Irwin IP Case Of The Week

The Internet Short-Circuits the Narrative

On September 1, 2020, the Northern District of Illinois held microphone manufacturer Shure in contempt for selling a beam-forming microphone that was no more than colorably different than the prior Shure product preliminarily enjoined for patent infringement in 2019.  Shure argued that its redesign was non-infringing.  But ClearOne relied on

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Seeking to Re-Add Inventor After Request to Remove Justified

The Federal Circuit vacated the decision of a district court declaring a patent invalid for failure to name all inventors. The Court held the patentee’s former request to remove the inventor and subsequent attempt to add that inventor back to the patent were justified and did not trigger judicial estoppel. 

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An agreement to agree doth not a contract make

Although Phytelligence. Inc. (“Phytell”) and Washington State University (“WSU”) entered into a Propagation Agreement (“the Agreement”) for Phytell to grow WSU’s patented “WA 38” apple trees for research, the Court of Appeals for the Federal Circuit affirmed that the Agreement lacked the language and context permitting Phytell to option commercialization

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Filing Down the Bars Against the Doctrine of Equivalents

On August 3, 2020, the Federal Circuit affirmed a determination that 10X Genomics had willfully infringed a patent owned by the University of Chicago and assigned to Bio-Rad Laboratories covering microfluidic test chip technology, rejecting 10X’s contentions that the plaintiffs’ doctrine of equivalents theory was barred by prosecution history estoppel

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Arizona Mandates SaaS Providers Implement API

The United States District Court for the District of Arizona recently denied a motion for a preliminary injunction seeking to avoid compliance with an Arizona law requiring software providers to implement an application programming interface.  The Court found the law was not preempted by the Copyright Act and did not

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A Splintered Opinion at the Corner of Joinder and State Immunity

On July 24, 2020, in a splintered three-opinion decision,[1] the Federal Circuit held that due to Eleventh Amendment sovereign immunity, the University of Texas (“UT”) could not be involuntarily joined by its licensee, Gensetix, as a plaintiff to a patent infringement lawsuit.  Despite prior case law finding that a patent

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An Invalidity Challenge is not a Changed Condition: Federal Circuit Affirms Exclusion Order Rescission Petition Denial

The International Trade Commission (“ITC”) issued an exclusion order prohibiting the importation of products infringing a patent that teaches a self-anchoring beverage container, used to prevent spills. Mayborn was not included in the original complaint to the ITC, and none of the defaulting respondents raised invalidity challenges. Mayborn appealed the

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Inter Partes Means Inter Partes

On July 6, the PTO’s Precedential Opinion Panel (“POP”) held that when examining proposed amended claims in AIA trials, PTAB panels may raise grounds for rejection sua sponte, but should do so only in rare circumstances and with adequate notice.  In this, the fourth opinion issued by the POP, a

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