Patent Litigation

Defending the Patent Case: Discovery Primer on Requests for Production

Many patent litigation treatises or other secondary materials describe the types of discovery devices that can be used in patent cases, but few of them discuss what to seek—and why.  Attorneys who are new to patent litigation often rely on exemplars of discovery requests prepared by others but may not appreciate their purpose.  In this…

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Tell Me a Story About Claim Construction

Storytelling is the key persuasive device used to win lawsuits.  Early in any case, good litigators begin to develop a compelling narrative with themes that support the outcome they seek for their clients.  Patent cases are no different, at least when they get to trial.  Before that happens, however, courts must construe the patent claims. …

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Yahoo v. Facebook–Facebook Returns Fire

On April 3 Facebook answered Yahoo’s patent infringement complaint in the pending lawsuit in the Northern District of California.  As many people predicted, Facebook also alleged patent infringement claims against Yahoo based on 10 of Facebook’s patents.  We discussed Yahoo’s patents and the likelihood that statutory subject matter issues would play a prominent role in…

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Defending the Patent Case – Make the Patent Holder Commit

Forcing patent holders to commit to their positions as early as possible is critical for successfully defending a patent case.  There is often tension between the patent holder’s infringement case and its validity case, and it is important to force and pin down the patent holder’s positions as early as possible to improve your chances…

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Mayo Collaborative Services v. Prometheus Laboratories—The Unanswered Questions

As a follow-up to our original post on the Prometheus case, we did a search to see if there were other patents related to the ones struck down by the U.S. Supreme Court, i.e., U.S. Patent No. 6,355,623 and 6,680,302.  These patents issued in 2002 and 2004, respectively.  In 2006 the same inventors obtained a…

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Today’s Supreme Court Decision Threatens the Patentability of Diagnostic Test Methods

If your business is based on patented diagnostic test methods, you may want to pay attention today’s U.S. Supreme Court opinion in Mayo Collaborative Services v. Prometheus Laboratories, Inc.  In this case, the Court unanimously reversed the Federal Circuit Court of Appeals and held that patent claims directed to a method of determining whether dosage…

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Yahoo v. Facebook – Statutory Subject Matter Defense May be Key

The patent infringement lawsuit filed by Yahoo on Monday has caused quite a stir.  Not only has the timing of the suit raised eyebrows because of Facebook’s impending IPO, but so has the subject matter of the patents-in-suit.  A closer look at Yahoo’s patents reveals that the validity of many of their claims may turn…

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Patent “Trolls”: Effects of the U.S. Written Description Requirement and Continuation Practice

The emergence of so-called “patent trolls” or their less pejorative name “non-practicing entities” (NPEs) has been a controversial topic for some time now.  Those who become frequent target of NPE lawsuits are understandably hostile to NPEs or anything that increases their litigation defense costs and disrupts their business.  Conversely, however, some argue that NPEs are…

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Can I Make My Patented Product?—The Negative Monopoly Provided by Patents

  One of the most frequently misunderstood concepts in patent law is that it is a negative monopoly.  That means a patent provides a right to exclude other people from making, using, selling, offering to sell or importing what the patent claims.  However, that right to exclude does not confer a right to practice the…

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Licensing Your Patents—The Dangers of Declaratory Judgment Actions

It is the great hope of most patent holders to sit back and collect royalty checks, hopefully with as little expense and difficulty as possible. Enforcing patents is difficult, time consuming, and expensive, so many patent holders hope to convince infringers to pay them for the use of their inventions without going to court. Thus,…

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