Claims for Pre-issuance Damages Require Actual Notice of and Substantially Identical Claims between the Published Application and the Issued Patent

The Federal Circuit recently vacated a $20 million jury verdict in favor of a patentee and remanded with instructions to dismiss the case for lack of subject matter jurisdiction, finding that the patentee did not own the asserted patents at the time it filed suit and therefore lacked standing.

The Federal Circuit recently affirmed a Patent Trial and Appeal Board decision finding claims that had been subject to an ex parte reexamination unpatentable. As a threshold issue, the court held that IPR estoppel under 35 USC § 315(e)(1) does not apply to ongoing ex parte reexaminations. Accordingly, the Patent Office did not err in continuing the reexamination after issuing final written decisions in co-pending IPRs.

The District of Delaware recently denied a defendant’s motion to dismiss plaintiff’s demand for enhanced damages based on willful infringement pursuant to 35 U.S.C. § 284, explaining that neither a demand for damages under § 284 nor an accusation of willful infringement amount to a claim for relief that can be subject to dismissal under Rule 12(b)(6).

The Federal Circuit recently denied a petition for a writ of mandamus that challenged the PTO Director’s reliance on “settled expectations” to discretionarily deny two inter partes review (IPR) petitions. In so doing, the court explained that, while it was not deciding whether the Director’s use of “settled expectations” was correct, the petitioner’s arguments about what factors the Director may consider when deciding whether to institute an IPR or post-grant review (PGR) are not generally reviewable and did not provide sufficient basis for mandamus review here.