Category Archives: Other Challenges

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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District Court’s Remand of Case Involving Patent Counterclaims to State Court Is Not Reviewable by Federal Circuit

Author: Victor H. Feng *
Editor: Jeff T. Watson

In Preston v. Nagel, No. 16-1524 (Fed. Cir. Jun. 1, 2017), the Federal Circuit dismissed Plaintiffs’ appeal of a district court’s decision to remand a case involving patent counterclaims to state court because 28 U.S.C. § 1447(d) bars review of that decision.  Continue reading

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Lack of Jurisdiction Flatlines Pulse’s Appeal

Author: Razi Safi*
Editor: Lily Robinson

The Federal Circuit in Halo Electronics, Inc. v. Pulse Electronics, Inc., No. 16-2006 (May 26, 2017) held that it lacked jurisdiction under 28 U.S.C. §§ 1295(a)(1) and 1292(c)(2) to hear an appeal from a district court’s order regarding prejudgment interest because it was not a “final decision.” The district court awarded Halo prejudgment interest, post-judgment interest, and supplemental damages for direct infringement but did not set the total amount of prejudgment interest or the beginning date for interest calculations. Instead, it ordered Halo to prepare an updated calculation of the interest amounts. Pulse appealed the order to the Federal Circuit. The Federal Circuit concluded, however, that because the district court had not resolved the parties’ dispute, the order was not a final decision imparting jurisdiction under § 1295(a)(1). Moreover, the appeal was not proper under § 1292(c)(2), which provides an accounting exception to the finality requirement, because the prejudgment-interest award in the case was not final. Section 1292(c)(2), the Court noted, should be interpreted narrowly and thus does not allow the Court to hear an appeal arising from a non-final order, even if the order is related to the accounting. The Federal Circuit therefore dismissed the appeal for lack of jurisdiction.

 

*Razi Safi is a Summer Associate at Finnegan. Continue reading

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