Invalidity contentions did not provide clear notice of patent’s invalidity for attorney fees

Stone Basket v. Cook Medical was decided on June 11, 2018 on appeal from the Southern District of Indiana. After the PTAB cancelled all asserted claims following an IPR, the district court dismissed the case with prejudice. Defendant Cook then moved for attorney fees. The district court denied the motion. Cook appealed. The …

Lower court erred in considering pre-suit licensing rate in determining the ongoing royalty

XY v. Trans Ova Genetics was decided on May 23, 2018 on appeal from the District of Colorado. Plaintiff XY sued defendant Trans Ova for patent infringement and breach of contract. The jury found that Trans Ova breached the contract and willfully infringed XY’s patent, and awarded XY $4,585,000 for the …

Infringement, direct competition, and past harms support permanent injunction against generics company

Endo v. Teva is a nonprecedential case decided on May 16, 2018 on appeal from the Southern District of New York. The district court found all asserted claims by plaintiff Endo against defendant Teva not invalid, and found all but two asserted claims infringed. The district court then issued a permanent injunction against …

Consumer’s interest in purchasing hypothetical infringing products does not create declaratory jurisdiction

AIDS Healthcare v. Gilead was decided on May 11, 2018 on appeal from the Northern District of California. Declaratory defendant Gilead has patents or is a licensee of patents on a particular antiviral agent used to treat AIDS. Declaratory plaintiff Healthcare provides medical care to persons afflicted with AIDS. Healthcare filed a declaratory judgment …

Equitable estoppel does not apply to pre-reexamination conduct of substantively modified reexamination claims

John Bean v. Morris & Associates was decided on April 19, 2018 on appeal from the Eastern District of Arkansas. In 2002, after plaintiff John Bean had contacted defendant Morris’ customers alleging infringement, Morris sent John Bean a letter notifying John Bean that its patent was invalid based on multiple prior …

NPE case not exceptional because plaintiff had good faith positions and did not delay in its litigation tactics

Sarif Biomedical v. Brainlab is a nonprecedential case decided on March 21, 2018 on appeal from the District of Delaware. There were concurrent PTAB and district court litigations, but the PTAB litigation terminated before the district court litigation. Following claim construction adverse to plaintiff Sarif at the district court, the parties jointly …

No declaratory jurisdiction where invalidity issue would not resolve the underlying contractual dispute

AbbVie v. MedImmune was decided on February 5, 2018 on appeal from the Eastern District of Virginia. A 1995 agreement between the parties licensed AbbVie to practice the ‘516 patent, among others. AbbVie did not practice the patent at the time. Under the agreement, AbbVie was to pay royalties on the sales …

Denial of preliminary injunction is vacated as it was based on a flawed claim construction

Liqwd v. L’Oreal is a nonprecedential opinion decided on January 16, 2018 on appeal from the District of Delaware. The asserted patent described a method of bleaching hair by applying to the hair a particular mixture. The district court denied Liqwd’s motion for a preliminary injunction after claim construction. Because the adopted …

Losing a summary judgment motion does not automatically make the plaintiff’s case exceptional

Honeywell v. Fujifilm is a nonprecedential opinion decided on January 11, 2018 on appeal from the District of Delaware. The district court found plaintiff Honeywell’s patent invalid on summary judgment. The court thereafter denied defendant Fujifilm’s motion for attorney fees. Fujifilm appealed. The Federal Circuit affirmed the denial of attorney fees. The …

Declaratory action improper where DJ-defendant’s patent ownership was contingent on prevailing in state court

First Data v. Inselberg was decided on September 15, 2017 on appeal from the District of New Jersey. Inselberg is the inventor of various relevant patents formerly held by Inselberg Interactive. In 2011, Inselberg Interactive transferred “all right, title, and interest” in the patent portfolio to Bisignano, who eventually became CEO …