Category Archives: Assignment / Ownership

Assigned claim not broader than asserted claim, DC assignor estoppel decision affirmed

Posted on August 15, 2022 by Patrick J. Halloran, Ph.D., J.D.

Hologic, Inc., et al. v. Minerva Surgical, Inc. Docket No. 2019-2054, -2081 (https://cafc.uscourts.gov/opinions-orders/19-2054.OPINION.8-11-2022_1990706.pdf) STOLL, CLEVENGER, WALLACH August 11, 2022 Brief Summary:   On remand from SCOTUS, assignor estoppel decision affirmed as asserted claim not broader than assigned claim. Summary:  This … Continue reading →

Posted in Assignment / Ownership, Claim Construction, Prosecution History Estoppel, Written description | Leave a comment

DC decisions of induced infringement of patent asserted by Meso and non-infringement of non-asserted patents as requested by Roche vacated and remanded

Posted on April 15, 2022 by Patrick J. Halloran, Ph.D., J.D.

Roche Diagnostics Corp., Bioveris Corp. v. Meso Scale Diagnostics, LLC Docket No. 2021-1609, -1633 (https://cafc.uscourts.gov/opinions-orders/21-1609.OPINION.4-8-2022_1933410.pdf) NEWMAN (D), PROST, TARANTO April 8, 2022 Brief Summary:   DC findings of induced infringement of patents asserted by Meso and non-infringement of non-asserted patents … Continue reading →

Posted in Assignment / Ownership, Damages, Inducement to Infringe, Infringement, Licensing | Leave a comment

DC reversed on WD of genus claims and patent co-ownership, affirmed on no willfulness and remanded for damages calculation

Posted on March 28, 2022 by Patrick J. Halloran, Ph.D., J.D.

BASF Plant Science, L.P., Cargill, Inc. v. Commonwealth Scientific, et al. (“CSIRO”) Docket No. 2020-1415-16, 2020-1919-20 (https://cafc.uscourts.gov/opinions-orders/20-1415.OPINION.3-15-2022_1921729.pdf) NEWMNA (D), TARANTO, CHEN March 15, 2022 Brief Summary:   Following a dispute regarding a collaboration agreement, FC panel affirmed DC fining on … Continue reading →

Posted in Assignment / Ownership, Infringement, Inventorship, Licensing, Royalties, Venue, Willfullness, Written description | Leave a comment

ITC findings that Bio-Rad infringed and does not co-own 10X patents affirmed

Posted on April 30, 2021 by Patrick J. Halloran, Ph.D., J.D.

Bio-Rad Laboratories, Inc. v. International Trade Commission, 10X Genomics Inc. Docket No. 2020-1785 (http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/20-1785.OPINION.4-29-2021_1770917.pdf) TARANTO, CHEN, STOLL April 29, 2021 Brief Summary:  ITC infringement and no co-ownership findings affirmed. Summary:  Bio-Rad appealed International Trade Commission (ITC) decision finding infringement and … Continue reading →

Posted in Assignment / Ownership, Conception and Reduction to Practice, Infringement, International Trade Commission, Inventorship | Leave a comment

DC erred in denying ownership of foreign patents arising from non-disclosure agreement

Posted on December 10, 2020 by Patrick J. Halloran, Ph.D., J.D.

SiOnyx LLC et al. v. Hamamatsu Photonics K.K. et al. Docket No. 2019-2359, 2020-1217 (http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/19-2359.OPINION.12-7-2020_1697100.pdf) LOURIE, REYNA, WALLACH December 7, 2020 Brief Summary:  DC erred in failing to transfer ownership of foreign patents arising from confidential information disclosed under an … Continue reading →

Posted in Assignment / Ownership, Damages, Licensing, Unjust enrichment | Leave a comment

UT cannot be involuntarily joined due to state sovereignty, but DC incorrectly analyzed whether case could proceed without UT

Posted on July 29, 2020 by Patrick J. Halloran, Ph.D., J.D.

Gensetix, Inc. / Univ. Texas v. Baylor College of Medicine Docket No. 2019-1424 NEWMAN (D/C), O’MALLEY, TARANTO (C) July 24, 2020 Brief Summary: DC correctly found UT could not be involuntarily joined under Eleventh Amendment but abused its discretion in … Continue reading →

Posted in Assignment / Ownership, Licensing, State Sovereignty | Leave a comment

DC decision of no invalidity including no common ownership regarding double-patenting affirmed

Posted on July 28, 2020 by Patrick J. Halloran, Ph.D., J.D.

Immunex Corporation, Amgen Manuf., Ltd., Hoffman La-Roche Inc. v. Sandoz Inc., et al. Docket No. 2020-1037 O’MALLEY, REYNA (D), CHEN July 1, 2020 Update (May 17, 2021):  SCOTUS denied Sandoz’s petition for writ of certiorari. Brief Summary: DC finding of … Continue reading →

Posted in Assignment / Ownership, Double Patenting, Obviousness | Leave a comment

Corrected assignment effective to show ownership, willful infringement finding and prejudgment interest award affirmed

Posted on May 18, 2020 by Patrick J. Halloran, Ph.D., J.D.

Jodi A. Schwendimann, Cooler Concepts, Inc. v. Arkwright Advanced Coating, Inc. Docket No. 2018-2416, 2019-1012 O’MALLEY, REYNA, WALLACH May 13, 2020 Brief Summary: DC finding of willful infringement and award of prejudgment interest affirmed; “corrected nunc pro tunc” assignment effective … Continue reading →

Posted in Assignment / Ownership, Damages, Willfullness | Leave a comment

DC decision vacated and remanded since it should have considered whether assignee AMD should be joined as a necessary party

Posted on June 3, 2019 by Patrick J. Halloran, Ph.D., J.D.

Lone Star Silicon Innovations, LLC v. Nanya Tech. Corp. et al. Docket 2018-1581, -1582 O’MALLEY, REYNA, CHEN May 30, 2019 Brief summary: DC decision vacated and remanded since it should have considered whether assignee AMD should be joined as a … Continue reading →

Posted in Article III disputes, Assignment / Ownership | Leave a comment

Arista Networks, Inc. v. Cisco Systems, Inc.

Posted on November 15, 2018 by Patrick J. Halloran, Ph.D., J.D.

Docket Nos. 2017-1525, -1577 (IPR2015-00978) PROST, SCHALL, CHEN Nov. 9, 2018 Brief summary: Board IPR decision remanded for reconsideration under FC panel’s revised claim construction. Board decision that assignor estoppel does not apply to IPRs affirmed. Summary: Arista and Cisco … Continue reading →

Posted in Assignment / Ownership, Claim Construction, Inter Parties Review (IPR), IPR | Leave a comment