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Full-Text Articles in Law
Joinder Of Unrelated Infringers As Defendants In Patent Litigation Under The Jurisprudence Of The United States District Court For Eastern District Of Texas—A Critical Review, Ping-Hsun Chen
Ping-Hsun Chen
On September 16, 2011, the American patent system started a new era because of the enactment of the Leahy-Smith America Invents Act (“AIA”). 35 U.S.C. § 299 was enacted to limit district court’s power to permit joinder of unrelated infringers as defendants in a single lawsuit. Before that, district courts apply Rule 20 of the Federal Civil Procedure. The Eastern District of Texas had permitted joinder only because the same patent was infringed. By introducing § 299, Congress intended to abrogate such approach. Later, the Federal Circuit in In re EMC limited the practice of Rule 20 and required a …
A Fake Right Of Priority Under The Cross-Strait Agreement On Intellectual Property Right Protection And Cooperation, Ping-Hsun Chen
A Fake Right Of Priority Under The Cross-Strait Agreement On Intellectual Property Right Protection And Cooperation, Ping-Hsun Chen
Ping-Hsun Chen
On June 26, 2010, Taiwan and China entered into a “Cross-Strait Agreement on Intellectual Property Rights Cooperation and Protection” (“Cross-Strait IP Agreement”). This Cross-Strait IP Agreement was renowned for China’s admission of a right of priority of Taiwanese patent applications or trademark applications. Under the TRIPS Agreement, China is obligated to admit a right of priority of Taiwanese applications, but it has never fulfilled such obligation. China’s particular concern is that a right of priority is rooted from the Paris Convention which only allows a state to join, so by admitting a right of priority of Taiwanese applications it may …
From The Unforeseeability Exception To Foreseeability Estoppel: The Federal Circuit’S Effort To Limit The Doctrine Of Equivalents, Ping-Hsun Chen
From The Unforeseeability Exception To Foreseeability Estoppel: The Federal Circuit’S Effort To Limit The Doctrine Of Equivalents, Ping-Hsun Chen
Ping-Hsun Chen
A person can infringe a patent under the doctrine of equivalents (“DOE”) which may be limited by prosecution history estoppel (“PHE”). The Supreme Court in Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 535 U.S. 722 (2002), finalized the basic doctrine of PHE in the context of claim amendment. A narrowing amendment of a claim results in a presumption that a patentee has surrendered the scope between the original claim and amended claim, but the patentee is allowed to rebut the presumption by proving any of three exceptions. Among those exceptions is the “unforeseeable” exception under which a patentee …
Problematic Approaches Of The Joinder Clause Under The America Invents Act By Federal District Courts, Ping-Hsun Chen
Problematic Approaches Of The Joinder Clause Under The America Invents Act By Federal District Courts, Ping-Hsun Chen
Ping-Hsun Chen
Before 35 U.S.C. § 299 was enacted, some minority district courts had permitted joinder of independent defendants only because the same patent was infringed. That gave a great incentive to non-practicing entities to sue as many defendants as possible in one suit. To resolve this problem, Congress created § 299(b) to abrogate the minority view of joinder. The Federal Circuit in In re EMC Corp. also created a test requiring finding of “an actual link between the facts underlying each claim of infringement.” The Federal Circuit provides six EMC factors for lower courts to determine permissive joinder. However, the Eastern …
From The Unforeseeability Exception To Foreseeability Estoppel: The Federal Circuit’S Effort To Limit The Doctrine Of Equivalents, Ping-Hsun Chen
From The Unforeseeability Exception To Foreseeability Estoppel: The Federal Circuit’S Effort To Limit The Doctrine Of Equivalents, Ping-Hsun Chen
Ping-Hsun Chen
A person can infringe a patent under the doctrine of equivalents (“DOE”) which may be limited by prosecution history estoppel (“PHE”). The Supreme Court in Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 535 U.S. 722 (2002), finalized the basic doctrine of PHE in the context of claim amendment. A narrowing amendment of a claim results in a presumption that a patentee has surrendered the scope between the original claim and amended claim, but the patentee is allowed to rebut the presumption by proving any of three exceptions. Among those exceptions is the “unforeseeable” exception under which a patentee …