Expert Opinion on Reasonable Royalty Excluded As Unreliable Because It Was Based on a Litigation Verdict and Did Not Account for Litigation-Related Economic Circumstances

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.

District courts are split on whether a complaint can provide the required knowledge for post-suit indirect and willful infringement in that same lawsuit. Chief Judge Connolly in the District of Delaware recently confirmed that, consistent with his prior opinions, the complaint cannot serve as the basis for knowledge for either a claim of post-suit indirect infringement or a demand for willfulness-based enhanced damages in that lawsuit.