District Court Considers Acceptable Limits to Attorney Participation in Drafting of Expert Reports

by Eric Caligiuri
The IP Law Blog

In Munchkin, Inc. v. Tomy International, Inc., 1-18-cv-06337 (NDIL May. 24, 2022) the Court considered the permissible extent of attorney participation in the preparation of an expert report. The Court did so in response to plaintiff’s motion to exclude the testimony of defendant’s technical expert for failing to prepare his own report. Specifically, plaintiff Munchkin sought to exclude the opinion of defendant TOMY’s technical expert, Jesse Darley, who offered opinions regarding non-infringement.

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District Court Dismiss Inequitable Conduct Claim Alleging Inferred Knowledge of Prior Art Based on Wide Spread Availability

by Eric Caligiuri
The IP Law Blog

In California Costume Collections, Inc v. Pandaloon, LLC, 2-21-cv-01323 (CDCA Apr. 7, 2022) (John W. Holcomb), the Central District of California recently considered whether a plaintiff plead an inequitable conduct claim with the required particularity concerning knowledge of materiality. In the case, Plaintiff California Costume Collections (“CCC”) filed its Complaint against Defendant Pandaloon, LLC (“Pandaloon”) for declaratory judgment of non-infringement, invalidity, and unenforceability of U.S. Design Patent No. D806,325 (the “D325 Patent”) for a “Pet Costume.” In response,

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District Court Denies Prejudgment Interest Accrued During COVID-19 Delay

by Eric Caligiuri
The IP Law Blog

In Pierce Manufacturing, Inc., et. al v. E-One, Inc. et. al, 8-18-cv-00617 (MDFL Feb. 16, 2022) (Thomas P. Barber) the Court denied in part plaintiffs’ motion for pre-judgment interest that would have accrued during a stay due to COVID-19. In the case, Defendants were found liable for infringing certain claims in Plaintiffs’ asserted patent and the jury awarded Plaintiffs damages of $1,287,854 in lost profits and $170,500 in reasonable royalties. The parties did not dispute that an award of prejudgment and post-judgment interest was appropriate along with the damages award.

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Australian Judge Rules Inventions Developed by Artificial Intelligence Can Qualify for Patent Protection

by Eric Caligiuri
The IP Law Blog

In Thaler v. Commissioner of Patents, case number VID 108 of 2021, in the Federal Court of Australia, an Australian Federal Judge became the first known jurist to rule that inventions developed by artificial intelligence can qualify for patent protection.

The case involved a patent application from Dr. Stephen Thaler, a researcher who runs a Missouri company called Imagination Engines. An artificial intelligence system, which has been described as a device for the autonomous bootstrapping of unified sentience (DABUS),

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Supreme Court Finds PTAB Judges Unconstitutional

by Eric Caligiuri
The IP Law Blog

5-4 Opinion Offers Judicial Workaround by Giving More Oversight to the USPTO Director

In U.S. v. Arthrex, case number 19-1434; Smith & Nephew v. Arthrex, case number 19-1452; and Arthrex v. Smith & Nephew, case number 19-1458, the Supreme Court of the United States recently held that Patent Trial and Appeal Board (PTAB) judges are unconstitutionally appointed.  But, the Court also held that providing the Director of the United States Patent and Trademark Office (USPTO) with more oversight over PTAB rulings will remedy the unconstitutionality of the PTAB judges.

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District Court Denies Defendant’s Motion for Attorney’s Fees Even After Granting Clear Summary Judgment on Noninfringement Grounds

by Eric Caligiuri
The IP Law Blog

In Hytera Communications Corp. Ltd. v. Motorola Solutions, Inc., 1-17-cv-01794 (NDOH 2021-04-29, Order) (Donald C. Nugent), the District Court denied defendant’s motion for attorney fees under 35 U.S.C. § 285, determining plaintiff’s litigation positions were not baseless even after a granting of summary judgment of noninfringement that “was not a close call.”  

As way of background, in patent infringement cases, Courts are authorized to award “reasonable attorney fees to the prevailing party”

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Federal Circuit Set to Have First Vacancy in Six Years

by Eric Caligiuri
The IP Law Blog

On March 16, 2021, U.S. Circuit Judge Evan J. Wallach for the Federal Circuit Court of Appeals announced he plans to take senior status on May 31, 2021.  This semi-retirement is set to create the first vacancy at the Federal Circuit in almost six years.  The Federal Circuit handles all appeals of patent cases from Districts Courts in the U.S., and appeals from various government agencies.  Thus, the Federal Circuit is the only one of the thirteen federal courts of appeal whose jurisdiction is determined entirely on the subject of the lawsuit it hears,

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