IP Newsflash

A recent board decision denying inter partes review serves as a reminder that an expert opining on obviousness must at least meet the definition of an ordinarily skilled artisan.

On June 9, 2016, the United States Tax Court issued an opinion rejecting the Internal Revenue Service’s (IRS) proposed transfer pricing method that would have increased royalties payable to Medtronic, Inc. by $1.4 billion, calling the IRS’ proposed method arbitrary, capricious and unreasonable. The court instead accepted Medtronic’s chosen transfer pricing method with minor alterations.

On June 1, 2016, the U.S. District Court for the District of Massachusetts denied Exergen Corporation’s (“Exergen”) motion for enhanced damages in a patent infringement action against Kaz USA, Inc. (“Kaz”). Exergen accused Kaz. of infringing its patents directed to temporal artery thermometers. Exergen moved for enhanced damages after a jury awarded it roughly $15 million in lost profits and reasonable royalties.

In granting defendant’s proposal regarding the scope of a prosecution bar, the court faulted plaintiff’s failure in developing a record to demonstrate the alleged harm it would suffer if it were denied counsel of its choice.

According to the Federal Circuit, a party seeking imposition of a patent prosecution bar must show that there is a risk that counsel involved in matters before the United States Patent and Trademark Office (PTO) may inadvertently use confidential information learned in litigation. The risk of inadvertent disclosure turns on the extent to which counsel is involved in “competitive decision-making” with its client. The court must then balance that risk against the potential harm that the party affected by the bar would face were it to be denied counsel of its choice.