The Supreme Court in Impression Products v. Lexmark reversed the CAFC decision regarding the scope of the patent exhaustion doctrine, holding that patent rights are exhausted completely for an authorized sale of a patented article to a purchaser, regardless of whether this occurs in the US or internationally. In other words, all patent rights on a patented article are exhausted upon its sale anywhere in the world. In reaching this conclusion, the Court noted that "nothing in the text or history of the Patent Act shows that Congress intended to confine that borderless common law principle to domestic sales", and rather, patent exhaustion "remains an unwritten limit on the scope of the patentee’s monopoly." For the full case and opinion --

Monday, 22 May 2017 18:42

Supreme Court Limits Patent Venue

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Today, in TC Heartland LLC v. Kraft Food Brands Group LLC, the Supreme Court unanimously reversed a long standing practice which permitted venue over domestic corporations. Traditionally, venue was permissible wherever the court had personal jurisdiction over the defendant corporation. Going forward, however, "residence" as defined in the patent venue statute in 28 U.S.C. § 1400(b) will only refer to the State of incorporation. For the full opinion --

President Trump recently signed Executive Order 13785, instructing the Commissioner of U.S. Customs and Border Protection (CPB) to develop and implement a strategy and plan for combating violations of United States trade and customs laws. The CPB is instructed to "take all appropriate steps, including rulemaking if necessary", to ensure that all intellectual property rights holders are notified of any information to determine whether there has been an intellectual property infringement or a violation of a US trade law. This order mirrors authority already provided by the 2015 amendment to the Tariff Act of 1930 (19 USC 1628a).

Tuesday, 21 March 2017 17:20

SCOTUS Rejects Laches Defense in Patent Case

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Today, the Supreme Court in SCA Hygiene Prods. v. First Quality Baby Prods. (2017) held that the defense of laches cannot be invoked in patent cases to prevent legal damages within the 6-year statutory limitation set forth by 35 U.S.C. 286. In the overwhelming majority opinion authored by Justice Alito, the Court reiterated that laches is a judicial doctrine designed as an equitable relief, where there is no statute of limitations enumerated by law, or in other words, that laches is "a gap-filling doctrine, and where there is a statute of limitations, there is no gap to fill", but rather, "applying laches within a limitations period specified by Congress would give judges a 'legislation overriding' role that is beyond the Judiciary's power." For the full opinion --

In a drastic reversal, the Supreme Court in Life Tech. v. Promega Corp. decided to limit the scope of infringement under 35 U.S.C. 271(f)(1). 271(f)(1) provides for infringement for exporting "all or a substantial portion of the components of a patented invention". The Court ruled that the "supply of a single component of a multicomponent invention for manufacture abroad does not give rise to 271(f)(1) liability".

In a recent Federal Circuit opinion in Personal Web Technologies LLC v. Apple Inc., the court reiterated that a determination of patent invalidity based on 35 U.S.C. 103 "obviousness" requires not only a mere explanation that a person of ordinary skill could combine the cited prior art references, but must also explain how he or she would do so. On this basis, the lower PTAB decision was vacated and remanded, noting that the case lacked “a clear, evidence-supported account of the contemplated workings of the combination” to adequately explain and support the conclusion that a relevant skilled artisan would have been motivated to make the combination and reasonably expect success in doing so.

The U.S. District Court Northern District of California has updated its local patent rules. The latest local rules were approved on January 17, 2017 and becomes effective immediately, and can be found at A redline version showing the changes is also available. Notably, damage contentions at section 3-8 is now required for any party asserting infringement no later than 50 days of invalidity contentions. Civil local rule 3-15 has also been amended to require the disclosure of non-party interested entities or persons funding the prosecution of any claim or counterclaim.

The U.S. Department of  Justice and the Federal Trade Commission (FTC) jointly issued an updated Antitrust Guidelines for the Licensing of Intellectual Property. This update modernizes the guidelines originally issued in 1995, and describes how the agencies will evaluate the competitive effects in licensing agreements which involve patents, copyrights, trade secrets, and general know-how.

Tuesday, 06 December 2016 21:00

Supreme Court Reverses $400m Verdict in Apple v. Samsung

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Today, in Samsung v. Apple, the Supreme Court reversed the $400 million verdict Apple won against Samsung over certain elements of Apple's iPhone design. In an unanimous decision authored by Justice Sotomayor, the Court threw out the earlier verdict of the Federal Circuit, holding that the lower court erred when it ordered Samsung to pay damages equal to its entire profit from smartphones with infringing design elements. 

Saturday, 03 December 2016 22:13

Supreme Court Grants Cert. in Patent Exhaustion Case

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The Supreme Court has recently granted certiorari on the issue of patent exhaustion, in Impression Products, Inc. v. Lexmark Int., Inc., Docket No. 15-1189. Patent exhaustion is a doctrine which holds that the initial authorized sale of a patented item terminates all patent rights to that particular item thereafter. Two questions are presented in this case, regarding both domestic and international exhaustion.

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