IP Newsflash

In a series of rulings on a motion in limine, the District of Delaware recently distinguished between what qualifies as being incorporated by reference and what does not for the purposes of an anticipation defense. In short, a parenthetical citation was held to be insufficient, while three passages discussing a cited reference met the test.

The District of Delaware recently rejected a patentee’s argument that non-production of an opinion letter from counsel, combined with knowledge of the patent, warranted a finding that defendant induced infringement.

The District of Arizona recently held that a plaintiff’s failure to mark patented products during the time period that marking was required barred it from recovering all pre-notice damages, including for a period of time when there was no obligation to mark.

The Patent Trial and Appeal Board granted institution of inter partes review of a patent directed to delivery of targeted television advertisements. The board rejected patent owner’s argument that a lack of particularity as to the asserted grounds justified denial under 35 U.S.C. § 312(a), holding that “simply including a significant amount of testimony and a number of supporting references is not, by itself, a reason to find that the particularity requirement is not met.”

A district court recently refused to exclude testimony regarding consumer surveys conducted by a design patent expert, holding instead that the consumer surveys may be probative of how an ordinary observer would view the designs at issue, and thus could assist the factfinder in determining design patent infringement under the ordinary observer test.

A court in the Western District of Oklahoma dismissed a complaint as to one of the asserted patents where the patent included a terminal disclaimer stating that the patent would be enforceable only as long as it was co-owned with a reference patent that the PTO had misidentified. The court relied on the public notice function of the patent system to hold the plaintiff to the exact language in its terminal disclaimer, and held that the asserted patent was unenforceable from the moment it issued because it and the reference patent were never co-owned.

The Federal Circuit reversed a decision from the District of Delaware dismissing a case for failing to plead induced infringement because the totality of the evidence raised fact questions that could not be resolved on a motion to dismiss. The Federal Circuit expressed doubts about whether appellee’s FDA-approved label alone, which carved out the claimed indication, was sufficient to actively induce. But the court held appellee’s label combined with its public statements that broadly refer to its drug as a generic version and provide usage and sales data for carved out indications, created a plausible basis for pleading induced infringement.

The District of Delaware granted-in-part Shopify’s motion for judgment as a matter of law, or alternatively a new trial, citing gaps in the evidentiary record resulting in an insufficient basis for the jury verdict of infringement. 

In a patent infringement case, the district court granted plaintiff’s motion to strike portions of defendant’s technical expert’s rebuttal report on the basis that defendant failed to timely disclose non-infringing alternatives earlier in the case. In reaching this decision, the court found that a theory of non-infringing alternatives is akin to an affirmative defense, and therefore a defendant cannot wait until rebuttal to disclose that theory.