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A judge in the District of Delaware recently dismissed a
plaintiff s claims for indirect patent infringement and
willfulness-based enhanced damages because the complaint alleged
knowledge of the patents based solely on the complaint itself.
In that case, the plaintiff sought damages for post-suit
indirect infringement and willfulness for the first time in its
second amended complaint, alleging that the defendant possessed
knowledge of the patent since at least the filing of
the original complaint. The defendant moved to dismiss, arguing
that the plaintiff could not rely on the original complaint to
The Federal Circuit in
Apple Inc. v. Qualcomm Incorporated
handed down a decision on April 7, 2021 that provides guidance on
the determination of standing for patent licensees who wish to
contest the validity of a patent or patents in a licensed
portfolio. The decision also provides further guidance to
petitioners seeking appellate review after an unsuccessful validity
challenge before the Patent Trial and Appeal Board (PTAB).
More specifically, the recent decision by the Federal Circuit
reaffirms the requirement that a patent licensee show a specific
ascertainable injury in fact associated with the challenged patent
in order to have standing to raise a validity challenge in an
In
Fitbit, Inc. v. Valencell, Inc., IPR2017-00319,
Paper 73 (Apr. 5, 2021), on remand from the Federal Circuit, the
Board determined the patentability of several previously omitted
dependent claims and found them unpatentable as obvious.
Fitbit petitioned for
Inter partes review of
Valencell s patent directed to a method of generating data
output containing physiological and motion-related information,
arguing that several of its claims were obvious. In its
original Final Written Decision, the Board found the patent s
sole independent claim to be obvious. But the Board refused to
consider the obviousness argument of several dependent claims
because, in the Board s view, the obviousness challenge of
‘Govt must invoke Patents Act to step up manufacture of key drugs’
April 22, 2021
Now is ideal time to use compulsory licensing provision, says IP lawyer
As the country battles the Covid pandemic with shortage of life-saving drugs, the government could consider invoking the provisions of the Patents Act to bring in more manufacturers and ensure seamless supplies.
While the Centre has decided to allocate supplies of Remdesivir to 19 States/UTs with high burden of Covid cases, it has mapped manufacturers to States to smoothen the supply chain. States continue to complain of shortage.
Ashok Ram Kumar of Wordict-IP, an advocate specialising in Intellectual Property Law, opines that “It is the right time for the government to invoke and exercise Section 92 of the Patents Act, 1970, which deals with compulsory licence.” He asserts that “there had never been a situation of extreme emergency like the current Covid-19 pandemic, demanding the efficient working of a patent befor