Author Archives: Steven Callahan

IPR Fees Are Not Available Under Section 285 Of The Patent Act

Posted on July 28, 2020 by Steven Callahan

So holds the Federal Circuit in its June 4, 2020 Amneal v. Almirall decision (available here). In the case, the Federal Circuit denied Almirall’s request for fees incurred for work on an IPR filed against an Almirall patent by Amneal. … Continue reading →

Posted in Federal Circuit Court of Appeals | Comments Off on IPR Fees Are Not Available Under Section 285 Of The Patent Act

Trademark Owner Need Not Prove Willfulness To Obtain Defendant’s Profits

Posted on July 12, 2020 by Steven Callahan

On April 23, 2020, the Supreme Court issued its decision in Romag Fasteners v. Fossil, Inc. (decision available here). The Court found that a plaintiff can obtain the defendant’s profits even without showing that defendant willfully infringed the plaintiff’s trademark. … Continue reading →

Posted in U.S. Supreme Court | Comments Off on Trademark Owner Need Not Prove Willfulness To Obtain Defendant’s Profits

Litigation Funding Materials Ruled Irrelevant And Not Discoverable

Posted on June 20, 2020 by Steven Callahan

Here’s an important decision from Chief Judge Stark from the District of Delaware regarding the non-discoverability of communications with litigation funders. Chief Judge Stark found that defendants were not entitled to obtain discovery regarding (i) potential investments by third parties … Continue reading →

Posted in Developing Law, Discovery, Non-N.D. Tex. Notable Decisions | Comments Off on Litigation Funding Materials Ruled Irrelevant And Not Discoverable

Supreme Court Rules Copyright Does Not Extend To Annotations In A State’s Official Annotated Code

Posted on June 20, 2020 by Steven Callahan

On April 27, 2020, the Supreme Court issued its decision in Georgia v. Public.Resource.Org (available here). The Court found that Georgia could not copyright, via a third-party contractor under a work-for-hire agreement, the official version of its annotated code. Under … Continue reading →

Posted in U.S. Supreme Court | Comments Off on Supreme Court Rules Copyright Does Not Extend To Annotations In A State’s Official Annotated Code

Supreme Court Rules That PTAB’s Time-Bar Decisions Are Not Appealable

Posted on May 30, 2020 by Steven Callahan

On April 20, 2020, the Supreme Court issued its decision in Thryv, Inc. v. Click-to-Call Technologies, LP (available here). 35 U.S.C. § 314(d) provides that, with respect to inter partes reviews, “[t]he determination by the [Patent & Trademark Office’s] Director … Continue reading →

Posted in U.S. Supreme Court | Comments Off on Supreme Court Rules That PTAB’s Time-Bar Decisions Are Not Appealable

AAA Teaches Disgruntled Arbitration Claimant How To Litigate Like A Boss

Posted on May 14, 2020 by Steven Callahan

One might think that a non-profit like the American Arbitration Association (AAA), which spends the vast majority of its time administering arbitrations, might not know too much about litigation. But the Fifth Circuit’s April 7, 2020 decision (available here) in … Continue reading →

Posted in Fifth Circuit Court of Appeals | Comments Off on AAA Teaches Disgruntled Arbitration Claimant How To Litigate Like A Boss

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 →

Posted in Federal Circuit Court of Appeals | Comments Off on Artic Cat (Part I and II): Lots To Know About Patent Marking

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 →

Posted in Non-N.D. Tex. Notable Decisions, Practice Tips, Sanctions | Comments Off on Should You Communicate With Your Opponent’s Employees Without Your Opposing Counsel’s Permission? Likely Not.

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 →

Posted in Non-N.D. Tex. Notable Decisions, Practice Tips | Comments Off on E-Mail From Court to Court Coordinator, Instead of Signed Written Order, Is Sufficient to Trigger “Waiver Through Delay”

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 →

Posted in Fifth Circuit Court of Appeals | Comments Off on No, You Can’t Join Your Own IPR