For our weekly SoCal IP Institute meeting on Monday, January 29, 2018, we will discuss the following cases:
Presidio v. American Technical Ceramics Corp, (CAFC November 21, 2018) (available here). Presidio sued ATC for patent infringement on a patent for a multilayer capacitor design. While the district court case was pending, ATC requested an ex parte reexamination of the patent. The patent board found the patent obvious, which prompted Presidio to amend the claims. At trial the court held the asserted claims were infringed and not invalid. They awarded damages and granted a permanent injunction. The district court limited damages due to intervening rights. The CAFC affirmed but also reversed the award of lost profits and remanded for the lower court to determine a reasonable royalty.
Smith & Nephew v. Arthrex, (CAFC January 24, 2018) (available here). Smith & Nephew petitioned for an IPR against Arthrex’s ‘541 patent. Arthrex promptly disclaimed all the challenged claims, which caused the PTAB to refuse institution of the IPR and enter an adverse judgment under 37 C.F.R. § 42.73(b). The CAFC affirmed. A dissenting opinion by Judge Newman argued that the PTAB could not give an adverse judgment because they failed to institute an IPR.
All are invited to join us on January 29, 2018, at noon in our Westlake Village office. This activity is approved for 1 hour of MCLE credit. If you will be joining us, please RSVP to Elisha Manzur by 9 am Monday morning.