In a Report and Recommendation issued December 7, 2017, Magistrate Judge Burke in the District of Delaware recommended that Amgen’s BPCIA complaint for infringement against Coherus Biosciences Inc. be dismissed with prejudice on the ground that prosecution history estoppel barred Amgen from bringing claims for infringement under the doctrine of equivalents.
In a dispute over a worldwide license agreement for elliptical machines, the court found enforceable a provision that required royalty payments after the expiration of U.S. patents, but before the expiration of a Chinese patent. Judge Lamberth, sitting with the Western District of Texas, issued the memorandum opinion on January 19, 2018.
Judge Denise Casper of the District of Massachusetts recently issued an order concluding that estoppel did not bar prior art from invalidity disclosures served before the filing of the IPR petition because the prior art was not raised during the IPR.
On November 1, 2017, District of Delaware Judge William Bryson granted defendants D&M Holdings Inc., D&M Holdings U.S. Inc. and Denon Electronics (USA), LLC’s (collectively, “D&M”) motion to strike part of the expert opinion of plaintiff Sonos, Inc.’s damages expert.
On September 9, 2017, an Eastern District of Texas magistrate judge issued a report and recommendation holding that a plaintiff was estopped from asserting its patent infringement claims because statements made in response to an inter partes review (IPR) petition constituted a disclaimer.
In a report and recommendation issued Tuesday, August 15, 2017, a magistrate judge in the Eastern District of Texas stated that failure to provide a patent examiner with a copy of a relevant post-grant review (PGR) institution decision does not make a patent unenforceable for inequitable conduct.
In Oil-Dri Corporates of America v. Nestle Purina Petcare Company, the court recently held that a defendant who has filed a parallel inter partes review (IPR) petition is estopped from raising invalidity grounds in the district court that were not, but reasonably could have been, raised in the defendant’s IPR petition. Oil-Dri, 1-15-cv-01067 (ILND August 2, 2017, Order). In this case, Purina raised several invalidity arguments in district court, some of which were not raised in Purina’s IPR petition. Id. at 5.
On August 3, 2017, Judge Mazzant of the Eastern District of Texas denied a motion to exclude the testimony of defendants’ expert regarding patentability for parroting arguments from defendants’ motion for summary judgement.