Author Archives: finneganblogadmin

Federal Circuit Affirms Specific Intent to Deceive Based on Discovery Misconduct

Author: Alexander J. Zajac
Editor: Lily Robinson

In Regeneron Pharmaceuticals, Inc. v. Merus N.V., No. 2016-1346 (Fed. Cir. July 27, 2017), the Federal Circuit affirmed the district court’s decision that the claims of U.S. Patent No. 8,502,018 were unenforceable due to Regeneron’s inequitable conduct during prosecution.

The parties agreed that there were four references known to Regeneron during prosecution that were not cited to the Patent and Trademark Office (PTO).  Regeneron, however, argued that these references were neither material nor were withheld with specific intent to deceive the PTO. Continue reading

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Spotlight on Upcoming Oral Arguments – August 2017

Spotlight on Upcoming Oral Arguments – February 2017

Authors: Kate Leonard*
Editor: Caitlin O’Connell & Lily Robinson

Tuesday, August 8, 2017

EmeraChem Holdings v. Volkswagen Group of America, No. 16-2619, Courtroom 201

In this appeal from the PTAB, the Court will decide whether the Board erred in adopting a claim construction in its Final Written Decision that differed from the claim construction explicitly adopted in its Institution Decision. EmeraChem argues that the Board’s “change of theory midstream” deprived it of notice and an opportunity to address the new claim construction. Volkswagen argues that there is no fixed deadline by which a claim term must be finally construed. Volkswagen further argues that the Institution Decision signaled that the Board’s construction could potentially change since EmeraChem did address Volkswagen’s claim construction in its Preliminary Response.
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Federal Circuit Remands For Further Consideration of Proper Irreparable Harm Test for Permanent Injunction

Author: Alexander E. Harding*
Editor: Kara A. Specht

In Genband US v. Metaswitch Networks, No 2017-1148 (Fed. Cir. July 10, 2017), the Federal Circuit clarified that a patentee only need show “some connection” between the patent and sales of infringing products to meet the irreparable harm requirement for a permanent injunction.

The Eastern District of Texas granted an $8.1 million jury verdict to Genband for patent infringement, for patents related to internet voice-communication services, but refused to also grant a permanent injunction, finding that Genband failed to satisfy the showing of irreparable harm by failing to identify a causal nexus showing that “the patented features drive demand for the [infringing] product.”   Continue reading

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