

 

 


Description

This monumental reference deals with both the high-profile cases and the “uncelebrated decisions” that tend to slip under the radar and fits them into an analytical framework that reveals their true significance. Patents and the Federal Circuit addresses ever-changing issues and developments in substantive patent law, infringement litigation, and procedure. The authors distill the opinions issued by the primary source of governing law on patents, providing convenient, one-source access to controlling case law.

The new Thirteenth Edition adds discussion of the following topics:

  • The Supreme Court’s decision in SCA Hygiene Products Aktiebolag v. First Quality Baby Products, LLC that laches does not bar damages for patent infringement where the infringement occurred within the 6-year limitations period.

  • The Federal Circuit’s en banc decision in Medicines Co. v. Hospira, Inc. regarding the scope of a commercial sale for purposes of the on sale bar.

  • The Supreme Court’s holdings in Impression Products v. Lexmark that single-use/no-sale provisions are unenforceable against third parties and that an authorized sale outside the United States exhausts U.S. patent rights.

  • Venue following the Supreme Court’s decision in TC Heartland v. Kraft that a corporation resides for purposes of venue only in the state of incorporation.

  • Liability for infringement of multi-component devices following the Supreme Court’s decision in Promega Corp. v. Life Technologies Corp.

  • Operation of the so-called “patent dance” under the Biologics Price Competition and Innovation Act (BPCIA), including discussion of the Supreme Court’s decision in Sandoz Inc. v. Amgen Inc. and the Federal Circuit’s decision in Amgen Inc. v. Apotex Inc.

  • The Federal Circuit’s recognition of an independent patent agent privilege that attaches to some communications between a client and a non-attorney patent agent in In re Queen’s University at Kingston.

  • Design patent damages in light of the Supreme Court’s holding in Apple Inc. v. Samsung Electronics Co. that the damages award for a design patent need not be the entire product sold but instead may be only a component of that product.
This edition also provides new and expanded discussion on the Doctrine of Equivalents and substantial equivalence injury, the relationship between vitiation and the all elements rule, post-Festo rebuttals to prosecution history estoppel, and procedural considerations related to the Doctrine of Equivalents.
 

The Thirteenth Edition also incorporates the following post-Alice decisions on patentability under 35 U.S.C. § 101:

  • Rapid Litig. Mgmt. Ltd. v. CellzDirect, Inc.

  • Enfish, LLC v. Microsoft Corp.,
  • Intellectual Ventures I LLC v. Symantec Corp.

  • AMDOCS (Israel) Ltd. V. Openet Telecom, Inc.

  • Bascom Glob. Internet v. AT&T Mobility, LLC

  • Affinity Labs v. Directv

The new edition adds a number of cases examining claim construction post-Teva v. Sandoz and enhanced damages post-Halo and Stryker, and incorporates many other important Federal Circuit patent law decisions.


The2018 Supplement adds Federal Circuit decisions through the end of 2017, plus selected important 2018 Supreme Court decisions, including Oil States Energy Services v. Greene’s Energy Group, upholding the Federal Circuit’s ruling on the constitutionality of inter partes review (IPR) proceedings and ruling that IPR does not violate either Article III’s grant of judicial power or the Seventh Amendment’s right to a jury trial; SAS Institute, Inc. v. Iancu, in which the Court reversed the Federal Circuit and ruled that the AIA requires the USPTO Director to consider every challenged claim once it decides to institute an IPR proceeding; and WesternGeco LLC v. ION Geophysical Corp., in which the Court held that a patentee may recover damages for lost profits attributable to foreign sales under 35 U.S.C. §271(f).  

Key new Federal Circuit decisions include:

  • Clarification in In re Cray Inc. on analysis for venue after TC Heartland

  • In re Aqua Products, the Federal Circuit’s 148-page sharply-divided series of five plurality opinions on the standard for motions to amend in post-AIA proceedings before the PTAB

  • The decision on inequitable conduct in Regeneron Pharmaceuticals, Inc. v. Merus N.V., holding that litigation misconduct can support an inference of specific intent to deceive

  • The on sale bar decision in Helsinn Healthcare v. Teva Pharmaceuticals, on which the Supreme Court granted certiorari

  • The en banc decision in Nantkwest, Inc. v. Iancu, holding that the USPTO may not recover its attorney fees as “expenses” when a patent applicant appeals to the district court under 35 U.S.C. §145

  • The latest additions to the court’s evolving jurisprudence on patent eligibility under 35 U.S.C. §101, including

    • Cleveland Clinic Found. v. True Health Diagnostics, LLC

    • Credit Acceptance Corp. v. Westlake Services

    • Mentor Graphics Corp. v. EVE-USA, Inc.

    • RecogniCorp, LLC v. Nintendo Co., Ltd.

    • Return Mail, Inc. v. United States Postal Service

    • Two-Way Media, Ltd. v. Comcast Cable Communications, LLC

Authors

Bloomberg BNA authors and editors are practicing professionals with insider perspectives and real-life experience. Learn more about this book’s authors and editors.
Robert L. Harmon (deceased) was a partner with the Chicago intellectual property law firm of Brinks Gilson & Lione (Brinks) for 33 years, where he specialized in patent litigation.
Cynthia A. Homan is a partner at Brinks where she specializes in patent litigation, with an emphasis on brief writing. She has been involved in many appeals, most in the Federal Circuit, and is past chair of the firm’s Appellate Practice Group.
Laura A. Lydigsen is a partner at Brinks where she focuses her practice on Hatch-Waxman litigation and appellate practice. She currently serves as chair of the firm’s Appellate Practice Group through which she enjoys working on Federal Circuit appeals across a broad range of technologies. 

Contents

View full tables of contents and read the book’s preface or introduction.