Monthly Archives: April 2020

Artic Cat (Part I and II): Lots To Know About Patent Marking

Posted on April 16, 2020 by Steven Callahan

In 2017 and 2020, the Federal Circuit issued two Arctic Cat decisions (available here and here) that are important for any patent litigator (and patent owner) to understand. Both decisions deal with patent marking and thus patent damages. By law, … Continue reading →

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Should You Communicate With Your Opponent’s Employees Without Your Opposing Counsel’s Permission? Likely Not.

Posted on April 16, 2020 by Steven Callahan

I know it’s technically allowed in some instances but I’ve never seen a situation where contacting your opponent’s employees directly (as opposed to, e.g., seeking their depositions) did any good. So I avoid it. The district court (S.D.N.Y.) recently issued … Continue reading →

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E-Mail From Court to Court Coordinator, Instead of Signed Written Order, Is Sufficient to Trigger “Waiver Through Delay”

Posted on April 16, 2020 by Steven Callahan

Things in Texas state court are a bit different from federal court. Take the Fifth District Court of Appeals’ decision In re Yamaha Golf-Car Company (available here). In the case, the trial court e-mailed her court administrator stating that the … Continue reading →

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No, You Can’t Join Your Own IPR

Posted on April 9, 2020 by Steven Callahan

On March 18, 2020, the Federal Circuit issued its decision in Facebook, Inc. v. Windy City Innovations, LLC (available here). At issue was whether Facebook could join its own IPR after the 1-year bar date. The Federal Circuit held that … Continue reading →

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Judge Godbey Stays Patent Case Pending IPR, Pre-IPR Institution

Posted on April 9, 2020 by Steven Callahan

On January 23, 2020, Judge Godbey issued a decision in Uniloc 2017 LLC v. LG Electronics (available here). Nine months after Uniloc filed suit, LG filed a petition for inter partes review of the patent-in-suit. Although the PTAB had not … Continue reading →

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Judge Kinkeade Denies Motion for Leave to Proceed Without Local Counsel

Posted on April 9, 2020 by Steven Callahan

On February 6, 2020, Judge Kinkeade denied a motion for leave to proceed without local counsel (minute order available here). Judge Kinkeade required the defendant to designate local counsel within 14 days and further provided that both local counsel and … Continue reading →

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Judge Pittman Dismisses Lawsuit Without Prejudice For Failure To Comply With Local Counsel Requirement

Posted on April 9, 2020 by Steven Callahan

On March 11, 2020, Judge Pittman entered an order (available here) in McDermott v. Salem Media Group. The Court has previously required the plaintiff to comply with Local Rule 83.10 (requiring local counsel) within fourteen days from February 25, 2020. … Continue reading →

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Federal Circuit Finds That Retroactive Application Of IPR Proceedings To Pre-America Invents Act Patents Does Not Constitute An Unconstitutional Taking Under The Fifth Amendment

Posted on April 9, 2020 by Steven Callahan

On July 30, 2019, the Federal Circuit issued its decision in Celgene Corp. v. Peter (available here). The Federal Circuit held that the retroactive application of inter partes review proceedings to pre-America Invents Act patents did not constitute an unconstitutional … Continue reading →

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Supreme Court Rules That States Cannot Be Sued For Copyright Infringement

Posted on April 5, 2020 by Steven Callahan

On March 23, 2020, the Supreme Court issued its decision in Allen v. Cooper (available here). At issue was Congress’ attempt to strip the States of their sovereign immunity for copyright infringement. In 1999, the Supreme Court struck down Congress’ … Continue reading →

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Amendment to Local Rules

Posted on April 2, 2020 by Steven Callahan

Effective September 3, 2019, the Local Rules were amended (see Special Order No. 2-89, available here). The Court repealed L.R. 5.1 (specifying that the delivery of the notice of electronic filing constitutes service on each party who is a registered … Continue reading →

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