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Home - Merchant & Gould P.C.

For over a century, Merchant &amp; Gould has earned a reputation as exceptional trial attorneys. Our litigators represent companies in the U.S. and globally, leading the way in a world that thrives on technology and innovation.

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Our trial attorneys litigate for clients ranging from Fortune 100 companies to start-up entrepreneurs. We try cases on all intellectual property issues, including patent, trademark, and copyright infringement, brand protection, trade secret misappropriation, and contract disputes, and from virtually every industry, including automotive, biotechnology, computer technology, semiconductor, and software. We also have deep experience as lead counsel in <a href="https://www.merchantgould.com/industries/pharmaceuticals/">Hatch-Waxman Act litigation</a> and in <a href="https://www.merchantgould.com/practices/itc-section-337-investigations/">Section 337 investigations before the International Trade Commission (ITC)</a>.

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Merchant has over 50 litigation professionals&nbsp;and 125 years of experience solely in intellectual property.&nbsp;Our focus on IP means everyone on our trial teams, from our paralegals and support staff to senior trial counsel, has extensive IP trial and litigation experience. These structural efficiencies, coupled with our cost structure, mean we provide top IP litigation representation at a high level of value. This includes venues at the state court, federal district court, the Court of Appeals for the Federal Circuit, and the ITC.

As an intellectual property boutique, we have the technical strength in house to support every matter. Attorneys from across our firm frequently collaborate on matters to support our clients with the highest level of expertise. Our attorneys bring an inherent global perspective and use creative strategies designed to expand on the potential of new ideas and to capitalize on opportunities that exceed our clients’ toughest expectations.

Denver

Los Angeles

Partner

James W. Beard

New York

Jonathan Berschadsky

Atlanta

Jeffrey D. Blake

Washington, D.C. Area

Of Counsel

B. Jefferson Boggs

Minneapolis

Associate

Bridget Carmichael

Eric R. Chad

Joseph W. Dubis, Ph.D.

Michael A. Erbele

Ryan J. Fletcher, Ph.D.

Kristen M. Souther

Peter A. Gergely

Joshua  A. Hartman

Ariel O. Howe

Thomas R. Johnson

Scott  W. Johnston

Lindsay Jones

Gabrielle  L. Kiefer

Heather J. Kliebenstein

Andrew O. Larsen, Ph.D.

Thomas  J. Leach

River E. Lord

Knoxville

Ian  G. McFarland

Litigation Paralegal

Jeremy L. Miller

Elisabeth “Bette”  S. Muirhead

John P. Olson

William D. Schultz

Peter S. Selness

Rhett A. Sexton

Scott P. Shaw

Christopher  J. Sorenson

Taylor R. Stemler

Paige  S. Stradley

Sophia I. Vogeler

Partner & Chief Diversity Officer

John T. Winemiller, Ph.D.

Tong Wu

Zachary W. Zadow

Anthony  R. Zeuli

Leighton Zhao

Rachel Zimmerman Scobie

Elizabeth Harwood Pierce

John “Jack” A. Clifford

Erin E. Herdeman

Attorney

Sarah ML Wilkening, Ph.D.

Benjamin L. Dooley

Alana L. LeFebvre

Katherine F. K. Mares

Marra M. Clay

Eric W. Schweibenz

Donald R. McPhail

Alexander B. Englehart

John S. Kern

Shih-Ching (Evi) Li

Law Clerk

Edward J. Choi

Mitchell J. Gross

Melissa A. Quirin

John F. Presper

Technical Advisor/Patent Agent

Jianping (James) Wu

Hanjun Liu

James Beard joins as partner in Litigation Practice Group.



Merchant &amp; Gould is pleased to announce that James Beard joined the firm’s Denver office as a partner on Jan. 10.



As an IP trial lawyer, James brings more than 10 years of experience to the Litigation Practice Group, representing high-technology household names and Fortune 500 companies in computer hardware and software, electronics, consumer products, biotechnology and medical device industries.&nbsp; He works on all stages of litigation, from general advice and pre-litigation counseling through complex discovery, motion practice, trials, and appeals.&nbsp; Prior to joining Merchant &amp; Gould, James worked at Sherman &amp; Howard in Denver, as well as Kirkland &amp; Ellis in San Francisco.



“James is an excellent addition to our Litigation Practice Group, as we continue expand our capabilities in Denver and across the firm,” said Chris Leonard, Managing Partner and CEO of Merchant &amp; Gould.&nbsp; “He has experience in some of Colorado’s most innovative industries, spanning a range of technologies. We are excited to have him join us.”

Merchant & Gould Hires Attorney, as Denver Office Grows

Merchant &amp; Gould is pleased to announce that the following attorneys have been included in The Best Lawyers in America: Ones to Watch 2021 Edition. 



These awards are recognitions given to attorneys who are earlier in their careers for outstanding professional excellence in private practice in the United States. Our &#8220;Ones to Watch&#8221; recipients typically have been in practice for 5-9 years.



Our methodology for determining these awards remains the same as it did when Best Lawyers was founded almost 40 years ago: peer-review. Lawyers are the best resource to provide feedback on the caliber of work performed by their peers.



MINNEAPOLIS, MN Joseph W. Dubis Ph.D.&nbsp;– Intellectual Property Law



Paige S. Stradley&nbsp;– Litigation &#8211; Intellectual Property



Michael A. Erbele&nbsp;&nbsp;– Technology Law

Merchant & Gould Attorneys Named by Best Lawyers as the Best Lawyers in America: Ones to Watch 2021 Edition

Merchant &amp; Gould was ranked in five National Tier and six Metropolitan categories in the 2022 edition of U.S. News – Best Lawyers® “Best Law Firms,” recognized for professional excellence with consistently impressive ratings from clients and peers.



Achieving a high ranking is a special distinction that marks a unique combination of excellence and breadth of experience. Ranked firms, presented in three tiers, are recognized on a national and regional-based scale. Firms that received a tier designation reflect the highest level of respect a firm can earn among other leading lawyers and clients from the same communities and practice areas. Merchant &amp; Gould ranked in the following National and Metropolitan categories:



<h2 class="wp-block-heading">National Tier 1</h2>



Patent Law



<h2 class="wp-block-heading">National Tier 2</h2>



Litigation &#8211; Intellectual Property Litigation &#8211; Patent



<h2 class="wp-block-heading">National Tier 3</h2>



Copyright Law Trademark Law



<h2 class="wp-block-heading">Metropolitan Tier 1 &#8212; Minneapolis</h2>



Copyright Law Litigation &#8211; Intellectual Property Litigation &#8211; Patent Patent Law Trademark Law



<h2 class="wp-block-heading">Metropolitan Tier 3 – Atlanta</h2>



Patent Law



To be eligible for a ranking, a firm must first have a lawyer recognized in The Best Lawyers in America®, which recognizes 6 percent of lawyers practicing in the United States, and also receive consensus on some of the following factors: firm-wide work, the size and coverage of a firm in a specific area, historical analysis, research surrounding the firm’s overall scope and areas of expertise.



The 2022 rankings incorporate more than 8.2 million evaluations of more than 115,000 individual leading lawyers from more than 22,000 firms. More than 2,000 firms received a national law firm ranking this year.

Merchant & Gould Recognized on U.S. News – Best Lawyers® “Best Law Firms” List with Rankings in 11 National and Metropolitan Categories

Merchant &amp; Gould is pleased to announce that Minneapolis partner <a href="/people/rachel-zimmerman-scobie/">Rachel Zimmerman Scobie</a> has been named leader and chair of the firm’s Litigation Practice Group, effective Jan. 1, 2022. She replaces <a href="/people/heather-j-kliebenstein/">Heather Kliebenstein</a> who chaired the Litigation Practice for five years.



Rachel, who is now in her 20th year with the firm, will guide attorneys across Merchant &amp; Gould’s seven offices in the firm’s robust and diverse litigation work. With more than 50 litigators and litigation support team members, the firm’s preeminent litigation team has been representing U.S. and global clients in patent infringement, trademark infringement, and other complex intellectual property disputes for nearly a century.



“Rachel’s experience, deep thinking and insight will steer the Litigation Practice Group toward successful outcomes for our clients and help guide the firm’s next phase of growth. She represents our seasoned litigation team with confident strength and knowledge,” said Christopher J. Leonard, Managing Director and CEO of Merchant &amp; Gould. “Our primary goal is to help our clients reach their objectives and get back to business, and Rachel’s leadership and commitment will help us do just that.” 



Rachel is an experienced, first-chair trial lawyer who has handled all aspects of complex intellectual property disputes from investigation and preparation of the complaint through trial, post-trial, and appeal. She also has significant experience handling appellate-level disputes, a practice to which she brings valuable experience as a former clerk for U.S. Court of Appeals Judge James B. Loken. Rachel has been responsible for matters in various state and federal courts and agencies throughout the United States, and in arbitration.&nbsp;



Leading up to her role as chair of the Litigation Practice Group, Rachel has been involved with several other firm committees. &nbsp;Among other roles, she has served as a chair of the Recruiting and Retention Committee, the Appellate Group, and the Diversity, Equity and Inclusion (DEI) Task Force, and has served on the Technology Committee.



Congratulations, Rachel!

Rachel Zimmerman Scobie Named Chair of Merchant & Gould’s Litigation Practice Group

Merchant &amp; Gould is pleased to announce that <a href="/people/james-w-beard/">James W. Beard</a>, a Denver partner, and <a href="/people/joseph-w-dubis/">Joe Dubis</a>, a Minneapolis associate, have been named Litigation Paralegal Co-Supervisors, effective Jan. 1, 2022. They replace <a href="/people/william-d-schultz/">Will Schultz</a> who served as Supervisor for more than five years. 



James and Joe will manage the firm’s Litigation Paralegals across Merchant &amp; Gould’s seven offices and oversee their work on depositions, witness preparation, exhibits, court preparation and research, as well as reviewing docketing and case file management procedures. &nbsp;They will also coordinate communication with and development of the group, helping the team as it implements new technologies.&nbsp; With more than 50 litigators and litigation support team members, the firm’s Litigation Practice Group has extensive IP trial and litigation experience.&nbsp;&nbsp;



“In their co-supervisor roles, James and Joe combine their litigation knowledge with their attention to detail and management skills to supervise this very important paralegal team with the Litigation Practice Group. Together, they bring their leadership and insight to the team,” said Christopher J. Leonard, Managing Director and CEO of Merchant &amp; Gould.



While his practice involves all facets of intellectual property law, James focuses on patent, copyright, and trademark and trade dress litigation for clients from a diverse range of industries. He works in all stages of litigation, from general advice and counseling to complex discovery, trials and appeals.



Joe practices all areas of intellectual property litigation proceedings including patent, copyright, and trademark litigation; appellate work; and post grant proceedings. Joseph’s motivation to become a lawyer was partly to help bridge the gap between inventors, scientists, and developers and the intellectual property protection they deserve. Since beginning as a litigation associate, Joe has developed extensive skills in the field of copyright disgorgement remedies.



Congratulations, James and Joe!

James Beard and Joe Dubis Named Litigation Paralegal Co-Supervisors

Responds to business and legal issues regarding third-party copying and infringement



Merchant &amp; Gould has formalized the launch of a business consulting group, the M&amp;G Integrator™ Program, offering product and service companies a new way to protect their brands in the fast-paced online marketplace. The group’s business-minded approach merges Merchant &amp; Gould’s deep-rooted IP strategies with its proprietary, patent-pending InnovaShield Brand Protection Index for a new way of practicing this type of IP law, expanding the firm’s capabilities at a critical time when third-party infringement is increasing rapidly and companies are eager to mitigate risk.



The M&amp;G Integrator Program complements the firm’s Internet Cybersecurity &amp; E-Commerce (ICE) Practice; serves clients in every industry; and balances timely business strategies with a critical legal lens. As a global law firm that has focused on intellectual property and technology law for more than 120 years, Merchant &amp; Gould has deep experience that cuts across all technology fields. Merchant &amp; Gould is uniquely structured and experienced to pioneer this solution and risk-assessing index within the industry.



“We are in a global economy with infringement issues that have always been there; but that have recently been exposed by the pandemic’s accelerated reliance on online marketplaces and by the rapid growth of Web3, including blockchain technology, NFTs, and the metaverse platform.  More than ever, it’s time to deal with these issues, assess risk, and understand what can be done,” said <a href="/people/william-d-schultz/">William D. Schultz</a>, partner in Merchant &amp; Gould’s Minneapolis office and leader of the M&amp;G Integrator Program.



Using Merchant &amp; Gould’s patent-pending InnovaShield Brand Protection Index, the M&amp;G Integrator Program quantifies a company’s risk and creates a strategic roadmap to address that risk. Visual analyses and reports establish a customized plan that addresses and helps overcome specific risks in the most cost-effective, efficient and consumer-driven manner.&nbsp; The ultimate goal is to give clients the broadest coverage of protection for their brands and, most importantly, for their consumer customers.



“Risk impacts businesses in many ways: in the products and services you develop; business partners you choose; and the distribution channels you use. We become part of a client’s team, bridging the gap between research and development, marketing, management, distribution and legal counsel, to help identify and mitigate the impact of risk in every way,” added Schultz, who is also the co-inventor of Merchant &amp; Gould’s patent-pending InnovaShield Brand Protection Index, as well as personal Web3 patents that relate to smart contract-verification software in the NFT space and digital-story collaboration. “While no risk can be eliminated completely, it can be improved with a tailored and strategic approach from a team who deeply understands the complexity – and who knows how to &nbsp;shield innovation from third-party infringers aiming to steal a company’s investments.”



Merchant &amp; Gould’s specialized Minneapolis team will steer the M&amp;G Integrator Program, while working with attorneys across the firm’s seven offices and tapping into the firm’s unique mix of IP, online and business experience.&nbsp;



<h2 class="wp-block-heading">About InnovaShield Brand Protection Index</h2>



The InnovaShield Brand Protection Index is calculated, based on the following effective equation: 



InnovaShield Brand Protection Index = Area of Projection – Risk.



Coverage comes from four factor areas: 1) intellectual property protection; 2) enforcement; 3) policies and programs; and 4) strategic coordination.  Similarly, risk depends on what, where, why, and how a company is selling or offering its products or services. Merchant &amp; Gould’s proprietary algorithm drives the inquiry, analysis and diagnosis.



<figure class="wp-block-image size-large"><img loading="lazy" decoding="async" width="1024" height="250" src="https://admin.merchantgould.com/wp-content/uploads/2023/03/integrator-graphics-1024x250.png" alt="integrator-graphics" class="wp-image-21161" srcset="https://admin.merchantgould.com/wp-content/uploads/2023/03/integrator-graphics-1024x250.png 1024w, https://admin.merchantgould.com/wp-content/uploads/2023/03/integrator-graphics-300x73.png 300w, https://admin.merchantgould.com/wp-content/uploads/2023/03/integrator-graphics-768x188.png 768w, https://admin.merchantgould.com/wp-content/uploads/2023/03/integrator-graphics.png 1920w" sizes="(max-width: 1024px) 100vw, 1024px" /></figure>



<figure class="wp-block-table"><table><tbody><tr><td>
<ul>
<li>Question driven</li>
<li>Accessible user interface</li>
</ul>
</td><td>
<ul>
<li>Patent-pending software</li>
<li>Deep industry experience</li>
</ul>
</td><td>
<ul>
<li>Customized report</li>
<li>Tangible recommendations</li>
<li>Trajectory hypotheticals</li>
</ul>
</td></tr></tbody></table></figure>

Merchant & Gould Launches Business Consulting Group, Advising Clients Across Industries on Risk Mitigation and Protection

CAFC Designates Informational Matter Doctrine Decision Precedential

CAFC Reverses PTAB’s Printed Publication Decision

Last week, the U.S. Court of Appeals for the Fourth Circuit issued a precedential decision in <a href="https://www.ca4.uscourts.gov/opinions/211168.P.pdf">Sony Music Entertainment v. Cox Communications, Inc., No. 21-1168 (Feb. 20, 2024)</a>, affirming Cox’s liability for contributory copyright infringement but reversing a vicarious infringement verdict, vacating a $1&nbsp;billion statutory damages award, and remanding for a new trial on damages.



The Fourth Circuit previously determined that Cox, an internet service provider, could be held liable for its subscribers’ infringement between 2013 and 2014 because it failed to implement a sufficient anti-piracy program as required under the Digital Millennium Copyright Act’s safe harbor provision. BMG Rts. Mgmt. (US) LLC v. Cox Commc’ns, Inc., 881 F.3d 293 (4th Cir. 2018). Cox received more than 160,000 infringement notices from Plaintiffs’ representative but terminated only 32&nbsp;subscribers under its Acceptable Use Policy. Back in the trial court, a jury found Cox willfully liable for vicarious and contributory infringement of 10,017 copyrighted works and awarded statutory damages of roughly $100,000&nbsp;per work, totaling $1&nbsp;billion for both theories combined. Cox appealed.



The Fourth Circuit affirmed the contributory infringement verdict. The Court explained that substantial evidence supported a determination that Cox continued to provide the internet service necessary for online infringement to certain repeat infringers despite a substantial certainty that those subscribers would continue infringing Plaintiffs’ copyrights.



However, the Court reversed the jury’s finding of vicarious infringement because the evidence failed to show that Cox directly profited from its subscribers’ infringement. The Court explained that the price of Cox’s monthly fee depended on the amount of accessible data, not on the nature of the data use. Thus, while Cox benefitted by continuing to collect fees from repeat infringers, it did not have a direct financial interest in their infringement because the fee remained static regardless of subscribers’ online activities. The Court noted that the relatively data-intensive nature of the infringing conduct did not show that any infringer paid for more data specifically to infringe because many legitimate online activities are also data-intensive.



The Court vacated the combined statutory damages award and remanded for a new trial on damages. The jury calculated a single award considering the circumstances underlying both theories. The Court concluded that the erroneous finding that Cox directly benefitted from the infringement likely influenced the jury’s exercise of its wide discretion necessitating a new trial on damages limited to contributory infringement.

4th Circuit Vacates and Remands $1 Billion Copyright Damages Award

Merchant &amp; Gould is pleased to announce that Atlanta partner <a href="https://www.merchantgould.com/people/jeffrey-d-blake/">Jeffrey D. Blake</a> has been named co-chair of the firm’s <a href="https://www.merchantgould.com/practices/litigation/">Litigation Practice Group</a>, effective November 1, 2023. In this new role, Jeff joins Rachel Zimmerman Scobie, who has been chairing and leading the litigation group since January 1, 2022.



Jeff, who is now in his 12th year with the firm, will help guide Merchant &amp; Gould’s experienced team of trial attorneys, who litigate on behalf of clients ranging from Fortune 100 companies to start-up entrepreneurs. With almost 50 attorneys and litigation support team members, the firm’s preeminent litigation team has 115 years of experience trying cases on a full range of intellectual property issues, including patent infringement, trademark infringement, copyright infringement, trade secret misappropriation, and contract disputes.



More than ever, as the Litigation Practice Group continues to expand, a co-leadership arrangement is well-timed for guiding the firm and its premier clients. Together, Rachel and Jeff demonstrate a well-balanced leadership team in this fast-growing practice group.



“Jeff and I look forward to working together to build upon the Litigation Practice Group’s long and successful history of trying and litigating intellectual property cases,” said Rachel. “Jeff’s extensive trial experience and keen insight will help position the group for continued success protecting the technological innovations of and defending against IP claims against our clients.”



Jeff’s practice involves all aspects of intellectual property litigation and counseling. His experience includes representation of clients in all manner of technologies, including microprocessor hardware and software, semiconductor circuitry, network security, residential construction products, commercial wire and cable products, telephony, and automotive airbag deployment software. Jeff also represents his clients extensively in inter partes review (IPR) proceedings. In addition, Jeff has litigated multiple copyright infringement actions, negotiated the licensing of patent portfolios, and provided product clearance evaluations and opinions.



Congratulations, Jeff!

Jeffrey D. Blake Named Co-Chair of Merchant & Gould’s Litigation Practice Group

Last week, the U.S. Court of Appeals for the Federal Circuit issued a precedential opinion in <a href="https://cafc.uscourts.gov/opinions-orders/22-1391.OPINION.2-26-2024_2276014.pdf">Freshub, Inc. v. Amazon.com, Inc., No. 22-1391 (Feb. 26, 2024)</a>, affirming the district court’s judgment of noninfringement and no inequitable conduct.



Freshub sued Amazon.com and several of its subsidiaries for infringing Freshub’s patents on voice-processing technology. Freshub asserted that Amazon’s consumer devices, such as the Amazon Echo, infringed the asserted claims when used to create and maintain a shopping list associated with the user. After trial, the jury returned a verdict of noninfringement of all asserted claims. Freshub’s post-trial motion for judgment as a matter of law was denied, as was its motion for a new trial. Amazon had asserted an affirmative defense of inequitable conduct, alleging a petition to revive the parent application following its abandonment falsely stated that the abandonment was unintentional when it was in fact intentional. The district court held a bench trial and concluded Amazon had failed to prove inequitable conduct because it had not offered clear and convincing evidence of the falsity of the representation or intent to deceive. Freshub appealed and Amazon cross-appealed.



The Federal Circuit affirmed. On Freshub’s argument for judgment as a matter of law, the Court concluded that substantial evidence supported the jury’s verdict based on the claimed requirement that the system “identify an item corresponding to the text” and “add the identified item to a list.” Noting the claim element was not construed, the Court concluded that a reasonable understanding of the “identify an item” language is that it refers to a specific purchasable item. The Court explained that there was evidence in the record that the Amazon Alexa shopping list feature is programmed to add words to the list whether or not there exists a purchasable item corresponding to the user’s words. Therefore, a reasonable jury could have found noninfringement on that basis. On Freshub’s argument for a new trial, the Court held the district court did not abuse its discretion in denying the motion because none of the alleged errors rose to the level of requiring a new trial. Finally, on Amazon’s inequitable conduct defense, the Court concluded Amazon had shown no reversible error in the district court’s rejection of the same. The Court explained that, while the evidence presented was susceptible to multiple interpretations, the district court’s finding of no deceptive intent was not clearly erroneous.

CAFC Affirms Judgment that Amazon Shopping List Feature Does Not Infringe

On March 1, 2024, the U.S. District Court for the Southern District of Florida issued an opinion in Earth, Wind &amp; Fire IP, LLC v. Substantial Music Group LLC, 23-20884-CIV-MORENO granting Plaintiff Earth, Wind &amp; Fire IP’s motion for summary judgment. The ruling found the tribute group’s name “Earth, Wind &amp; Fire Legacy Reunion” to be deceptive and misleading.



Earth, Wind &amp; Fire’s hit song “Shining Star” reached number 1 on Billboard’s Hot 100 in 1975. The band had six other hits in the top 10. Earth, Wind &amp; Fire has continued to tour under a license with Plaintiff Earth, Wind &amp; Fire IP, a holding company controlled by band founder Maurice White’s sons. Plaintiff owns the trademark rights to the trademark EARTH WIND &amp; FIRE.



The dispute began when promoters Substantial Music Group LLC and Stellar Communications, Inc. formed a tribute band using the names “Earth Wind &amp; Fire Legacy Reunion” and “The Legacy Reunion of Earth, Wind &amp; Fire.” The promoters used the original band’s “Phoenix” logo mark as part of their promotions. The tribute band included one-time Earth, Wind &amp; Fire guitarist, Richard Smith.



In 2019, Plaintiff demanded that the promoters stop use of the band name and logo. In response the tribute band’s name was changed to “Legacy Reunion of Earth Wind &amp; Fire Alumni.” Over Plaintiff’s protest, Defendants continued to use the name, which led to the lawsuit.



Both sides moved for summary judgment. Plaintiff argued the promoters were liable for trademark infringement, false designation of origin, and false advertising under the Lanham Act. The promoters argued use of the EARTH WIND &amp; FIRE mark was fair use under the nominative fair use doctrine and Plaintiff’s claims were barred by equitable defenses.



The Court granted Plaintiff’s motion, holding that the trademark was strong, that the tribute band’s name was “quite similar” to the trademark, that the services were similar. The Court rejected the promoters’ fair use defense. In assessing three prongs of nominative fair use, the Court found the original band’s name was not “readily identifiable” without use of the trademark, a factor in the promoters’ favor. The Court also found in the promoters’ favor that the trademark was reasonably necessary to use to identify the original band’s services. The promoters failed, however, to establish that their use would not suggest sponsorship by the trademark owner. The Court also rejected promoters’ other equitable defenses.



Tags:

Earth, Wind & Fire Band Prevails in Trademark Suit Against Tribute Band

Merchant &amp; Gould P.C., a national technology and trial law firm, is pleased to announce a crucial victory for our clients TYC Brother Co., Ltd. and Genera Corp. before the U.S. International Trade Commission (ITC). In a pair of investigations concerning design patents related to automotive lamps, the ITC found no violation of section 337 by TYC Brother and Genera based on Complainants Hyundai’s and Kia’s failure to satisfy the ITC’s domestic industry requirement.



Merchant and its co-counsel Holland Law LLP were retained to defend TYC Brother and Genera against twin complaints filed with the ITC by automotive manufacturers Hyundai and Kia. The complaints asserted a combined 41 design patents against TYC Brother and Genera’s replacement headlights and taillights and sought orders that would have stopped all imports and domestic sales of those products.



An early evidentiary hearing was ordered under the ITC&#8217;s early disposition pilot program to determine whether the complainants satisfied the ITC’s domestic industry requirement. These investigations are the only ones to date for which the pilot program has been used.



Merchant identified numerous flaws in the complainants’ domestic industry evidence and analysis and developed a comprehensive record supporting our clients&#8217; positions. Following the ALJ’s initial determination, Merchant obtained full review by the ITC and submitted extensive briefing.



After considerable deliberations, the ITC agreed with Merchant, concluding that the complainants failed to satisfy the domestic industry requirement as to all 41 asserted patents. As a result, the ITC terminated the investigations with findings of no violation by TYC Brother and Genera, enabling their accused lamps to remain available to U.S. consumers, securing their access to high-value replacement parts.



&#8220;We are thrilled with the ITC&#8217;s ruling in favor of our clients, TYC Brother Co., Ltd. and Genera Corp. From the outset, we were confident in our case and in the merits of our clients&#8217; position. This outcome underscores the importance of thorough domestic industry analysis in section 337 investigations. And it is a significant win, both for the Respondents and for U.S. consumers who will continue to have access to high-quality, affordable automotive parts,&#8221; said Josh Hartman, Lead Counsel at Merchant &amp; Gould.&nbsp;

ITC Rules in Favor of TYC Brother Co., Ltd., and Genera Corp., Represented by Merchant & Gould

Recently, the U.S. Court of Appeals for the Federal Circuit issued an opinion in Maxell, Ltd. v. Amperex Technology Ltd., No. 2023-1194 (March 6, 2024), reversing a claim construction ruling by Judge Albright of the Western District of Texas. Maxell owns U.S. Patent No. 9,077,035 (the ’035 patent), directed to rechargeable lithium-ion batteries. Maxell filed an infringement lawsuit against Amperex, a Chinese manufacturer of lithium-ion batteries. In response, Amperex asserted that claim 1 of the ’035 patent was invalid as indefinite.



The claim at issue requires at least two lithium-containing transition metal oxides, represented by formulas including a transition metal element M1. The relevant claim limitations read:



<ol type="1">
<li>“M1&nbsp;represents at least one transition metal element selected from Co, Ni and Mn.”</li>
</ol>



<ol type="1" start="2">
<li>“Wherein the content of Co in the transition metal M1&nbsp;of the formulae (1) and (2) is from 30% by mole to 100% by mole.”</li>
</ol>



Following claim construction, Judge Albright’s Markman order found claim 1 to be indefinite because “the plain language of [claim 1] recites a contradiction.” That is: “[t]he first part of the claim recites a Markush group where [cobalt] is not necessarily required to be in the claimed compound while the second part of the claim recites that [cobalt] is necessarily required. For an element to simultaneously be optional and required is a contradiction on its face.” Judge Albright entered partial final judgment on claim 1 in favor of Amperex. Maxell appealed.



The Federal Circuit reversed and remanded. The Court found that claim 1 was not indefinite because the limitations in question were consistent. The Court held “[i]f there are two requirements, and it is possible to meet both, there is no contradiction.” The Court determined that limitation 2 narrowed limitation 1 rather than contradicting it. The first limitation states one requirement, i.e., a transition metal containing cobalt, nickel, or manganese. The second limitation states that the transition metal element must contain 30% to 100% cobalt by mole. Thus, it was completely possible for a transition metal element to meet both requirements.



The Court further noted that narrowing does not imply contradiction when it is done through dependent claims. Relying on Amperex’s concession at oral argument, the Court determined that there would be no contradiction if limitation 2 was written as a dependent claim. Accordingly, the Court reversed Judge Albright’s indefiniteness finding and remanded.

Federal Circuit Reverses Texas District Court’s Indefiniteness Finding

On March 18, 2024, the U.S. District Court for the District of Delaware issued an opinion in <a href="https://www.ded.uscourts.gov/sites/ded/files/opinions/21-1338.pdf">Puma Biotechnology, Inc v. AstraZeneca Pharmaceuticals LP et al, 1:21-cv-1338-MFK</a> granting AstraZeneca&#8217;s motion for pre-issuance damages.



The parties are pharmaceutical companies that commercialize drugs to treat cancer and other illnesses. The suit is trying to block sales of AstraZeneca&#8217;s drug Tagrisso (osimertinib) to treat lung cancer, which AstraZeneca has been selling since 2015. Wyeth has an exclusive license with Puma for developing and commercializing Wyeth&#8217;s drug Nerlynx (neratinib) for treating breast cancer and is currently in clinical trials for treating lung cancer. The patents-in-suit (10,603,314 and 10,596,162) claim a method of treating a certain form of non-small cell lung cancer.



AstraZeneca moved for summary judgement on a variety of issues, including standing, invalidity, non-infringement, and pre-issuance damages, which the court denied with the exception of the pre-issuance damages.



Wyeth argued that a narrow exception exists to the general rule that patent owners can only collect damages for patent infringement that occurs during a patent term. The proposed exception comes from the &#8220;provisional rights&#8221; codified at 35 U.S.C. § 154(d), where a patent owner has the right to obtain a reasonable royalty from:



any person who, during the period beginning on the date of publication of the application for such patent . . . and ending on the date the patent is issued:



(A)(i) makes, uses, offers for sale, or sells in the United States the invention as claimed in the published patent application or imports such an invention into the United States; or



(ii) if the invention as claimed in the published patent application is a process, uses, offers for sale, or sells in the United States or imports into the United States products made by that process as claimed in the published patent application. &nbsp;



&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp; 35 U.S.C. § 154(d)(1) (emphasis added).



The parties recognized and agreed that § 154(d) does not explicitly include a provision incorporating the induced infringement language of § 271(b); however, Wyeth argued that section 154(d) does not need to expressly mention induced infringement. The court disagreed based on the plain text of § 271(b) being directed to induced infringement of a patent while § 154(d) only extends rights to certain conduct specifically enumerated and not to all post-issuance patent rights. Therefore, the statute does not authorize pre-issuance damages for induced infringement.

Third Circuit Affirms No Pre-Issuance Damages for Induced Infringement

Last week, the U.S. Court of Appeals for the Federal Circuit issued an opinion in <a href="https://cafc.uscourts.gov/opinions-orders/22-1998.OPINION.3-27-2024_2292085.pdf">Virtek Vision International ULC v. Assembly Guidance Systems, Inc. (d/b/a Aligned Vision), Nos. 2022-1998, -2022 (Mar. 27, 2024)</a>, overturning a Patent Trial and Appeal Board determination that certain claims of Virtek’s challenged patent, were unpatentable, while affirming the patentability of other claims.



Virtek’s challenged patent focuses on aligning a laser projector with a work surface, purportedly improving efficiency. Aligned Vision challenged the patent’s validity through Inter Partes Review on four grounds. Claim 1 of the patent involves identifying reflective targets on a work surface in a three-dimensional coordinate system. Keitler and Bridges, references cited for grounds 1 and 3, lack this feature, relying instead on determining the angular direction of targets. Aligned Vision cited Briggs for the 3D coordinate system, and the Board agreed that the combination rendered the challenged claims obvious because Briggs mentions both use of 3D coordinates and angular directions. As for grounds 2 and 4, the Board held there was no motivation to combine the asserted references and, therefore, the challenged claims were not unpatentable on those grounds. Virtek appealed and Aligned Vision cross-appealed.



The Federal Circuit reversed as to the appeal and affirmed as to the cross-appeal. On the appeal of grounds 1 and 3, the Court explained that mere acknowledgment of different options in prior art does not justify their combination without a reason for combining them. The Court held the Board erred in relying on the fact that both measurement systems were known in the prior art because that fact alone does not suffice to explain why a skilled artisan would have been motivated to substitute one for the other. The Court also highlighted the absence of arguments in the petition articulating an alleged motivation, such as common sense or market pressure.



On the cross-appeal addressing grounds 2 and 4, the Court rejected Aligned Vision’s assertion that the Board erred in finding no motivation to combine. The Court noted that, although on appeal Aligned Vision argued the motivation to combine the references is a matter of “common sense,” Aligned Vision did not argue or present evidence concerning common sense to the Board. The Court held that the arguments Aligned Vision made to the Board, which focused on the fact that the claim elements were known in the prior art, were insufficient.&nbsp;

CAFC Addresses Inadequate Motivation to Combine Prior Art References

<h2 class="wp-block-heading">Five new hires bring decades of experience, leadership and innovation</h2>



Merchant &amp; Gould welcomes Daniel J. Pereira, Ph.D., John S. Kern, Eric W. Schweibenz, and Donald R. McPhail, as Partners and Alexander B. Englehart, as Of Counsel in its Washington D.C. Area office. The new additions will expand Merchant &amp; Gould’s capabilities in handling International Trade Commission (ITC) cases, complex IP litigation, post-grant proceedings, patent prosecution, and strategic IP portfolio management, as well as increase its presence in Japan, China, Taiwan and Korea.



“We are continually investing in serving our client base worldwide, and this group will deepen our bench nationally and increase our existing presence in Japan, China, Taiwan and Korea,” said Heather Kliebenstein, Managing Director and Partner at Merchant &amp; Gould. “Each of these experienced attorneys brings the right cross-culture experience and technical background that we want at Merchant &amp; Gould.”



All five hires look forward to continuing their work in the D.C. area, serving clients worldwide. Merchant &amp; Gould’s long-standing reputation for stability, creative legal solutions, collaboration and technologically advanced systems attracted the latest hires.&nbsp;



“Transitioning to Merchant &amp; Gould was the right move for us and our clients. We are excited to join such a dynamic firm that has superior technical strength, advanced internal systems and processes, extensive trial experience, and breadth of knowledge in all areas of intellectual property,” said Pereira. Dr. Pereira most recently served as the Managing Partner and previously led the Chemical Practice Group at Oblon. Mr. Kern and Mr. Schweibenz formerly led the Electrical/Mechanical and Litigation Practice Groups, respectively.



One of the oldest full-service intellectual property and trial law firms in America, Merchant &amp; Gould evolves with technology, just like its client base. Through harnessing and pioneering advanced legal solutions, they have established themselves as an indispensable partner in delivering exceptional legal guidance and service to their clients.



“When we look to add new talent to our team at Merchant &amp; Gould, we want to find people who have the right mindset — forward-thinking, collaborative and client-focused,” Kliebenstein shared. “Each of these attorneys embodies those values and will carry our firm’s legacy forward.”

Strategic Power Move: Merchant & Gould Lures Quintet of Highly-Experienced Attorneys to Supercharge DC Office and Accelerate Asia Expansion

Last week, the U.S. Court of Appeals for the Federal Circuit issued a precedential opinion in <a href="https://cafc.uscourts.gov/opinions-orders/22-1905.OPINION.4-12-2024_2300689.pdf">Luv n&#8217; care, Ltd. v. Laurain, No. 2022-1905 (Apr. 12, 2024)</a>, affirming the district court’s judgment that unclean hands barred recovery on all counterclaims.



Luv n’ care, Ltd. and Nouri Hakim (collectively “LNC”) sued Lindsey Laurain and Eazy-PZ, LLC (collectively “EZPZ”) for acts of unfair competition and sought declaratory judgment that EZPZ’s U.S. Design Patent No. D745,327 and U.S. Patent No. 9,462,903 are invalid, unenforceable, and not infringed. EZPZ filed counterclaims for infringement of the ‘327 and ‘903 patents as well as copyright, trademark, and trade dress infringement, acts of unfair competition, and unjust enrichment. The district court found that the doctrine of unclean hands barred EZPZ from seeking relief on all counterclaims. &nbsp;



The Federal Circuit affirmed. The Court found no clear error in the district court’s finding that EZPZ engaged in unconscionable conduct with respect to its claim of infringement of the ‘903 patent which bore a necessary and immediate connection to all EZPZ’s counterclaims. First, the Court held that the record supported the district court’s finding that EZPZ “by deceit and reprehensible conduct attempted to gain an unfair advantage” resulting in “loss of confidence in [EZPZ’s] candor.” EZPZ failed to disclose relevant patent applications related to the ‘903 patent until after close of discovery and dispositive motion practice without providing good faith justification, attempted to prevent LNC from discovering relevant prior art searches, and EZPZ witnesses purposefully gave false testimony.



Second, the Court held that the record supported a finding that EZPZ’s conduct bore an “immediate and necessary” connection to EZPZ’s claim of infringement of the ‘903 patent. One undisclosed patent application was directly relevant to a disputed claim term in the ‘903 patent, the prior art searches may have supported a finding that EZPZ located key references prior to filing the patent application leading to the ‘903 patent, and false testimony by EZPZ witnesses deprived LNC of material information relevant to its litigation strategy.



Finally, the Court held that the record supported a finding that EZPZ’s conduct bore an “immediate and necessary” connection to its remaining counterclaims. The district court held that “[t]he [c]ourt’s loss of confidence in a party’s candor cannot be overcome with respect to other theories of recovery” and the Federal Circuit found no clear error. Accordingly, EZPZ is barred from seeking recovery on all counterclaims.

CAFC Affirms Judgment that Unclean Hands Barred Recovery on all Counterclaims

Last week, the U.S. Court of Appeals for the Second Circuit issued an opinion in <a href="https://ww3.ca2.uscourts.gov/decisions/isysquery/363bbecd-6931-4b1f-8ba4-35e322d251bb/1/doc/23-325_opn.pdf">City of New York v. Henriquez, No. 23-325-cv (April 16, 2024)</a>, vacating the district court’s grant of a preliminary injunction against the Fire Department of New York (“FDNY”).



In 2011-2012, appellant Juan Henriquez, a rescue paramedic with FDNY, began to organize conferences geared toward civilian emergency responders called “Medical Special Operations Conferences” or “MSOC” (collectively, the “marks”). Initially, Henriquez collaborated with FDNY, but by 2018 he asked FDNY to remove references to the marks from its website. In 2019, Henriquez sought federal registration of the marks. While his application was initially rejected because the PTO found the marks merely descriptive, Henriquez ultimately succeeded in obtaining registration in 2020 after attesting he had been using the marks on a substantially exclusive and continuous basis for at least five years.



FDNY, also claiming rights in the marks, asked Henriquez to stop using them in 2019, before eventually bringing suit in the Eastern District of New York to cancel Henriquez’s registration. Henriquez countersued for trademark infringement and sought a preliminary injunction, which the district court granted. FDNY appealed.



On appeal, the Second Circuit held that the district court committed legal error by overestimating the strength of the marks and finding them to be suggestive, rather than descriptive. Because the Court found this legal error was central to the district court’s decision, it held the issuance of the preliminary injunction was an abuse of discretion.



The Court held that the district court made three missteps in evaluating the marks’ strength under the Polaroid factors. First, the district court ignored Henriquez’s own implicit concessions that the marks are descriptive. Second, the district court misunderstood the PTO’s determination. The district court presumed the marks were inherently distinctive, citing the principle that registration without proof of secondary meaning creates such a presumption. Here, however, the PTO determined the marks were merely descriptive, and only registered them after receiving evidence of secondary meaning, so the proper presumption is that they are inherently descriptive with acquired secondary meaning. Finally, the district court failed to properly consider whether the intended audience—prospective MSOC attendees—would consider the marks descriptive. Ultimately, the Court determined the marks are weak and entitled to only “extremely narrow” protection. Because Henriquez did not rely on any other Polaroid factors to defend the preliminary injunction, the Court vacated and remanded.

Second Circuit Vacates Preliminary Injunction in Trademark Case

Recently, the U.S. Court of Appeals for the Federal Circuit issued an opinion in <a href="https://cafc.uscourts.gov/opinions-orders/23-1142.OPINION.4-30-2024_2310031.pdf">Araujo v. Framboise Holdings Inc., No. 2023-1142 (April 30, 2024)</a>, affirming the Trademark Trial and Appeal Board’s refusal to register Araujo’s standard character mark #TODECACHO.



On December 3, 2019, Araujo filed a trademark application to register #TODECACHO as a standard character mark for hair combs. Framboise Holdings, Inc. filed an opposition asserting that Araujo’s mark would likely cause confusion with Framboise’s #TODECACHO design mark. Framboise alleged ownership of its design mark based on prior use of the mark in the United States in connection with various hair products beginning as early as March 24, 2017. Relying on a declaration from the Director of Framboise, the Board held that Framboise had met its burden to establish prior use by a preponderance of the evidence and that the declaration alone was sufficient to prove prior use because it was clear, convincing, and uncontradicted. Finding an earlier priority date for Framboise, the Board found a likelihood of confusion between the two marks, sustained the opposition, and refused registration of Araujo’s mark.



The Federal Circuit affirmed. On appeal, Araujo argued the Board’s finding that Framboise established prior use of the #TODECACHO design mark was not supported by substantial evidence because the Board relied on the testimony of a single interested witness whose declaration comprised merely naked general assertions of prior use. The Court disagreed, holding the Board’s determination that Framboise established its prior use of the #TODECACHO design mark was supported by substantial evidence. The declaration at issue was based on an individual’s personal knowledge and the records maintained by Framboise, provided a list of products and a specific date the design mark was used in connection therewith, and provided representative examples of the mark as displayed on products in stores in the United States. Araujo did not offer any evidence to dispute Framboise’s prior use and declined to depose the Framboise director. The Court concluded that when presented with the employee declaration and nothing to contradict it, a reasonable mind could conclude that Framboise had established its priority date by a preponderance of the evidence.

Federal Circuit Affirms Trademark Board’s Finding of Prior Use Based on Employee Declaration

Last week, the U.S. Supreme Court issued a decision in <a href="https://www.supremecourt.gov/opinions/23pdf/22-1078_4gci.pdf">Warner Chappell Music, Inc., et al. v. Sherman Nealy, et al., No. 22–1078 (May 9, 2024)</a>, holding that damages may be recovered under Copyright Act for conduct occurring greater than three years prior to filing suit.



In 2018, Sherman Nealy sued Warner Chappell Music in the Southern District of Florida for the unauthorized use of music created in the mid-1980s with former collaborator Tony Butler. While Nealy was serving prison terms, Butler entered into a license agreement with Warner Chappell Music for music created by Nealy and Butler, eventually landing it in popular songs by modern artists such as Flo Rida, the Black Eyed Peas, and Kid Sister. &nbsp;



Under the Copyright Act, claims must be brought within three years of accrual. 17 U.S.C. § 507(b). The Eleventh Circuit applies the discovery rule to assessing compliance with the Copyright Act’s statute of limitations. Under the discovery rule, accrual occurs when a claim is discovered or should have been discovered by the exercise of due diligence. Relying on precedent from the Second Circuit, the district court held that even if Nealy’s claims were timely filed under the discovery rule, monetary relief on those claims is “limited” to “the three years prior to the filing” of the action. Nealy appealed, and the Eleventh Circuit reversed, holding that a plaintiff with a timely claim under the discovery rule may obtain “retrospective relief for [an] infringement” even if it “occurr[ed] more than three years before the lawsuit’s filing.”



The Supreme Court granted certiorari to answer the question “[w]hether, under the discovery accrual rule applied by the circuit courts,” a copyright plaintiff “can recover damages for acts that allegedly occurred more than three years before the filing of a lawsuit.” For purposes of deciding the question under review, the Court assumed that, but declined to decide whether, the discovery rule should apply to statute of limitations assessments in copyright actions. On the question under review, the Court affirmed the decision of the Eleventh Circuit, noting that the “time-to-sue prescription” in the Copyright Act establishes no separate time limit for the recovery of damages. The Court further noted that the contrary view espoused by the Second Circuit would gut the efficacy and purpose of the discovery rule by allowing a plaintiff to sue for past infringements while denying them damages.

Supreme Court Upholds Eleventh Circuit’s Rejection of Three-Year Damages Bar on Timely Copyright Claim

This month, the U.S. Court of Appeals for the Federal Circuit issued a precedential opinion in <a href="https://cafc.uscourts.gov/opinions-orders/22-1649.OPINION.5-8-2024_2314572.pdf">Zircon Corp. v. ITC, No. 2022-1649 (May 8, 2024)</a>, affirming the U.S. International Trade Commission’s (“ITC”) final determination of no violation of 19 U.S.C. §&nbsp;1337 (“section 337”) based on Zircon’s failure to satisfy the statute’s domestic industry requirement.



Zircon filed a complaint with the ITC alleging respondents Stanley Black &amp; Decker, Inc. and Black &amp; Decker (U.S.) Inc. infringed three patents related to electronic stud finders, and the ITC instituted an investigation. During the evidentiary hearing before an administrative law judge (“ALJ”), Zircon contended that it satisfied the domestic industry requirement’s economic prong based on U.S. investments related to 53 stud finder products, most of which practiced some but not all of the asserted patents. Zircon further contended that these investments were significant based on the aggregate amount for all 53 products and did not allocate investments to particular products, product groups, or patents. The ALJ found that these aggregated investments precluded analysis of the investments as to each asserted patent, such that Zircon failed to satisfy the domestic industry requirement. The ITC affirmed that finding, and Zircon appealed.



The Federal Circuit affirmed. It observed that section 337 requires proof of a domestic industry based on significant or substantial investment “relating to articles protected by the patent” at issue. 19 U.S.C. §&nbsp;1337(a)(2). The Court explained that under this language and prior precedent, where different products or product groups practice different asserted patents, separate domestic industries must be established for each product or group. The Court distinguished prior cases that concerned products that all practiced the same asserted patents or that predated the 1988 amendments to section 337, which adopted the current statutory language. The Court also concluded that a declaration from Zircon’s executive providing a revenue-based per-patent breakdown was not at issue because Zircon failed to appeal both the ALJ’s decision excluding it and the ITC’s decision finding Zircon abandoned its right to rely on it. Finally, the Court affirmed the ITC’s finding that uncorroborated testimony from the Zircon executive relating to research and development investments related to one asserted patent was unreliable and failed to satisfy the domestic industry requirement as to that patent.

CAFC Affirms ITC’s Finding of No Violation Due to Complainant’s Failure to Satisfy Domestic Industry Requirement

Last week, the U.S. Court of Appeals for the Federal Circuit issued an opinion in <a href="https://cafc.uscourts.gov/opinions-orders/23-1101.OPINION.6-3-2024_2327090.pdf">EcoFactor, Inc. v. Google LLC, 2023-1101 (June 3, 2023)</a>, affirming a judgment of infringement and dismissing three issues raised by Google on appeal.



EcoFactor sued Google alleging that Google’s Nest smart thermostats infringed U.S. Patent No. 8,738,327, which relates to the operation of smart thermostats. The district court denied Google’s motion for summary judgment, which argued that certain claims of the ’327 patent were invalid as directed towards ineligible subject matter. The district court also denied Google’s pretrial motion to exclude the opinion of EcoFactor’s damages expert. After trial, the jury returned a verdict of infringement and awarded damages. The district court denied Google’s post-trial motions for judgment of non-infringement as a matter of law and for a new trial on damages. Google appealed.



The Federal Circuit affirmed. Disposing of Google’s first issue, the Court held that the district court’s denial of summary judgment was not appealable because trial on the merits of the ineligibility issue had been held. Google had not appealed the jury’s verdict that the ’327 patent did not claim ineligible subject matter.



Next, the Court found that the evidence at trial was sufficient to support the jury’s finding that the ’327 patent’s limitation of “receiv[ing] temperature measurements from inside the structure” was met by the accused products. Expert testimony, statements on Google’s webpages, and the accused products’ source code evidenced the products measure temperature inside customer homes, not just inside the thermostat housing, as Google had contended on appeal.



Finally, the Court concluded that a new trial on damages was not warranted, because the opinion of EcoFactor’s expert regarding a hypothetical negotiation was sufficiently reliable. This finding was based on EcoFactor’s expert’s consideration of three EcoFactor license agreements, which provided for a payment of a lump sum amount based on a stated royalty rate—the same royalty rate employed in the expert’s damages calculation—and corroborating testimony of EcoFactor’s CEO. Despite the license agreements pertaining to interrelated EcoFactor patents not at issue, the Court found that EcoFactor’s expert showed the license agreements to be economically comparable to the hypothetical negotiation by citing evidence of market pressures and Google’s profit which could be attributed to the patent at issue. Judge Prost dissented from the majority’s decision on damages, finding EcoFactor’s expert’s method of deriving a royalty rate from the lump-sum licenses unreliable.



Coauthored by Elizabeth Harwood &amp; Emily Threatt.

Federal Circuit Affirms Judgment that Google Smart Thermostat Feature Infringes

Last week, the Federal Circuit issued an opinion in <a href="https://cafc.uscourts.gov/opinions-orders/24-1137.OPINION.6-17-2024_2334858.pdf">Insulet Corp. v. EOFlow, Co., 2024-1137 (June 17, 2024)</a>, reversing and remanding a district court’s grant of a preliminary injunction in a trade secrets case. Insulet, a maker of insulin pump patches, sought a preliminary injunction against competitor EOFlow, alleging misappropriation of trade secrets under the Defend Trade Secrets Act (DTSA). The district court granted the preliminary injunction, broadly enjoining EOFlow from manufacturing, marketing, or selling any product designed, developed, or manufactured using Insulet’s alleged trade secrets. EOFlow appealed.



The Federal Circuit reversed, holding the district court abused its discretion in granting the “extraordinary remedy” of a preliminary injunction. Writing for the panel, Judge Lourie explained that “establishing entitlement to such injunctive relief still requires a showing of the existence of a trade secret and misappropriation, as well as the satisfaction of the usual, established factors justifying the grant of a preliminary injunction.” The Court held the district court failed to properly analyze several key factors.



First, the Court determined that the district court ignored the DTSA’s 3-year statute of limitations in assessing Insulet’s likelihood of success on the merits. The Court noted that “if the statute of limitations for filing a DTSA claim had expired, Insulet’s claims would be time-barred and therefore would have no chance for success.”



Second, the Court determined that the district court failed to identify the trade secret with specificity, explaining that the district court “advanced a hazy grouping of information that the court did not probe with particularity to determine what, if anything, was deserving of trade secret protection.” Further, the district court did not assess whether the alleged trade secrets were ascertainable through public means like reverse engineering or patent disclosures. In addition, the district court failed to evaluate the independent economic value of the purported trade secrets.



Third, the Court found error in the irreparable harm analysis, rejecting the district court’s reliance on a potential acquisition of EOFlow by Medtronic as grounds for irreparable injury. The Court emphasized that generalized fears of larger competitors or theoretical sales remediable by damages do not constitute irreparable harm. While not foreclosing Insulet&#8217;s ability to ultimately succeed on its claims, the Court concluded Insulet had not shown a likelihood of success warranting a preliminary injunction.



Coauthored by Jeffrey Blake &amp; Alara Kucukseyhan.

Federal Circuit Tightens Standards for Trade Secret Preliminary Injunctions

Last week, the U.S. Supreme Court issued an opinion in <a href="https://www.supremecourt.gov/opinions/23pdf/22-451_7m58.pdf">Loper Bright Enterprises v. Raimondo, Case No. 22-451</a>, and <a href="https://www.supremecourt.gov/opinions/23pdf/22-451_7m58.pdf">Relentless&nbsp;v.&nbsp;Department of Commerce, Case No. 22-1219 (June 28, 2024)</a>, overturning Chevron U.S.A. v. Natural Resources Defense Council, Inc., 467 U.S. 837, 2778 (1984), and holding Chevron deference could not be squared with the Administrative Procedure Act (APA).



For 40 years, Chevron required courts to defer to an administrative agency’s interpretation of law when deciding challenges to regulations promulgated by the agency. Under Chevron’s two-step analysis, a court first determined if Congress had spoken clearly about the issue of law presented. If it had, the issue was settled. If it had not, the court must defer to the agency’s interpretation, even if this differed from its own interpretation, so long as it was a “permissible” construction of the law at issue.



Both cases decided last week involved a rule promulgated by the National Marines Fisheries Service (NMFS) interpreting the Magnuson-Stevens Fishery Conservation and Management Act (MSA). The rule required some fishing boats to engage and pay for a government-certified third-party observer when fishing for Atlantic herring. The petitioners claimed the NMFS exceeded its authority under the MSA when it issued the rule. The district court granted summary judgment for the Government, and the Court of Appeals for the D.C. Circuit affirmed, because the NMFS’s interpretation of the MSA was owed deference under Chevron.



The Supreme Court disagreed, holding that statutory interpretation was the province of the judicial branch, not the executive branch. The APA requires the “reviewing court,” not agencies, to “decide all relevant questions of law,” including statutory interpretation. 5 U.S.C § 706. Given this mandate, the Court held, Chevron deference “cannot be reconciled with the APA.” Writing for the 6-3 majority, Chief Justice Roberts explained, “[i]t … makes no sense to speak of a ‘permissible’ interpretation that is not the one the court, applying all relevant interpretive tools, concludes is best.” Writing for the minority, Justice Kagan decried the decision as a massive transfer of power: “It is now ‘the courts (rather than the agency)’ that will wield power when Congress has left an area of interpretive discretion.”



Going forward, courts may still look to agency interpretations for guidance, but they are no longer bound by them. While the decision overrules Chevron, it leaves all statutory interpretations previously decided under the Chevron framework intact.



Coauthored by John Winemiller &amp; Korben Smart.

Supreme Court Overrules Chevron

Recently, the U.S. Court of Appeals for the Federal Circuit issued a precedential decision in <a href="https://cafc.uscourts.gov/opinions-orders/22-2275.OPINION.6-21-2024_2337276.pdf">Beteiro, LLC v. DraftKings Inc. (Jun. 21, 2024)</a>, holding that the asserted patents failed the Alice test on patentable subject matter and were therefore invalid under 35 U.S.C. § 101.



Beteiro’s patents related to methods for facilitating remote gambling and allowing a user to participate in live gambling via a communication device. The asserted claims covered a method for processing remote bets by detecting gambling activity information, generating and transmitting a message to a user, receiving a bet and location message, determining the bet&#8217;s legality based on location, and processing the bet accordingly. Beteiro filed suit against Draft Kings and other defendants based on their provision of mobile gambling and event wagering services. Draft Kings and the other defendants moved to dismiss under Rule 12(b)(6), arguing the asserted patent claims were directed to nonpatentable subject matter. The district court granted the motions. Beteiro appealed.



Reviewing de novo, the Federal Circuit affirmed. The Court found that under the first step of the Alice test the claims were directed to the abstract idea of exchanging information concerning a bet and allowing or disallowing the bet based on the user’s location. Beteiro argued the claims were tied to technological improvements for remote gambling; an argument the Court rejected. The claims, it found, featured several signs of abstractness and broadly recited generic steps using result-focused functional language reflecting fundamental and long-standing economic principles.



The Court also found the patents failed to transform the abstract idea into something more under the second step of Alice because the asserted claims simply described conventional business practices executed by generic computer components. Beteiro contended that its complaint raised a genuine issue as to whether GPS on a mobile phone was conventional technology in 2002, the earliest claimed priority date of the asserted patents. But the patents repeatedly referred to the conventional use of GPS in several types of computers and failed to describe any transformational differences in equipping a mobile phone with GPS. Having found the claims were directed to an abstract idea and that they failed to transform the idea into something more, the Court affirmed the dismissal of Beteiro’s suit.



Coauthored by Ian McFarland &amp; Taylor McCarty.

CAFC Affirms Dismissal for Nonpatentable Subject Matter in DraftKings Suit

Last week, the U.S. Court of Appeals for the Federal Circuit issued an opinion in <a href="https://cafc.uscourts.gov/opinions-orders/24-1324.OPINION.7-12-2024_2349134.pdf">Natera, Inc. v. NeoGenomics Laboratories, Inc. (July 12, 2024)</a>, affirming the U.S. District Court for the Middle District of North Carolina’s grant of a preliminary injunction.



Natera, Inc. (“Natera”) and NeoGenomics Laboratories, Inc. (“NeoGenomics”) are manufacturers of products used for early cancer detection. One method of detection analyzes DNA fragments in the body. Natera owns two patents related to this method, U.S. Patent No. 11,519,035 (“the ’035 Patent”) and U.S. Patent No. 11,530,454 (“the ’454 Patent”) (collectively, the Natera Patents”). Natera’s product, Signatera, is covered by the Natera Patents. NeoGenomics offers a competing product, RaDaR. Both Signatera and RaDaR are “tumor-informed” (as opposed to “tumor-naïve”) tests designed from a patient’s genetic information based on a tissue biopsy of the patient’s tumor.



Natera sued NeoGenomics alleging infringement of the Natera Patents. Natera also moved for a preliminary injunction. The district court granted the preliminary injunction, finding that Natera made the requisite showing, including demonstrating likelihood of success on the merits of its ’035 Patent infringment claim. The preliminary injunction enjoined NeoGenomics from making, using, selling, or offering for sale RaDaR, and from promoting, advertising, marketing, servicing, distributing, or supplying RaDaR. It created a carveout for patients already using RaDaR, in-process or finalized research projects, and clinical trials. NeoGenomics appealed, arguing the district court erred in its (1) treatment of claim construction, (2) obviousness analysis; (3) irreparable harm analysis; and (4) evaluation of the public interest.



The Federal Circuit affirmed. First, the Court determined the district court did not err by evaluating the likelihood of success on infringement before an explicit claim construction. Second, the Court determined the district court did not demand more than is required at the preliminary injunction stage when it rejected NeoGenomics’ obviousness argument, which was supported by only four paragraphs with “no meaningful supporting documentation” or articulated motivation to combine. Third, the Court rejected NeoGenomic’s assertion the district court relied on a categorical rule that irreparable harm exists where the parties are in direct competition. Rather, the district court did not err in relying on Natera’s unwillingness to license the patent, potential lost partnerships, business relationships, and ongoing business, among other factors. Finally, the Court rejected NeoGenomic’s arguments on public interest, which alleged the superior quality of its RaDaR product vis-à-vis Natera’s Signatera product.



Coauthored by Gabrielle Kiefer &amp; Tucker Bender.

Federal Circuit Affirms Grant of Preliminary Injunction Against Cancer-Detection Product

Last week, the U.S. Court of Appeals for the Federal Circuit issued a precedential opinion in <a href="https://cafc.uscourts.gov/opinions-orders/23-1272.OPINION.7-23-2024_2355065.pdf">ZyXEL Communication Corp. v. UNM Rainforest Innovations, No. 2023-1272 (July 22, 2024)</a>, reversing-in-part, affirming-in-part, and remanding for further consideration of UNM’s substitute claims.



ZyXEL initiated an inter partes review proceeding for U.S. Patent No. 8,265,096 (the “’096 Patent”), which is owned by UNM. The claims of the ’096 Patent relate to methods of organizing information being transmitted across time and frequency to “allow simultaneous transmission of data from different users without interference from one [an]other.” In addition to opposing ZyXEL’s arguments, UNM presented substitute claims via a motion to amend, and sought preliminary guidance from the PTAB pursuant to the Motion to Amend Pilot Program. The motion to amend identified written description support for the new limitations but did not address written description support for the original ones. The PTAB issued preliminary guidance identifying this deficiency. UNM filed a reply identifying the written description support for the original limitations.



In a final written decision, the PTAB cancelled all challenged claims on grounds of obviousness except for Claim 8. As to Claim 8, the PTAB found ZyXEL failed to show sufficient motivation to combine the asserted prior art references. The PTAB also granted UNM’s motion to amend. ZyXEL appealed, and UNM cross-appealed.



On ZyXEL’s appeal, the Federal Circuit reversed as to Claim 8 and affirmed the PTAB’s ruling on the motion to amend. Specifically, the Court found the ruling on Claim 8 was not supported by substantial evidence because the motivation to combine was present in the prior art references themselves. As to the substitute claims, the Court rejected ZyXEL’s argument that the PTAB improperly allowed UNM to identify written description support in a reply brief. The Court explained that the very purpose of the MTA Pilot Program is to provide preliminary guidance to patent owners so errors in the original motion may be corrected. Additionally, ZyXEL had failed to establish prejudice. Based on its ruling that Claim 8 is invalid as obvious, however, the Court remanded the matter to the PTAB to determine whether the substitute claims are invalid as obvious on grounds of collateral estoppel or by exercise of the PTAB’s discretion to reassess the issue. On UNM’s cross-appeal, the Court affirmed the PTAB’s ruling that the challenged claims are invalid as obvious.



Coauthored by Marra Clay &amp; Jack Goldberg.

CAFC Affirms PTAB’S Application of USPTO’S Motion to Amend Pilot Program

Last week, the U.S. Court of Appeals for the Federal Circuit issued a precedential opinion in <a href="https://cafc.uscourts.gov/opinions-orders/23-1336.OPINION.7-31-2024_2359524.pdf">Sanho Corp. v. Kaijet Tech. Int’l Ltd., No. 23-1336 (Fed. Cir. 2024)</a>, affirming the PTAB’s decision that a private sale was not a “public disclosure” under 35 U.S.C. § 102(b)(2)(B).



Kaijet Technology International Limited filed a petition for inter partes review challenging as obvious most claims of U.S. Patent No. 10,572,429 owned by Sanho Corporation. Each obviousness combination relied on U.S. Patent Publication No. 2018/0165053 (“Kuo”). Although the effective filing date of Kuo predated the priority date of the ’429 patent, Sanho argued Kuo was not prior art because the inventor of the ’429 patent “publicly disclosed” the relevant subject matter through a private sale prior to the effective filing date of Kuo.



Under 35 U.S.C. § 102(b)(2)(B), a disclosure is not prior art where “the subject matter disclosed had . . . been publicly disclosed by the inventor” prior to the effective filing date of the disclosure. The PTAB concluded the private sale at issue was not a “public disclosure” and found claims 1-6 and 13-17 of the ’429 patent unpatentable as obvious over Kuo. Sanho appealed, contending the phrase “publicly disclosed” incorporates all the same disclosures as §&nbsp;102(a)(1) including “on sale” and “public use.”



On appeal, the Federal Circuit considered “whether a non-confidential but otherwise private sale results in” public disclosure under § 102(b)(2)(B). First, the Court found that according to the plain language of the statute, “publicly disclosed” has a different meaning than “disclosed.” Thus, not all disclosures that fall within § 102(a)(1) are public disclosures and placing an invention “on sale” may result in a disclosure under § 102(a)(1) without constituting a public disclosure under § 102(b)(2)(B). Second, the Court looked to the purpose of the statute finding that, to serve the objectives underlying patent protection, “publicly disclosed” means the invention was made available to the public. Third, the Court found the legislative history supports a finding that an invention must be available to the public to be “publicly disclosed.”



Applying this construction, the Court found the private sale at issue was not a public disclosure because there was no evidence the subject matter of the invention was made available to the public. In fact, there was no evidence the invention was ever manufactured or delivered. Thus, the Board did not err in determining Kuo was prior art.

CAFC Affirms PTAB Decision Holding Private Sale Is Not a “Public Disclosure” Under 35 U.S.C. § 102(b)(2)(B)

Yesterday, the U.S. Court of Appeals for the Federal Circuit issued a precedential opinion in <a href="https://cafc.uscourts.gov/opinions-orders/22-1827.OPINION.8-12-2024_2365402.pdf">Celanese Intl. Corp. v. Intl. Trade Comm’n, No. 22-01827 (August 12, 2024)</a>, which affirmed a finding of the International Trade Commission that the appellant’s asserted patent claims were invalid under the on-sale bar.&nbsp;



In the proceedings below, it was undisputed that Celanese’s patented process was in secret use in Europe before the critical date, and that Celanese had sold products made using the patented process in the United States before the critical date.&nbsp; While the patentee did not dispute that sales of products made using a secret process would preclude patentability, it argued that under the AIA the sales did not trigger the on-sale bar.



Celanese contended that when it enacted the AIA, Congress intended to alter the on-sale bar, based on changes in the text of Section 102 and other AIA sections, and selected portions of the legislative history.&nbsp; As its gating argument, the patentee argued that the use of the phrase “claimed invention” rather than the use of “invention” in the pre-AIA provision indicated a narrower scope to the on-sale bar.&nbsp; The Federal Circuit rejected the argument, finding instead that the addition of the word “claimed” did not support the foundational change advanced by Celanese and represented only a “clerical refinement of terminology.”&nbsp;



The Federal Circuit next rejected Celanese’s suggestion that the grace period for “disclosure” of the invention of Section 102(b)(1) limited Section 102(a) to sales of the patented invention itself, noting that the sales at issue did not fall under the grace period and declining to construe the additional language.&nbsp; Arguments directed to the specific species of infringement and defenses under Sections 271 and 273 were dismissed as presenting “scant merit.”



Celanese’s final argument—that the Senate’s intent to exclude private sales from the on-sale bar was demonstrated in a colloquy from the Senate’s discussion of the bill—fared no better.&nbsp; The Federal Circuit noted that individual legislators’ views do not establish congressional intent, and concluded that pre-AIA precedent left Celanese’s patents invalid based on sales of products made using the patented method.

CAFC Confirms Pre-AIA Precedent Applies to AIA: Patent on Secret Process Invalid Based On Sales of Product

Merchant &amp; Gould is pleased to announce that the following attorneys have been included in&nbsp;The Best Lawyers in America©&nbsp;2025.



Best Lawyers compiles lists of outstanding attorneys by conducting peer-reviewed surveys in which lawyers confidentially evaluate their colleagues. Since lawyers are not permitted to purchase their rankings or pay a fee to participate, a Best Lawyers listing is considered an unbiased honor.



Atlanta, GA



<ul>
<li>Jeffrey D. Blake 
<ul>
<li>Patent Law</li>
</ul>
</li>
</ul>



Minneapolis, MN



<ul>
<li>John A. Clifford 
<ul>
<li>Advertising Law</li>



<li>Litigation &#8211; Intellectual Property</li>



<li>Patent Law</li>



<li>Trademark Law</li>
</ul>
</li>



<li>Andrew S. Ehard 
<ul>
<li>Litigation &#8211; Intellectual Property</li>



<li>Trademark Law</li>
</ul>
</li>



<li>Thomas R. Johnson 
<ul>
<li>Advertising Law</li>



<li>Litigation &#8211; Patent</li>
</ul>
</li>



<li>Scott W. Johnston 
<ul>
<li>Litigation &#8211; Intellectual Property</li>



<li>Trademark Law</li>
</ul>
</li>



<li>Heather J. Kliebenstein 
<ul>
<li>Litigation &#8211; Intellectual Property</li>
</ul>
</li>



<li>Thomas J. Leach 
<ul>
<li>Litigation &#8211; Intellectual Property</li>
</ul>
</li>



<li>Brent E. Routman 
<ul>
<li>Advertising Law</li>
</ul>
</li>



<li>Christopher J. Schulte 
<ul>
<li>Litigation &#8211; Intellectual Property</li>



<li>Litigation &#8211; Patent</li>
</ul>
</li>



<li>William D. Schultz 
<ul>
<li>Litigation &#8211; Intellectual Property</li>
</ul>
</li>



<li>Christopher J. Sorenson 
<ul>
<li>Litigation &#8211; Intellectual Property</li>



<li>Litigation &#8211; Patent</li>
</ul>
</li>



<li>Anthony R. Zeuli 
<ul>
<li>Copyright Law</li>



<li>Litigation &#8211; Intellectual Property</li>



<li>Litigation &#8211; Patent</li>



<li>Patent Law</li>



<li>Trademark Law</li>
</ul>
</li>



<li>Rachel Zimmerman Scobie 
<ul>
<li>Litigation &#8211; Intellectual Property</li>
</ul>
</li>
</ul>



New York, NY



<ul>
<li>Peter A. Gergely 
<ul>
<li>Litigation &#8211; Intellectual Property</li>



<li>Litigation &#8211; Patent</li>
</ul>
</li>
</ul>



Alexandria, VA



<ul>
<li>John S. Kern 
<ul>
<li>Litigation &#8211; Patent</li>



<li>Patent Law</li>
</ul>
</li>



<li>Daniel J. Pereira 
<ul>
<li>Biotechnology and Life Sciences Practice</li>



<li>Patent Law</li>
</ul>
</li>



<li>Eric W. Schweibenz 
<ul>
<li>Patent Law</li>
</ul>
</li>
</ul>

Merchant & Gould Attorneys Recognized by Best Lawyers® in 2025 in America.

Merchant &amp; Gould is pleased to announce that the following attorneys have been included in Best Lawyers in America: Ones to Watch 2025 Edition.



These awards are recognitions given to attorneys who are earlier in their careers for outstanding professional excellence in private practice in the United States. Our &#8220;Ones to Watch&#8221; recipients typically have been in practice for 5-9 years.



Our methodology for determining these awards remains the same as it did when Best Lawyers was founded almost 40 years ago: peer-review. Lawyers are the best resource to provide feedback on the caliber of work performed by their peers.



Minneapolis, MN



<ul>
<li>Joseph W. Dubis Ph.D. 
<ul>
<li>Intellectual Property Law</li>



<li>Litigation &#8211; Intellectual Property</li>
</ul>
</li>



<li>Michael A. Erbele
<ul>
<li>Intellectual Property Law</li>



<li>Litigation &#8211; Patent</li>



<li>Technology Law</li>
</ul>
</li>



<li>Paige S. Stradley 
<ul>
<li>Intellectual Property Law</li>



<li>Litigation &#8211; Intellectual Property</li>
</ul>
</li>
</ul>

Merchant & Gould Attorneys Recognized in the Best Lawyers: Ones to Watch® in America 2025 Edition

Merchant &amp; Gould is pleased to announce that the following attorneys have been included in&nbsp;The Best Lawyers in America©&nbsp;2022.



Best Lawyers&nbsp;compiles lists of outstanding attorneys by conducting peer-reviewed surveys in which lawyers confidentially evaluate their colleagues. Since lawyers are not permitted to purchase their rankings or pay a fee to participate, a&nbsp;Best Lawyers&nbsp;listing is considered an unbiased honor.



Atlanta, GA



<ul>
<li>Jeffery D. Blake
<ul>
<li>Patent Law</li>
</ul>
</li>
</ul>



Minneapolis, MN



<ul>
<li>John A. Clifford
<ul>
<li>Litigation- Intellectual Property</li>



<li>Patent Law</li>



<li>Trademark Law</li>
</ul>
</li>



<li>Andrew S. Ehard
<ul>
<li>Litigation- Intellectual Property</li>



<li>Trademark Law</li>
</ul>
</li>



<li>Scott W. Johnston


<ul>
<li>Litigation- Intellectual Property, </li>
</ul>



<ul>
<li>Trademark Law</li>
</ul>
</li>



<li>Heather J Kliebenstein
<ul>
<li>Litigation- Intellectual Property </li>
</ul>
</li>



<li>Thomas J. Leach
<ul>
<li>Litigation- Intellectual Property</li>
</ul>
</li>



<li>Brent E. Routman
<ul>
<li>Advertising Law</li>
</ul>
</li>



<li>Christopher J. Schulte
<ul>
<li>Litigation &#8211; Intellectual Property</li>



<li>Litigation &#8211; Patent</li>
</ul>
</li>



<li>William D. Schultz
<ul>
<li>Litigation &#8211; Intellectual Property</li>
</ul>
</li>



<li>Christopher J. Sorenson
<ul>
<li>Litigation &#8211; Intellectual Property</li>



<li>Litigation &#8211; Patent</li>
</ul>
</li>



<li>Anthony R. Zeuli
<ul>
<li>Copyright Law</li>



<li>Litigation &#8211; Intellectual Property</li>



<li>Litigation &#8211; Patent</li>



<li>Patent Law</li>



<li>Trademark Law</li>
</ul>
</li>



<li>Rachel Zimmerman Scobie
<ul>
<li>Litigation &#8211; Intellectual Property</li>
</ul>
</li>
</ul>



New York, NY



<ul>
<li>Peter A. Gergely
<ul>
<li>Litigation &#8211; Intellectual Property</li>



<li>Litigation &#8211; Patent</li>
</ul>
</li>
</ul>

Merchant & Gould Attorneys Recognized by Best Lawyers® in 2022 in America.

Merchant &amp; Gould is pleased to announce that the following attorneys have been included in The Best Lawyers in America© 2023.



Best Lawyers&nbsp;compiles lists of outstanding attorneys by conducting peer-reviewed surveys in which lawyers confidentially evaluate their colleagues. Since lawyers are not permitted to purchase their rankings or pay a fee to participate, a&nbsp;Best Lawyers&nbsp;listing is considered an unbiased honor.



Atlanta, GA



<ul>
<li>Jeffery D. Blake
<ul>
<li>Patent Law</li>
</ul>
</li>
</ul>



Minneapolis, MN



<ul>
<li>John A. Clifford
<ul>
<li>Litigation- Intellectual Property</li>



<li>Patent Law</li>



<li>Trademark Law</li>
</ul>
</li>



<li>Andrew S. Ehard
<ul>
<li>Litigation- Intellectual Property</li>



<li>Trademark Law</li>
</ul>
</li>



<li>Scott W. Johnston




<ul>
<li>Litigation- Intellectual Property, </li>
</ul>



<ul>
<li>Trademark Law</li>
</ul>
</li>



<li>Heather J Kliebenstein
<ul>
<li>Litigation- Intellectual Property </li>
</ul>
</li>



<li>Thomas J. Leach
<ul>
<li>Litigation- Intellectual Property</li>
</ul>
</li>



<li>Brent E. Routman
<ul>
<li>Advertising Law</li>
</ul>
</li>



<li>Christopher J. Schulte
<ul>
<li>Litigation &#8211; Intellectual Property</li>



<li>Litigation &#8211; Patent</li>
</ul>
</li>



<li>William D. Schultz
<ul>
<li>Litigation &#8211; Intellectual Property</li>
</ul>
</li>



<li>Christopher J. Sorenson
<ul>
<li>Litigation &#8211; Intellectual Property</li>



<li>Litigation &#8211; Patent</li>
</ul>
</li>



<li>Anthony R. Zeuli
<ul>
<li>Copyright Law</li>



<li>Litigation &#8211; Intellectual Property</li>



<li>Litigation &#8211; Patent</li>



<li>Patent Law</li>



<li>Trademark Law</li>
</ul>
</li>



<li>Rachel Zimmerman Scobie
<ul>
<li>Litigation &#8211; Intellectual Property</li>
</ul>
</li>
</ul>



New York, NY



<ul>
<li>Peter A. Gergely
<ul>
<li>Litigation &#8211; Intellectual Property</li>



<li>Litigation &#8211; Patent</li>
</ul>
</li>
</ul>

Merchant & Gould Attorneys Recognized by Best Lawyers® in 2023 in America.

Merchant &amp; Gould is pleased to announce that the following attorneys have been included in&nbsp;The Best Lawyers in America©&nbsp;2024.



Best Lawyers&nbsp;compiles lists of outstanding attorneys by conducting peer-reviewed surveys in which lawyers confidentially evaluate their colleagues. Since lawyers are not permitted to purchase their rankings or pay a fee to participate, a&nbsp;Best Lawyers&nbsp;listing is considered an unbiased honor.



Atlanta, GA



<ul>
<li>Jeffery D. Blake
<ul>
<li>Patent Law</li>
</ul>
</li>
</ul>



Minneapolis, MN



<ul>
<li>John A. Clifford
<ul>
<li>Litigation- Intellectual Property</li>



<li>Patent Law</li>



<li>Trademark Law</li>
</ul>
</li>



<li>Andrew S. Ehard
<ul>
<li>Litigation- Intellectual Property</li>



<li>Trademark Law</li>
</ul>
</li>



<li>Scott W. Johnston






<ul>
<li>Litigation- Intellectual Property, </li>
</ul>



<ul>
<li>Trademark Law</li>
</ul>
</li>



<li>Thomas R. Johnson
<ul>
<li>Advertising Law</li>
</ul>
</li>



<li>Heather J Kliebenstein
<ul>
<li>Litigation- Intellectual Property </li>
</ul>
</li>



<li>Thomas J. Leach
<ul>
<li>Litigation- Intellectual Property</li>
</ul>
</li>



<li>Brent E. Routman
<ul>
<li>Advertising Law</li>
</ul>
</li>



<li>Christopher J. Schulte
<ul>
<li>Litigation &#8211; Intellectual Property</li>



<li>Litigation &#8211; Patent</li>
</ul>
</li>



<li>William D. Schultz
<ul>
<li>Litigation &#8211; Intellectual Property</li>
</ul>
</li>



<li>Christopher J. Sorenson
<ul>
<li>Litigation &#8211; Intellectual Property</li>



<li>Litigation &#8211; Patent</li>
</ul>
</li>



<li>Anthony R. Zeuli
<ul>
<li>Copyright Law</li>



<li>Litigation &#8211; Intellectual Property</li>



<li>Litigation &#8211; Patent</li>



<li>Patent Law</li>



<li>Trademark Law</li>
</ul>
</li>



<li>Rachel Zimmerman Scobie
<ul>
<li>Litigation &#8211; Intellectual Property</li>
</ul>
</li>
</ul>



New York, NY



<ul>
<li>Peter A. Gergely
<ul>
<li>Litigation &#8211; Intellectual Property</li>



<li>Litigation &#8211; Patent</li>
</ul>
</li>
</ul>

Merchant & Gould Attorneys Recognized by Best Lawyers® in 2024 in America.

Merchant &amp; Gould is pleased to announce that the following attorneys have been included in Best Lawyers in America: Ones to Watch 2022 Edition.



These awards are recognitions given to attorneys who are earlier in their careers for outstanding professional excellence in private practice in the United States. Our &#8220;Ones to Watch&#8221; recipients typically have been in practice for 5-9 years.



Our methodology for determining these awards remains the same as it did when Best Lawyers was founded almost 40 years ago: peer-review. Lawyers are the best resource to provide feedback on the caliber of work performed by their peers.



Minneapolis, MN



<ul>
<li>Joseph W. Dubis Ph.D. 
<ul>
<li>Intellectual Property Law</li>



<li>Litigation &#8211; Intellectual Property</li>
</ul>
</li>



<li>Michael A. Erbele
<ul>
<li>Technology Law</li>
</ul>
</li>



<li>Paige S. Stradley 
<ul>
<li>Intellectual Property Law</li>



<li>Litigation &#8211; Intellectual Property</li>
</ul>
</li>
</ul>

Merchant & Gould Attorneys Recognized in the Best Lawyers: Ones to Watch® in America 2022 Edition

Merchant &amp; Gould is pleased to announce that the following attorneys have been included in Best Lawyers in America: Ones to Watch 2023 Edition.



These awards are recognitions given to attorneys who are earlier in their careers for outstanding professional excellence in private practice in the United States. Our &#8220;Ones to Watch&#8221; recipients typically have been in practice for 5-9 years.



Our methodology for determining these awards remains the same as it did when Best Lawyers was founded almost 40 years ago: peer-review. Lawyers are the best resource to provide feedback on the caliber of work performed by their peers.



Minneapolis, MN



<ul>
<li>Joseph W. Dubis Ph.D. 
<ul>
<li>Intellectual Property Law</li>



<li>Litigation &#8211; Intellectual Property</li>
</ul>
</li>



<li>Michael A. Erbele
<ul>
<li>Technology Law</li>
</ul>
</li>



<li>Paige S. Stradley 
<ul>
<li>Intellectual Property Law</li>



<li>Litigation &#8211; Intellectual Property</li>
</ul>
</li>
</ul>

Merchant & Gould Attorneys Recognized in the Best Lawyers: Ones to Watch® in America 2023 Edition

Last week, the U.S. Court of Appeals for the Federal Circuit issued a precedential opinion in <a href="https://cafc.uscourts.gov/opinions-orders/24-1061.OPINION.8-13-2024_2366074.pdf">Allergan USA, Inc. v. MSN Laboratories Private Ltd, No. 2024-1061 (Aug. 13, 2024)</a>, reversing the district court’s invalidity findings.



Allergan sells the drug Viberzi comprised of eluxadoline, which mitigates symptoms of IBS. Sun sought FDA approval to sell a generic substitute to Viberzi and, as required, Sun statutorily certified that Allergan’s ’356 patent is invalid or not infringed by Sun’s generic product. Allergan filed suit alleging Sun’s product would infringe claim 40 of the ’356 patent. Allergan amended its complaint to include claims for infringement of other, later-filed and later-issued Allergan patents in the ’356 patent family. In a bench trial, Sun argued claim 40 of the ’356 patent was invalid for obviousness-type double patenting (“ODP”) and the asserted claims of the other patents were invalid for lack of written description support for a formulation that does not include a glidant. The district court agreed with both arguments and entered final judgment of invalidity of all asserted claims. Allergan appealed.



The Federal Circuit reversed. On the issue of ODP, the Court held, as a matter of law, a first-filed, first-issued, later-expiring claim cannot be invalidated by a later-filed, later-issued, earlier-expiring claim having a common priority date. The Court explained that the purpose of the prohibition against ODP is to prevent unjustified time extensions of patent exclusivity. Here, the ’356 patent does not extend or prolong the monopoly on eluxadoline. Rather as the first-filed, first-issued patent in its family, the ’356 patent (with its patent term adjustments) sets the maximum period of exclusivity for the claimed subject matter and patentably indistinct variants. The Court rejected Sun’s assertion that the Court held otherwise in Cellect, noting Cellect did not address under what circumstances a claim can properly serve as an ODP reference. On the issue of written description, the Court held the district court clearly erred in concluding there was no support for a formulation that does not include a glidant. As written, the Court opined, the specification contemplates at least two embodiments in which a glidant is not required. Moreover, the specification attributes no particular function or significance to the presence of a glidant that would suggest it is essential or otherwise necessary to the invention. Judge Dyk dissented-in-part, explaining he found no clear error in the district court’s written description finding.



Coauthored by Rachel Zimmerman Scobie &amp; Henry Adebisi.

Federal Circuit Clarifies Application of Obviousness-Type Double Patenting

Last week, the U.S. Court of Appeals for the Federal Circuit issued a precedential opinion in <a href="https://cafc.uscourts.gov/opinions-orders/23-1035.OPINION.8-23-2024_2372558.pdf">Realtime Adaptive Streaming LLC v. Sling TV, LLC, No. 2023-1035 (August 23, 2024)</a>, reversing an award of attorneys’ fees.



The district&nbsp; court in the District of Colorado had awarded attorneys’ fees to defendants based on six purported “red flags” the district court found should have served as warning signs to Realtime that its case was fundamentally flawed and rendered the case exceptional.&nbsp;



Realtime had filed suit in 2017, asserting infringement of three patents related to digital data compression. In late 2018, however, two courts – the Central District of California and District of Delaware – found one of Realtime’s asserted patents (the ’535 patent) invalid under 35 U.S.C. § 101. The Colorado district court considered these invalidity findings to be the first red flag. In 2020, the Federal Circuit issued an opinion in Adaptive Streaming Inc. v. Netflix, affirming a finding of patent-ineligibility for certain claims related to digital video processing. The district court found this to be the second red flag. The third red flag was a decision by the Patent Trial and Appeal Board finding the claims of the ’535 patent invalid as obvious and the fourth was the issuance of a final rejection in the ex parte reexamination of another patent asserted by Realtime (the ’610 patent). The fifth red flag was a letter from one of the defendants to Realtime asserting that the ’610 patent was invalid and the sixth was a declaration by defendants’ expert witness submitted in support of defendants’ summary judgment motion. Realtime appealed.



The Federal Circuit reversed and remanded. Reviewing the district court’s award of attorneys’ fees under the “abuse of discretion” standard, Court held the district court should not have given any weight to some of the red flags it identified. First, the Court held its opinion in Adaptive Streaming was entitled to no weight because that case involved different technology. Second, the Court held the district court failed to adequately explain the relevance of the PTAB’s invalidation of the ’535 patent claims and the final rejection of the ’610 patent claims during reexamination. Third, the Court held the letter was insufficiently detailed to provide notice to Realtime that its asserted claims were patent-ineligible and the district court failed to explain why the defendants’ expert’s declaration should be considered a red flag.

CAFC Reverses Award of Attorneys’ Fees in Patent Case

Last week, the U.S. Court of Appeals for the Federal Circuit issued a precedential opinion in <a href="https://cafc.uscourts.gov/opinions-orders/22-2006.OPINION.8-28-2024_2375118.pdf">Koki Holdings America Ltd. v. ITC, No. 2022-2006 (Aug. 28, 2024)</a>, dismissing an appeal for lack of standing.



In 2017, the ITC instituted an investigation to determine whether Koki was violating Section 337 by importing gas spring nailer products that allegedly infringed Kyocera’s patents. The ITC found that Koki’s products infringed and issued an exclusion order. On appeal, the Federal Circuit reversed two claim construction rulings and determined that the ITC abused its discretion by admitting unqualified expert testimony. The Federal Circuit vacated and remanded the ITC proceeding.



On remand, Kyocera moved to terminate the investigation by voluntarily withdrawing its complaint. The ITC granted Kyocera’s motion and terminated the investigation over Koki’s opposition. Koki appealed, arguing that the ITC lacked statutory authority to terminate the investigation.



To establish standing for its appeal, Koki argued it was injured by the termination of the investigation because it lost the benefit of the preclusive effect of an ITC determination of noninfringement. Specifically, Koki suggested that because of the termination Kyocera is free to refile its complaint before the ITC. The Federal Circuit rejected this argument. The Court noted that Kyocera had provided Koki with a covenant not to sue and explained that this covenant not to sue eliminated the controversy between the parties alleged by Koki. The Court dismissed the appeal, finding that Koki failed to establish an injury in fact sufficient to confer standing.

CAFC Holds ITC Respondent Lacks Standing to Appeal Termination of ITC Investigation

Last week, the U.S. Court of Appeals for the Federal Circuit issued an opinion in <a href="https://cafc.uscourts.gov/opinions-orders/23-1627.OPINION.9-4-2024_2378780.pdf">Osseo Imaging, LLC v. Planmeca USA Inc., No. 2023-1627 (Sept. 4, 2024)</a>, affirming a district court’s denial of Planmeca’s motion for judgment as a matter of law (JMOL), which sought to overturn a jury verdict of infringement and nonobviousness.



Osseo sued Planmeca for infringement of patents relating to orthopedic imaging systems. After trial, a jury returned a verdict that Planmeca’s accused product infringed all but one asserted claim and that none of the asserted claims were invalid for obviousness. Planmeca moved for JMOL. Notably, Planmeca argued that the testimony of Osseo’s expert witness regarding infringement should be disregarded in its entirety because he allegedly acquired the status of a person of ordinary skill in the art after the subject matter of the patents was invented. The district court denied the motion, finding that the jury’s verdict was supported by substantial evidence and concluding as a matter of law that there was no requirement that an expert witness must have acquired her or his expertise by a certain date for the expert’s testimony to be reliable. Planmeca appealed.



The Federal Circuit affirmed, agreeing with the district court that substantial evidence supported the jury’s infringement and nonobviousness determinations. Addressing Planmeca’s argument regarding Osseo’s technical expert, the Federal Circuit acknowledged that its precedent required a testifying expert to be at least a person of ordinary skill in the art for the expert’s testimony to be reliable. The Court also found, however, that its precedent did not include a requirement that the expert attained this level of skill by any particular date vis-à-vis the invention of the asserted patents. The Court declined to adopt such a timing requirement, determining that “an expert can acquire the necessary skill level later and develop an understanding of what a person of ordinary skill knew at the time of the invention.” Though an expert’s credibility could be undermined through cross examination relating to the timing of the expert’s development of expertise, the post-invention acquisition of such expertise did not justify disregarding the expert’s testimony in its entirety.

CAFC Declines to Adopt Timing Requirement for Expert Witness’s Acquisition of Expertise

Last week, the U.S. Court of Appeals for the Federal Circuit issued an opinion in <a href="https://cafc.uscourts.gov/opinions-orders/22-1654.OPINION.9-9-2024_2381170.pdf">Contour IP Holding LLC v. GoPro, Inc., No. 2022-1654, -1691 (Sept. 9, 2024)</a>, reversing the District Court for the Northern District of California’s summary judgment holding that Contour’s point-of-view video camera patents were invalid as directed to patent-ineligible subject matter.



Contour sued GoPro in 2015, alleging that GoPro infringed U.S. Patent Nos. 8,890,954 and 8,896,694, which are directed to portable video cameras that capture a scene from a user’s point-of-view (“POV”). Following claim construction, GoPro filed a motion for summary judgment that the asserted patents were invalid as directed to patent-ineligible subject matter under 35 U.S.C. §&nbsp;101. The district court applied the two-step Alice test and granted the motion. At Alice step one, the district court determined that the claims were directed to the abstract idea of “creating and transmitting video (at two different resolutions) and adjusting the video’s settings remotely.” At Alice step two, the district court concluded that the claims recite only functional language with “no indication that the physical components are behaving in any way other than their basic, generic tasks.” The district court entered judgment for GoPro, and Contour appealed.



The Federal Circuit reversed, explaining that the district court had characterized the claims “at an impermissibly high level of generality.” The Court held that the claims were directed to patent-eligible subject matter under Alice step one because they recite a “specific improved POV camera” through the requirements “that the claimed POV camera processor be configured to record low and high-quality data streams in parallel, followed by the low-quality data stream’s wireless transfer to a remote device.” As a result, the claims “provide a technological improvement to the real time viewing capabilities of a POV camera’s recordings on a remote device.” The Court explained that under the district court’s claim construction, which requires that the multiple video streams be recorded “in parallel,” the claims do not cover any other ways that a camera processor might generate multiple video streams. Due to this limitation, the claims were properly “directed to a specific means that improves the relevant technology.” Because the claims recite patent eligible subject matter at Alice step one, the Court did not reach Alice step two and remanded for further proceedings.

Federal Circuit Reverses Summary Judgment Decision Finding Invalidity Under Section 101

Recently, the U.S. Court of Appeals for the Federal Circuit issued an opinion in <a href="https://cafc.uscourts.gov/opinions-orders/23-2032.OPINION.9-18-2024_2386574.pdf">Astellas Pharma, Inc. v. Sandoz Inc., No. 2023-2032 (Sept. 18, 2024)</a>, vacating and remanding the district court’s sua sponte finding of invalidity under 35 U.S.C. § 101.



Sandoz sued Astella and other generic drug manufacturers for infringement of U.S. Patent No. 10,842,780, directed to a sustained-release pharmaceutical composition. Sandoz’s invalidity contentions asserted invalidity under 35 U.S.C. §§ 102, 103, and 112, but not under 35 U.S.C. §&nbsp;101. Sandoz further limited its invalidity defenses before trial, and neither party addressed patent eligibility at trial. In addressing Sandoz’s enablement defense in post-trial briefing, Astella described the inventive concept of the ’780 Patent as “discovering the dissolution rate that would address the food effect and achieving it using previously known formulation technology.” Relying on Astella’s description, the district court sua sponte ruled that the asserted claims were directed to a law of nature and were invalid under 35 U.S.C. § 101.



The Federal Circuit vacated and remanded. The Court emphasized the long-standing principle of party presentation, i.e., the parties frame the issues for decision while the court decides those issues. Although the Court recognized that the party presentation principle is “supple, not ironclad,” it held that finding a patent invalid on a ground not raised by any party was an abuse of discretion. The Court explained that “[o]ne cornerstone” of patent litigation is a patent’s presumption of validity. This means that patent eligibility is not a threshold question that a court is required to determine; instead, a court must only determine whether the patent challenger has met its burden of establishing invalidity on the grounds raised in the litigation. The Court vacated and remanded for adjudication of the issues properly raised by the parties.



The Court denied Astella’s request that the case be reassigned on remand. The Court noted that reassignment is “an exceptional remedy” and explained that errors relating to the propriety of a district court’s analysis do not warrant reassignment. The Court explained that while the district court had expressed personal frustration regarding the pharmaceutical industry, those comments were directed to the entire industry (brand and generic manufacturers), and there was no indication that the judge “cannot resolve the outstanding issues impartially and fairly.”

Federal Circuit Holds District Court Abused Discretion Sua Sponte Finding Patent Invalid Under 35 U.S.C. § 101

Last week, the U.S. Court of Appeals for the Federal Circuit issued an opinion in <a href="https://cafc.uscourts.gov/opinions-orders/22-2160.OPINION.10-3-2024_2395329.pdf">Crocs, Inc. v. Effervescent, Inc. et al., No. 2022-2160 (Oct. 3, 2024)</a>, reversing the U.S. District Court for the District of Colorado’s summary judgment holding that the defendants’ Lanham Act false advertising counterclaim was barred as a matter of law.



Crocs, Inc. (“Crocs”) sued U.S.A. Dawgs, Inc. and other shoe-distribution defendants (collectively, “Dawgs”) for patent infringement. In response, Dawgs asserted a false advertising counterclaim under Section 43(a) of the Lanham Act, which prohibits, among other things, false or misleading representations regarding the “nature, characteristics, [or] qualities” of a party’s goods or services. Dawgs alleged that Crocs’ website falsely advertised that the primary material Crocs uses to make its footwear, Croslite, was “patented,” “proprietary,” and “exclusive,” when in fact it was not. Crocs conceded that Croslite was not patented and that its statements that Croslite was covered by a patent were false. Nevertheless, Crocs moved for summary judgment, arguing that the false advertising counterclaim was “legally barred” under the Lanham Act because Crocs’ false claims of patent coverage were not directed to “a nature, characteristic, or quality” of its footwear. The district court agreed, finding that the terms “patented,” “proprietary,” and “exclusive” were claims regarding inventorship and did not falsely describe the nature, characteristics, or qualities of Crocs’ products. The district court granted summary judgment in favor of Crocs. Dawgs appealed.



The Federal Circuit reversed, finding that Dawgs’ false advertising counterclaim was not limited to false claims of inventorship. The Court determined that Crocs’ website described a key product feature, Croslite, as unique (a cornerstone of patentability) and having numerous functional benefits, which implied that its competitors’ products were inferior. In other words, Crocs’ advertising statements falsely created the commercial impression that its Croslite material was unique and superior by virtue of patent coverage. The Court held that a viable cause of action arises under Section 43(a) of the Lanham Act “where a party falsely claims that it possesses a patent on a product feature and advertises that product feature in a manner that causes consumers to be misled about the nature, characteristics, or qualities of its product.” The Court determined that Dawgs’ Lanham Act counterclaim was viable and remanded for further proceedings.

CAFC Reverses Summary Judgment Ruling Dismissing Lanham Act False Advertising Counterclaim Based on False Claims of Patent Coverage

Last week, the U.S. Court of Appeals for the Federal Circuit issued an opinion in <a href="https://cafc.uscourts.gov/opinions-orders/22-2036.OPINION.10-8-2024_2398426.pdf">AlexSam, Inc. v. Aetna, Inc., No. 2022-2036 (Oct. 8, 2024)</a>, reversing a district court’s dismissal of a patent infringement suit.



AlexSam sued Aetna alleging that Aetna’s Mastercard and VISA products infringed certain claims of U.S. Patent No. 6,000,608 directed to a “multifunction card system” capable of managing various transactions through a central processing hub. Aetna moved to dismiss arguing the claims pertaining to the Mastercard products were barred by the doctrine of prior license and the claims pertaining to the VISA products failed to state a plausible claim for relief. The district court granted the motion, and AlexSam appealed.



The Federal Circuit reversed. With respect to the claims pertaining to the Mastercard products, the Court held that the district court erred in resolving the licensing issues based upon the limited information in the complaint, its attachments, and the motion to dismiss briefing. The Court concluded that the scope of the license is narrower than the district court found it to be, and that there were open issues to be resolved before the impact of the license on the infringement claims could be fully assessed.



With respect to the claims pertaining to the VISA products, the Court held the district court erred in concluding the claims were insufficiently pled. The Court reiterated that to sufficiently plead a claim for patent infringement requires only a plausible short and plain statement of the claim showing the plaintiff is entitled to relief. The Court noted that, while the plausibility standard requires sufficient factual content to support the grounds for relief, specific facts are not necessary to support every allegation in the complaint. All that is required is sufficient detail to provide a defendant fair notice of the plaintiff’s claims. Noting it had not previously said whether it applied deferential or non-deferential review to a trial court’s categorization of a complaint’s allegations as “factual or legal, well-pled or merely conclusory,” the Court held that its review of such determinations is de novo. With that standard in mind, the Court held the district court erred in finding the allegations of AlexSam’s complaint to be merely conclusory or otherwise insufficient to state a plausible claim for relief.

CAFC Reverses Dismissal of Patent Infringement Case Against Aetna

Last week, the U.S. Court of Appeals for the Federal Circuit issued an opinion in <a href="http://Utto Inc. v. Metrotech Corp., Case. No. 2023-1435 (Oct. 18, 2024)">Utto Inc. v. Metrotech Corp., Case. No. 2023-1435 (Oct. 18, 2024)</a>, reversing a district court’s dismissal of a patent infringement suit.



Utto sued Metrotech for infringement of U.S. Pat. No. 9,086,441 directed to methods for detecting and identifying “buried assets,” i.e. underground utility lines. Utto’s motion for preliminary injunction was denied for failure to show a likelihood of success on the merits of infringement. In its ruling, the district court construed the term “group of buried asset data points” to require “two or more” buried asset data points for each buried asset. The district court then dismissed the first, second, and third amended complaints, relying on its claim construction issued in denying a preliminary injunction. Utto appealed.



The Federal Circuit reversed. The Court held that district courts can construe claims on a motion to dismiss without a separate Markman hearing, but that such a decision is case-specific, and may only be appropriate if the claim’s meaning is clear and case dispositive, such that no additional proceedings are necessary.



Here, the Court held that further claim construction proceedings were necessary. The Court held that the third amended complaint raised “at least a question as to whether a person of skill in the art would read the phrase at issue “in light of a recognized meaning of ‘group’ in mathematics to mean one or more, not two or more.” The Court noted that the term was not so “plain” that to give it a contrary construction would require redefinition or disclaimer and that while “group” presumptively implies two or more, that presumption can be overcome. The specification referred in two places to using the claimed method with “one or more” buried asset points, which was dismissed by the district court as being used “only twice.” The Court stated “it is not clear why twice is not enough to support what may be a permissible but, if unusual and non-presumptive, meaning of the expression.” Finally, the Court noted that on remand extrinsic evidence may be appropriate to construe the claims, in particular that the invention may work with only one data point as alleged in the third amended complaint. The Court therefore vacated and remanded for further claim construction proceedings, noting that it was not deciding if the district court’s claim construction was correct. &nbsp;

CAFC Reverses Dismissal of Patent Case Due to Insufficient Claim Construction Proceedings

Recently, the United States Court of Appeals for the Federal Circuit issued an opinion in <a href="https://cafc.uscourts.gov/opinions-orders/24-1515.OPINION.10-24-2024_2408080.pdf">Telefonaktiebolaget LM Ericsson v. Lenovo (United States), Inc., No. 2024-1515, 2024 U.S. App. LEXIS 26863 (Fed. Cir. Oct. 24, 2024)</a>, vacating a district court’s denial of a motion for an antisuit injunction.



The European Telecommunications Standards Institute (“ETSI”) has a policy through which standard-essential patent (“SEP”) holders make a declaration that SEPs can be licensed under “fair, reasonable[,] and non-discriminatory” terms (a “FRAND commitment”). Parties have an obligation to negotiate such a license in good faith. Lenovo and Ericsson each made a FRAND commitment. Ericsson filed the instant action against Lenovo alleging: that Lenovo infringed Ericsson’s patents, that Lenovo breached its duty to negotiate its FRAND commitment in good faith, and that Ericsson complied with its FRAND obligations to Lenovo. Ericsson also asked the district court to set the FRAND rate for a global cross-license if Ericsson’s offer was inconsistent with its FRAND obligations. After Ericsson was granted foreign injunctions, Lenovo moved the district court to enter an antisuit injunction that would prohibit Ericsson from enforcing its injunctions. The district court denied the motion and Lenovo appealed.



The Federal Circuit reversed. The Court discussed the framework outlined by the Ninth Circuit in Microsoft Corp. v. Motorola, Inc., 696 F.3d 872 (9th Cir. 2012). For the purposes of the appeal at issue, the Court noted that it only needed to resolve the first threshold part of the framework, which assesses whether the parties and the issues would be the same between the foreign and domestic suits and whether the domestic suit would be dispositive of the foreign action to be enjoined.



The Court held that this dispositive requirement was met. It explained that Ericsson’s FRAND commitment required Ericsson to comply with its obligation to negotiate in good faith, an issue before the district court, before it was able to pursue SEP-based injunctive relief. The Court rejected Ericsson’s argument that for the domestic suit to be dispositive of the foreign action it needed to resolve the entire foreign action rather than just the injunction. The Court explained that the availability of the injunction was central to the “dispositive” analysis even though it depends on the potential that a party prevails in the domestic suit rather than the entire foreign proceeding. The Court remanded the case.

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