Category Archives: Patent

Discretion to Award Attorneys’ Fees for Inequitable Conduct

By James Juo. At the end of patent litigation, a district court may award reasonable attorneys’ fees to the prevailing party in “exceptional cases.” 35 U.S.C. § 285. If the district court find the case to be “exceptional,” then the district court exercises its discretion to determine whether to award attorney fees based on the […]

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Stumped Anticipation for Design Patents

By James Juo. For purposes of anticipation under 35 U.S.C. § 102 for patent validity with respect to utility patents and applications, “whether a reference is analogous art is irrelevant to whether that reference anticipates.” In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997). In Schreiber, a claim reciting a conical container top for […]

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Arbitration, Except During Inter Partes Review

By James Juo. There is a strong federal policy favoring arbitration agreements which is reflected in the Federal Arbitration Act (FAA) and the case law, see, e.g., AT&T Mobility LLC v. Concepcion, 563 U.S. 333, 346 (2011). Also, 35 U.S.C. § 294 states that a contract involving a patent may require arbitration of “any dispute […]

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General Warning Not to Infringe is No Substitute for Patent Marking

By James Juo. Damages for patent infringement may be limited to the period after the alleged infringer is notified of the infringement and continues to infringe thereafter, unless the patentee marks any “patented article” that it sells or licenses with the patent number. 35 U.S.C. § 287. Filing a patent infringement lawsuit will provide such […]

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Consistency Between Infringement and Validity Positions Is Not Foolish

By James Juo. In Commscope Techs. LLC v. Dali Wireless Inc., Nos. 2020-1817, 2020-1818 (Fed. Cir. Aug. 24, 2021), the Federal Circuit noted the need for consistent infringement and validity positions. CommScope and Dali are competitors in the wireless communications infrastructure market. Dali accused CommScope’s FlexWave system of patent infringement, and the asserted method claim requires […]

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