IP UPDATE
Exploring the latest in intellectual property law
IP UPDATE
Exploring the latest in intellectual property law
Sanctions
Subscribe to Sanctions's Posts

Invalidity alone does not render a case exceptional

by | May 28, 2026 |

Addressing fee shifting under 35 U.S.C. § 285 and sanctions under 28 U.S.C. § 1927, the US Court of Appeals for the Federal Circuit affirmed in part and reversed in part a judgment dismissing a patent infringement complaint and awarding attorneys’ fees and costs, finding that the weakness of the plaintiff’s position, without more, did not justify a finding of exceptionality, and that counsel’s lack of diligence did not rise to the bad-faith conduct required for sanctions. mCom IP, LLC v. City National Bank of Florida, Case No. 24-2089 (Fed. Cir. May 15, 2026) (Dyk, Mayer, Taranto, JJ.)

mCom IP sued City National Bank of Florida in September 2023, asserting a patent directed to systems and methods for integrating financial institutions’ “e-banking touch points,” such as ATMs and online banking portals. Earlier that year, an inter partes review (IPR) initiated by Unified Patents resulted in all but four claims being found unpatentable as obvious under 35 U.S.C. § 103. mCom’s district court complaint asserted those four surviving claims.

The district court struck mCom’s initial complaint as a “shotgun pleading” and dismissed the amended complaint with prejudice for failure to state a claim. It also concluded that the asserted claims were invalid on the same obviousness grounds addressed in the IPR and awarded attorneys’ fees under § 285, finding the case exceptional, and imposed sanctions under § 1927 based on counsel’s litigation conduct. mCom appealed.

The Federal Circuit affirmed the dismissal but reversed the fee award and sanctions. The Court addressed two issues: whether the case was “exceptional” under § 285 and whether counsel had unreasonably and vexatiously multiplied the proceedings under § 1927.

Under § 285, a case is exceptional if it “stands out” based on the substantive strength of a party’s position or the unreasonable manner of litigation. The Federal Circuit rejected each basis relied on by the district court.

First, although the asserted claims were ultimately found invalid, the Federal Circuit emphasized that invalidity alone does not render a case exceptional. Rather, awarding fees requires a showing that the claims were “unusually or extraordinarily weak.” That standard was not met here where the asserted claims survived IPR and carried a presumption of validity, and where the burden of proof for invalidity in district court remains higher than in IPR.

Second, the Federal Circuit found that pleading deficiencies did not support exceptionality. The initial complaint’s defects were “purely formal,” and the amended complaint’s failure to state a claim, without more, did not render the overall litigation conduct unreasonable.

Third, the Federal Circuit rejected reliance on City National’s purported license defense, noting that no license had been established on the record.

Finally, the Federal Circuit found insufficient support for the contention that mCom pursued nuisance-value settlements, explaining that City National failed to provide evidence regarding settlement amounts or to tie prior litigation to the patent at issue.

The Federal Circuit also reversed the sanctions imposed under § 1927. Applying Eleventh Circuit law, the Federal Circuit explained that sanctions require conduct [...]

Continue Reading



read more

No escape from fees and sanctions for reckless litigation conduct

by | Dec 4, 2025 |

The US Court of Appeals for the Federal Circuit affirmed attorneys’ fees awards against EscapeX IP, LLC, finding the case “exceptional” under 35 U.S.C. § 285, and upheld sanctions under 28 U.S.C. § 1927 based on counsel’s reckless litigation conduct. EscapeX IP, LLC v. Google LLC, Case No. 24-1201 (Fed. Cir. Nov. 25, 2025) (Taranto, Stoll, Stark, JJ.)

EscapeX brought suit against Google in the Western District of Texas, alleging that Google’s YouTube Music product infringed its patent directed to systems for generating artist-specified dynamic albums. After Google pointed out that the accused features were absent from YouTube Music and later demonstrated that the accused “Auto-Add” feature predated the patent’s priority date, EscapeX amended its complaint to list the correct product and refused to dismiss the case.

Shortly after EscapeX sued Google, its patent was invalidated under § 101 in a separate litigation. EscapeX did not appeal that ruling, and Google requested that EscapeX dismiss the case. In response, EscapeX filed what it characterized as a “joint stipulation of dismissal,” which Google contested because it had not agreed to such a filing. Google moved for attorneys’ fees under § 285, arguing that EscapeX had filed frivolous claims and unreasonably prolonged the litigation. The district court agreed, awarding Google its fees.

EscapeX then filed a Rule 59(e) motion to amend the judgment, attaching declarations from its CEO and an engineer to show pre-suit diligence. The district court denied the motion, finding that the evidence was not “newly discovered” and the motion was frivolous. Google successfully sought additional fees and sanctions under § 1927, resulting in an additional $63,525 jointly and severally against EscapeX and its attorneys. EscapeX appealed.

The Federal Circuit affirmed the district court decisions and found no abuse of discretion. The Court concluded that the record supported the finding that EscapeX had not conducted any pre-suit investigation and that the case was “frivolous from the start.” This conclusion was also supported by Google’s early, detailed warnings against filing the suit and EscapeX’s general nonresponsiveness.

Regarding the Rule 59(e) motion, the Federal Circuit agreed that the declarations were not “newly discovered evidence” because they were always within EscapeX’s control and knowledge. The Court rejected arguments of “manifest injustice,” which were not raised in district court and had no merit.

Finally, the Federal Circuit affirmed the sanctions under § 1927, finding that EscapeX’s counsel acted recklessly by filing a frivolous motion that multiplied proceedings. The Court noted that zealous advocacy does not excuse filing baseless motions. The Court upheld Google’s fees and sanctions in their entirety, with costs related to the appeal also awarded to Google.



read more

Case closed: Commission sanctions ruling isn’t an import decision

by | Jun 26, 2025 |

The US Court of Appeals for the Federal Circuit dismissed an appeal for lack of jurisdiction, finding that a denial of sanctions at the International Trade Commission was not a “final determination” under trade law because it did not affect the exclusion of imported goods. Realtek Semiconductor Corp. v. ITC and Future Link Systems, LLC, Case No. 23-1187 (Fed. Cir. June 18, 2025) (Reyna, Bryson, Stoll, JJ.)

In 2019, Future Link entered into a license agreement with MediaTek, Inc. (not a party to the present litigation), which included a provision for a lump-sum payment if Future Link filed a lawsuit against Realtek. Future Link subsequently initiated a patent infringement complaint against Realtek before the Commission. During the proceedings, Future Link settled with a third party and determined that the settlement resolved the underlying dispute, prompting it to notify Realtek and ultimately withdraw its complaint. Realtek moved for sanctions, citing the MediaTek agreement as improper, but the administrative law judge (ALJ), while expressing concern about the agreement’s lawfulness, found no evidence it influenced the complaint and denied sanctions. The Commission terminated the investigation after no petition for review of the ALJ’s termination order was filed. Realtek then petitioned the Commission to review the denial of sanctions, but the Commission declined, closing the sanctions proceeding. Realtek appealed to the Federal Circuit, not challenging the investigation’s termination but seeking an order requiring Future Link to pay a fine based on the alleged impropriety of its agreement with MediaTek.

Realtek argued that the Commission and the ALJ violated the Administrative Procedure Act (APA). In response, the Commission and Future Link not only defended the denial on the merits but also challenged the Federal Circuit’s jurisdiction and Realtek’s standing to appeal. The Court agreed that it lacked jurisdiction under 28 U.S.C. § 1295(a)(6), which only authorizes review of final determinations under specific subsections of Section 337 of the Tariff Act of 1930 (19 U.S.C. § 1337). Because the Commission’s denial of sanctions under subsection (h) does not constitute a “final determination” under § 1337(c), the Court declined to address standing or the merits of the sanctions issue.

The Federal Circuit emphasized that a “final determination” within the meaning of § 1295(a)(6) refers to decisions affecting the exclusion of imported articles, such as those made under subsections (d), (e), (f), or (g) of § 1337. Realtek argued that the Commission’s denial of its sanctions request qualified as a final merits decision, but the Court disagreed, citing long-standing precedent, including its 1986 decision in Viscofan, S.A. v. ITC, that limits appellate jurisdiction to exclusion-related rulings. Because the sanctions decision had no bearing on whether products were excluded from importation, the Court held that it lacked the authority to review and dismissed the appeal.



read more

Don’t Tread on Illinois’ Absolute Litigation Privilege

by | Oct 17, 2024 |

Addressing when Illinois law’s “absolute litigation privilege” bars certain counterclaims, the US Court of Appeals for the Federal Circuit affirmed a district court’s summary judgment finding that the plaintiff lacked a valid trade dress and reversed the district court’s decision that declined to apply the absolute litigation privilege as a complete defense to all of the alleged infringer’s counterclaims. Toyo Tire Corp v. Atturo Tire Corp., Case No. 22-1817 (Fed. Cir. Oct. 4, 2024) (Moore, Clevenger, Chen, JJ.) (nonprecedential).

Toyo and Atturo are competitors in the tire design business. After perceiving widespread copying of its tire designs, Toyo filed a district court action asserting design patent infringement and trade dress infringement against Atturo. Atturo asserted counterclaims, including false designation of origin under the Lanham Act and several state law counterclaims. The district court eventually dismissed with prejudice Toyo’s design patent infringement claims and proceeded with just the trade dress infringement claim.

A primary issue in the case was the description of the asserted trade dress. In its complaint, Toyo identified its trade dress merely as “the overall appearance” of its line of tires. Over the course of discovery, disputes arose concerning Toyo’s failure to distinctly describe its asserted trade dress. Toyo answered an interrogatory that requested this information with a non-limiting definition. The district court compelled Toyo to provide a more specific answer, which Toyo did by providing highlighted images.

Toyo’s fact witness was subsequently deposed under Fed. R. Civ. P. 30(b)(6) and gave answers that were inconsistent with Toyo’s interrogatory response. This led the district court to compel more testimony on what exactly the asserted trade dress contained, and which tire features met the definition of the trade dress, and which did not. On the advice of counsel, the corporate witness declined to answer more than 100 different questions. Toyo’s inability to describe its trade dress continued into expert discovery. When it served its expert reports, Toyo introduced yet another aspect of its trade dress – that the trade dress only included two-dimensional aspects. Toyo introduced this new argument to support the requirement that to qualify as trade dress the designated feature must be nonfunctional.

Atturo moved for sanctions. In granting the sanctions, the district court barred Toyo from asserting only the two-dimensional aspects of the trade dress, precluding Toyo from continually shifting its position because doing so “would effectively lead to trial by ambush.” Having struck the only argument that could save the trade dress from invalidity, the district court granted summary judgment of invalidity on both functionality and lack of secondary meaning.

Trial then proceeded only on Atturo’s counterclaims. The jury returned a verdict in favor of Atturo on six of the counterclaims, awarding $10 million in compensatory damages and $100 million in punitive damages. The district court set aside the jury verdict as it related to counterclaims of defamation and liability under the Illinois Deceptive Trade Practices Act. Both parties appealed.

The Federal Circuit affirmed the district court’s issuance of discovery sanctions, and the grant of [...]

Continue Reading



read more

Back in the USA: Seventh Circuit Lifts Sanctions, Anti-Suit Injunction Contempt

by | May 2, 2024 | ,

The US Court of Appeals for the Seventh Circuit stayed a district court’s contempt sanctions relating to an anti-suit injunction violation, finding that the adjudicated infringer had done all it could to withdraw from the other proceeding in China. Motorola Solutions, Inc. v. Hytera Communications Ltd., Case No. 24-1531 (7th Cir. Apr. 16, 2024) (Hamilton, Brennan, St. Eve., JJ.) (per curiam).

Motorola Solutions previously obtained a $500 million judgment against Hytera for trade secret misappropriation and infringement of copyrighted code used in Motorola’s two-way radio systems. Motorola subsequently brought contempt proceedings after Hytera launched a new line of two-way radio systems, asserting that the new radio systems also used the copyrighted code. As part of the contempt proceeding, the district court imposed an anti-suit injunction ordering Hytera to “refrain from further pursuing or enforcing in any way” a lawsuit that Hytera had filed in the Shenzhen Intermediate People’s Court in China seeking a declaratory judgment that the new line of radios did not infringe Motorola’s intellectual property.

After evidence emerged that Hytera continued to participate in the Chinese proceeding, the district court issued an order directing Hytera to withdraw from the Chinese proceeding. Just a few days later the district court issued an order finding that Hytera had violated the anti-suit injunction by continuing to participate in the Chinese proceeding and imposed contempt sanctions, including a worldwide suspension of Hytera’s sales of two-way radio products; a fine of $1 million per day; and worldwide notice of the sanctions and prohibitions to customers, distributors and others. A few days after the order issued, Hytera filed an appeal.

At the same time, Hytera filed a petition with the Chinese court seeking to withdraw the declaratory judgment action and seeking the return of all evidence from that court. Less than a week later, Motorola appeared before the Chinese court. Because of the anti-suit injunction, Hytera did not appear at the hearing. At the hearing, the Chinese court denied Hytera’s motion to withdraw. Later that same afternoon, the Chinese court summoned Hytera and thereafter issued a short order granting the motion to withdraw.

Despite the Chinese court’s decision to grant Hytera’s motion to withdraw, the district court did not lift the sanctions. The district court expressed concern about a scenario in which a written order “technically withdraws the action” but comes with “a whole series of other consequences that generates duplicative litigation . . . and thereby undermines the whole purpose of the anti-suit injunction and the subsequent contempt proceedings.” The district court also noted that Hytera had not yet produced a promised log of ex parte communications between it and the Chinese court, and thus the district court could not be sure that Hytera was not using the Chinese court’s ex parte procedure to push for a favorable written order behind closed doors. Under the pressure of the continued contempt sanctions, Hytera repeatedly asked the Chinese court to clarify the status and effect of the order granting its withdrawal.

On appeal before the [...]

Continue Reading



read more

I Hear Ya: Claim Terms Not as Narrow as Features in Specification

by | Feb 29, 2024 |

The US Court of Appeals for the Federal Circuit vacated a district court’s final judgment of noninfringement, finding that the district court improperly narrowed the constructions of certain claim terms to particular features recited in the specification. Promptu Sys. Corp. v. Comcast Corp., Case No. 22-1939 (Fed. Cir. Feb. 16, 2024) (Moore, Prost, Taranto, JJ.)

Promptu filed a lawsuit against Comcast alleging infringement of two patents. The patents describe and claim subject matter generally related to voice recognition but have materially different specifications. The first patent describes using remote voice recognition systems to deliver content in response to a user’s speech request (content delivery patent), while the second patent describes using remote voice recognition systems to control a user’s television set based on a user’s speech command (control patent).

The content delivery patent’s representative claim recites a method for using a “back channel containing a multiplicity of identified speech channels from a multiplicity of user sites presented to a speech processing system at a wireline node in a network supporting at least one of cable television delivery and video delivery” as well as a “method of operating at least part of a speech recognition system coupled to a wireline node in a network [for] processing a multiplicity of received identified speech channels to create a multiplicity of identified speech content.” Meanwhile, the claim of the control patent recites “a centralized multi-user voice operated television control system, comprising . . . a centralized processing station configured to receive and process second output from a multitude of television set top boxes by applying voice recognition.”

During the underlying district court proceeding, the district court adopted claim constructions proposed by Comcast. Based on those claim constructions, Promptu stipulated to and moved for entry of a final judgment of no infringement. After the district court granted Promptu’s motion, Promptu appealed.

Promptu challenged the district court’s construction of three claim limitations from the content delivery patent (“back channel,” “multiplicity of received identified speech channels” and “speech recognition system coupled to a wireline node”) and one claim limitation from the control patent (“centralized processing station”). In accordance with long-standing precedent, the Federal Circuit reviewed claim construction by affording the words of the claims their ordinary meaning in the context of the claims and specification.

The Federal Circuit concluded that the district court erred by narrowly construing “back channel” in the content delivery patent as being limited to a “fixed band of frequencies or time slot(s) for transmitting signals to a speech processing system or engine” because nothing in the claim language or the specification required limitation to a “fixed band of frequencies or time slot.” To the contrary, the specification of the patent disclosed the back channel broadly while recognizing the possibility of using different protocols and formats along different subsections of the path or route from user site to speech recognition system. Given the breadth of the techniques for the back channel disclosed in the specification, the Court found no reason to narrow the claims [...]

Continue Reading



read more

We Meant It – No Incorporation by Reference

by | Feb 22, 2024 |

The US Court of Appeals for the Federal Circuit issued a sua sponte order regarding the impermissibility of incorporating by reference arguments from one brief into another, especially when doing so causes the brief to exceed the permitted word count. Promptu Sys. Corp. v. Comcast Cable Commc’ns, LLC, Case No. 22-1093 (Fed. Cir. Feb. 16, 2024) (Moore, CJ; Prost, Taranto, JJ.) (per curiam).

On January 11, 2024, the Federal Circuit heard oral arguments in four related cases involving Promptu and Comcast. During oral argument, the Court asked counsel for the appellee to submit a brief within 10 days, totaling no more than 10 pages, to show why he should not be sanctioned for attempting to incorporate by reference multiple pages – almost 2,000 words – of argument from the brief in one case into another, thereby causing the brief to exceed the word limit.

The Federal Circuit recounted that it has “repeatedly held” that incorporating by reference to exceed word count is not permitted, citing its holdings on this issue in Microsoft v. DataTern (2014) and more recently in Medtronic v. Teleflex Life Sciences (2023). Appellee counsel responded that he was unaware of the Microsoft decision until the appellant’s reply brief had already been filed. The Court accepted his assertion but noted with disapproval that the precedential Microsoft decision admonished “the exact same law firm before us now for the exact same behavior,” and that once made aware of the Microsoft decision, counsel did nothing to remedy the impropriety.

Practice Note: The Federal Circuit did not award sanctions against appellate counsel but sternly warned future litigants that it is improper to incorporate by reference arguments from one brief into another unless in compliance with Fed. R. App. P. 28, and that such incorporation is never permitted if it results in exceeding the applicable word limit. The Court stated that going forward, such a violation “will likely result in [an award of] sanctions.”



read more

PTO Director Requests Input on Patent Trial & Appeal Board Decision Regarding Duty of Candor

by | Nov 9, 2023 |

On May 3, 2023, the Patent Trial & Appeal Board granted a motion for sanctions brought by Spectrum Solutions LLC against Longhorn Vaccines & Diagnostics LLC.[1] The resulting sanctions order canceled five Longhorn patents. The Board found that Longhorn failed to meet its duty of candor by selectively and improperly withholding material results inconsistent with its patentability arguments directed to the canceled claims covering chemical compositions, collection systems and methods for biological specimen collection, including preserving biological samples, killing pathogens and preventing nucleic acid degradation. Now, US Patent & Trademark Office (PTO) Director Katherine Vidal has initiated sua sponte review of the Board’s sanctions order.

In her order issued October 27, 2023, the Director authorized further briefing by both parties, as well as amicus curiae briefs in response to the Board’s decision and analysis for the Director’s review. The Director particularly seeks input on the following issues in the context of situations where relevant factual evidence has been withheld during an America Invents Act proceeding:

  • Which PTO regulations are implicated? Do such regulations include 37 C.F.R. § 1.56?
  • Is it an appropriate sanction for the Board to deem the claims unpatentable in its written decision? Is such a sanction proportionate to the harm caused by the party, taking into account the integrity of the patent system?
  • What other sanctions are appropriate, either in addition to or in place of applying adverse judgment in a final written decision to deem claims unpatentable?

Amicus briefs (of no more than 20 pages) limited to the issues and questions identified above should be submitted to Director_PTABDecision_Review@uspto.gov no later than four weeks after the October 27, 2023, entry date of the order.

For further details, see Order (Paper 133) in each of the listed IPR proceedings.

________________________________________________________________________________

[1] See IPR2021-00847 (US 8,084,443), IPR2021-00850 (US 8,293,467), IPR2021-00854 (US 8,669,20), IPR2021-00857 (US 9,212,399) and IPR2021-00860 (US 9,683,256).



read more

CEO Punches Ticket and Avoids Sanctions Based on Receiving Confidential Documents

by | Jun 29, 2023 |

Addressing protective order violations, the US Court of Appeals for the Fifth Circuit largely vacated a district court’s sanctions order. The Court explained that sanctions must comply with due process, barring parties from future litigation should be treated as a “death-penalty” sanction and damages calculations require specific factfinding. CEATS, Inc. v. TicketNetwork, Inc., Case No. 21-40705 (5th Cir. June 19, 2023) (Elrod, Haynes, Willett, JJ.)

To settle a long-running dispute, TicketNetwork licensed several patents from CEATS, a non-practicing patent assertion entity. Several years into the license, all of the licensed patents were invalidated in an unrelated litigation. TicketNetwork promptly stopped paying royalties and filed suit seeking a declaration that the license agreement was unenforceable. CEATS counterclaimed for breach of contract.

During discovery, CEATS requested TicketNetwork’s list of affiliates, which TicketNetwork refused to produce, citing its highly confidential nature. After two discovery hearings, the district court ordered TicketNetwork to produce the affiliate list but specifically prohibited CEATS from using the list for any purpose other than use in the present litigation.

At trial, a jury found that TicketNetwork breached the license, and the district court awarded attorneys’ fees and costs to CEATS. After the jury verdict, CEATS CEO Milford Skane asked his litigation consultants for a “non-confidential” list of TicketNetwork’s affiliates. The consultants gave Skane the confidential list, which was promptly used in settlement negotiations with TicketNetwork. TicketNetwork filed for sanctions, requesting damages from CEATS and an injunction preventing CEATS from suing or seeking licenses from the listed affiliates.

The district court ordered an investigation and, after two years of inquiry and an all-day evidentiary hearing, found that Skane, the consultants and CEATS all violated the protective order and were jointly and severally liable to TicketNetwork. As sanctions, the district court awarded $500,000 in attorneys’ fees (using a billing rate nearly double the one it used when calculating CEATS’s fees) and barred Skane, the consultants and CEATS from suing or seeking licenses from any of TicketNetwork’s affiliates.

The sanctioned parties appealed and argued:

  • The district court violated due process by finding Skane and the consultants personally liable without giving them notice or opportunity to respond.
  • The district court erred by barring the parties without a finding of bad faith.
  • The district court’s damages calculation was unsupported.

The Fifth Circuit began by addressing the sanctions against Skane and the litigation consultants. The Court explained that sanctions require due process, which includes both fair notice and the opportunity to defend against the claim. The Court observed that the first time Skane and the consultants were made aware that they could be sanctioned was in the sanctions order itself—and their only opportunity to defend themselves took place after that order. Given the lack of any advance notice, the Fifth Circuit concluded that due process had not been satisfied and vacated the monetary sanctions against Skane and the consultants.

The Fifth Circuit also vacated the bar preventing Skane, the consultants and CEATS from suing or seeking licenses from any of the affiliates. Core [...]

Continue Reading



read more

Neither Narrow Proposed Claim Construction nor Work Product Claim Justify Withholding Material Factual Information

by and | Jun 1, 2023 |

The Patent Trial & Appeal Board of the US Patent & Trademark Office (PTO) canceled all challenged claims across five patents because the patent owner failed to meet its duty of candor by selectively and improperly withholding material information that was inconsistent with its patentability arguments. Spectrum Solutions, LLC v. Longhorn Vaccines & Diagnostics, LLC, IPR2021-00847; -00850; -00854; -00857; -00860 (PTAB May 3, 2023) (Braden, Yang, Derrick, Pollock, APJs) (per curiam) (Braden, APJ concurring).

The Board instituted inter partes reviews (IPRs) against five Longhorn patents based on petitions filed by Spectrum. During the proceedings, Longhorn filed motions to amend, after which the Board issued preliminary guidance suggesting that Spectrum established a reasonable likelihood that the proposed substitute claims were unpatentable. Longhorn engaged Assured Bio Labs (ABL) to conduct biological testing that would support its arguments distinguishing a prior art reference, but Longhorn made attorney work product objections in Spectrum’s ABL depositions and withheld testing data inconsistent with its arguments on the patentability of the original and proposed substitute claims. The Board subsequently allowed additional questioning on certain ABL testing, after which Spectrum filed a motion for sanctions, requesting judgment against Longhorn, a finding that the prior art reference taught the claim limitations and precluding Longhorn from contesting the finding, and an award to Spectrum of compensatory expenses, including attorneys’ fees.

The Board determined that sanctions of adverse judgment as to all challenged claims was appropriate because Longhorn failed to meet its duty of candor and good faith. The Board explained that parties have a duty of candor and good faith before the Board that requires any factual contentions to be well supported by evidence. Parties have “a duty to disclose to the [PTO] all information known . . . to be material to patentability.” (37 C.F.R. §1.56(a).) Information is material to patentability when it is “not cumulative to information already of record or being made of record in the application and . . . it refutes, or is inconsistent with, a position the applicant takes in . . . asserting an argument of patentability.” Taking a position contrary to any known fact while shielding factual information from the Board violates the duty of candor and good faith to the PTO, even if the party may otherwise withhold the information as being immaterial to patentability or privileged.

The Board criticized Longhorn’s proposed claim constructions as too narrow and contrary to the express language in both the original and proposed substitute claims. The Board explained that although Longhorn was free to maintain arguments grounded on Longhorn’s claim constructions, that did not excuse Longhorn’s duty of candor and good faith dealing, including disclosing material information relating to the Board’s preliminary claim constructions. Longhorn could not “simply withhold information” that the PTO would find material to patentability and should instead contest the Board’s constructions at trial.

The Board also explained that Longhorn took an overly strict view of what was material to claim patentability and a lax view as to the duty of candor [...]

Continue Reading



read more

BLOG EDITORS

Paul Devinsky

Amol Parikh

Jodi Benassi

STAY CONNECTED

Subscribe

TOPICS

ARCHIVES