Posts by: Editorial Board

IPRs at the Supreme Court: Argument Insights and What’s Next From Orrick’s Mark Davies

Join IP reporter Scott Graham and Orrick, Herrington & Sutcliffe partner Mark Davies on a conference call for day-after analysis of Supreme Court arguments in Oil States and SAS Institute, two cases that could reshape inter partes review proceedings or wipe them out altogether.  Scott and Mark will share their takeaways from inside the chamber, answer your questions, and discuss strategies for litigating patents until the clouds clear.

This conference call (9 AM PST/ 12 PM EST, Tuesday November 28) is free.  Please register here.

Mark Davies leads Orrick’s Patent Appeal Working Group and is D.C. head of the firm’s Supreme Court and Appellate practice.  He represents clients in appeals that include Patent Trial and Appeal Board decisions and is the author of Patent Appeals: The Elements of Effective Advocacy in the Federal Circuit (Matthew Bender 2018).

Orrick Event (Santa Monica) – Understanding your IP

It takes more than a great idea to develop a viable product.  Startups need to develop an intellectual property (IP) strategy in order to protect, commercialize and monetize their business.  Join a group of Orrick’s tech and IP experts for a discussion on what you need to know!  Discussion topics include: IP basics & milestones; Commercialization; and Dispute management.  Register here to attend.

Federal Circuit Provides Important Guidance on Establishing Patent Venue

Order Granting Mandamus and Directing Transfer of Case, Raytheon Company v. Cray, Inc., Federal Circuit (September 21, 2017)

The Federal Circuit today clarified what it means to have “a regular and established place of business” to satisfy the venue requirement in patent litigation under 28 U.S.C. § 1400(b). As we previously reported here, on June 29, Judge Gilstrap denied transfer in this case and set out a four-factor test to consider in establishing venue in a particular district—including physical presence, defendant’s representations, benefits received, and targeted interactions. Defendant Cray, Inc. then petitioned for a writ of mandamus. READ MORE

Orrick Antitrust Team Authors Article on Pivotal Decision Involving Worldwide FRAND Licenses

Our colleagues recently published a paper in e-Competitions discussing some of the dangerous implications of worldwide FRAND licenses and the UK High Court of Justice’s decision to enter an injunction in Unwired Planet v. Huawei.  Read the paper here.

Matthew G. Rose, Jay Jurata, Emily Luken, The UK High Court of Justice issues an injunction prohibiting an undertaking from selling wireless telecommunications products in Britain due to its failure to enter into a worldwide patent license (Unwired Planet / Huawei)7 June 2017e-Competitions Bulletin August 2017, Art. N° 84684

No Junior Associates, No Hearing: Supplementation Granted


Illumina, Inc. et al v. Qiagen N.V. et al, Case No. 16-02788 (Judge William Alsup) (November 29, 2016)

In an effort to promote judicial efficiency, Courts often allow a plaintiff to supplement its complaint if doing so would settle the parties’ controversies in one action. This is the rationale Judge Alsup applied in Illumina, Inc. et al v. Qiagen N.V. et al, Case No. 16-02788 (N.D. Cal. Nov. 29, 2016) when allowing plaintiff Illumina to amend its complaint to add a newly issued patent that was granted after plaintiff filed its complaint. Judge Alsup listed several efficiency-related factors favoring supplementation: (1) the supplemental claims accuse the very same product already in the action; (2) the newly issued patent has narrower claims, so allowing them in this action would avoid duplicating some of the issues already in the case; (3) even though there are new issues associated with the supplemental claims, there is no evidence that these new issues would be so burdensome as to delay the current schedule. Thus, because of the significant commonalities between the two patents, the Court decided that it would serve the purpose of judicial efficiency to enable the parties to litigate both patents in the same case.


Motion to Dismiss Granted: What Are The Facts?

Order Granting Motion to Dismiss, Bluestone Innovations LLC v. Bulbrite Industries, Inc., Case No. 15-cv-5478 (Judge Phyllis Hamilton)

Before the recent amendment to the Federal Rules abolishing form complaints, it was rare to see parties file motions to dismiss in patent infringement cases, and even rarer to see them granted. But Judge Hamilton recently granted such a motion that defendant Bulbrite filed directed at allegations in a complaint that was not subject to those recent amendments. And now, plaintiff Bluestone must amend its complaint to add more specificity concerning its infringement allegations, notwithstanding its arguments that it provided the level of notice required to establish its claims of infringement that existed under applicable law prior to December 2015. READ MORE

Written Description: A License to Hunt or a Wild Goose Chase?

Order Denying Gilead’s Motion for Summary Judgment and Granting Merck’s Motion for Summary Judgment, Gilead Sciences, Inc. v. Merck & Co., Inc. et al., Case No. 5:13-cv-04057 (Judge Beth Freeman)

Gilead sued Merck on August 30, 2013, seeking a declaratory judgment that Gilead’s drugs Sovaldi and Harvoni, do not infringe Merck’s U.S. Patent Nos. 7,105,499 (“the ‘499 Patent”) and 8,481,712 (“the ‘712 Patent”).  Sovaldi and Harvoni are the brand names of sofosbuvir, an RNA polymerase inhibitor used to treat Hepatitis C therapeutically.  The patents-in-suit claim a Hepatitis C treatment using sofosbuvir, and the question raised by Gilead’s motion for summary judgment was whether the patents-in-suit provided adequate written description to practice the claimed methods as of the 2002 filing date of the patents. READ MORE

CLAIM CONSTRUCTION “GAMESMANSHIP”? Quantum Corporation’s Expert Ordered To Sit For Further Deposition On Claim Construction

Order Re Crossroads’ Motion To Strike, Quantum Corporation v. Crossroads Systems Inc., Case No. C 14-04293 WHA (Judge William Alsup)

Expert witnesses are often used during patent claim construction to offer extrinsic evidence relevant to the meaning of claim terms, such as how one skilled in the art would have understood the terms at the time of the invention. Yet, experts must be careful to avoid offering opinions on the ultimate meaning of claim terms, which is a question of law. This is a subtle balance that can be tricky to carry out in practice. As Judge Alsup’s recent opinion makes clear, an expert must be careful not to cross the line into “gamesmanship” territory when parsing “fact” opinions versus ultimate opinions on claim constructions. READ MORE

No Amendments and No Stay

Adaptix v. ZTE Corporation, et al. (Magistrate Grewal)

Magistrate Grewal recently issued two orders in related cases between plaintiff Adaptix and various defendants.

In the first order, he denied plaintiff’s request to amend its preliminary infringement contentions to reassert a theory of contributory infringement and add four additional accused products. Plaintiff argued that it learned of new information from a third-party deposition that gave rise to its contributory infringement theory and was diligent because it waited only 18 days after the deposition to seek amendment. READ MORE