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Irwin IP Case Of The Week

Willfulness and Enhanced Damages Standards Clarified

On September 28, 2021, the Federal Circuit, (“CAFC”), reinstated an enhanced damages award against Cisco Systems Inc. (“Cisco”), holding that both substantial evidence supports the jury’s finding of Cisco’s willful infringement after May 8, 2012, and that Cisco’s conduct rises to the level of “wanton, malicious, and bad-faith behavior” required

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Spotlight on the Right of Publicity: Immunity and Preemption

On September 23, 2021, the Third Circuit reversed dismissal of a newscaster’s statutory Pennsylvania Right of Publicity claim.  It held that there was no immunity under the Communications Decency Act (“CDA”) for said claim because the CDA’s carve out for intellectual property protections are not limited to federal intellectual property

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Federal Circuit Limits the Scope of IPR Statutory Estoppel

On September 9, 2021, the Court of Appeals for the Federal Circuit (“CAFC”) found that use of a catalog description of a prior art product as a prior art reference in an IPR proceeding does not create 35 U.S.C. § 315(e)(2) estoppel as to the underlying prior art product.  Further, the

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PTAB’s Institutions of IPRs Found Immune from Arbitration

On September 8, 2021, the Federal Circuit, (“CAFC”), found that the Patent Trial and Appeal Board’s (“PTAB”) decision to institute inter partes review (“IPR”) of four MaxPower patents, despite an agreement to arbitrate disputes regarding those patents, was unappealable.  The CAFC also denied granting a writ of mandamus to stay

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Coming Back for Seconds

The Court of Appeals for the Federal Circuit (the “CAFC”) recently held, again, that the Patent Trial and Appeal Board (“PTAB”) erred in finding U.S. Design Patent Nos. D612,646 and D621,645, directed to gravity feed soup can dispensers, not obvious.  The decision underscores that design patents are subject to the

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Intrinsic, not Extrinsic, Evidence Rule in Claim Construction

On August 11, 2021, the Court of Appeals for the Federal Circuit (“CAFC”) held that the Patent Trial and Appeal Board (“PTAB”) erred in construing a key term—“fixed”—in the patent claims too narrowly.  After construing the term to have special meaning, and relying on extrinsic evidence to support that finding,

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How to Prove Infringement and Appeal It

The Federal Circuit’s (“CAFC”) recent decision in CommScope Techs. provides an important reminder regarding proving literal infringement, as well as some tips on preserving an issue for appeal.  At trial, both CommScope and Dali alleged infringement of multiple patents.  Following trial, both parties appealed several decisions.  The CAFC, however, focused

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When “Shall” Does Not Do

On August 2, 2021, the Court of Appeals for the Federal Circuit (“CAFC”) held that an employment agreement stating that an employee’s future patents “shall be the property of the University [of Michigan]” did not create a present automatic assignment of the asserted patents to the University.  Thus, the Court

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