Roy H. Wepner

In October 2025, a federal district judge with an active docket of patent suits addressed the question of whether the filing (and, presumably, the service) of a complaint for patent infringement in and of itself precludes the defendant from asserting that it was unaware of the patent (and, thus, could not be a willful infringer). The bad news for plaintiffs: the answer was no. The court also addressed the question of whether a defendant could utilize a Rule 12(b) (6) motion to dismiss a plaintiff’s assertion of entitlement to enhanced damages under 35 U.S.C. §284 for willful infringement. The bad news for defendants: the answer was no again.

A petition for certiorari is currently pending before the United States Supreme Court which raises serious concerns as to fundamental principles of patent law, especially relating to the enablement requirement of 35 U.S.C. §112.  In the decision by the U.S. Court of Appeals for the Federal Circuit which gave rise to the petition in question, an “after-arising technology” exception was carved out from the requirement that a patent claim as construed must be enabled as to its full scope. The ruling did violence to other important rules, but it also has potential far-reaching consequences that have not been explored. It is essential that the Supreme Court grant certiorari to steer the law in the right direction.

In March 2025, the U.S. Court of Appeals for the Fourth Circuit held that a service mark owner with all of its physical assets located along the Pacific coast could maintain a suit for service mark infringement against a company using a similar mark, on the same services, whose physical assets were all located along the Atlantic coast. It based its ruling on the fact that both companies effectively competed nationally, and had solicited and landed customers in each other’s territory. As we navigate this 21st century moment, when online advertising and commerce have become ubiquitous, one cannot help wonder: are the days in which certain marks only provide protection in local or regional areas behind us?

In Novartis Pharms. Corp. v. Torrent Pharma Inc., the U. S. Court of Appeals for the Federal Circuit shut down efforts to market a generic version of the heart disease drug ENTRESTO which is sold under a patent which claims a “combination” of two drugs, valsartan and sacubitril. Because the proposed generic drug accused of infringement was a “complex” of bonded valsartan and sacubitril, the patentee Novartis needed to urge and had successfully urged that “combination” be construed to include both bonded complexes and non-bonded (i.e. separate) components. Absent such construction, the accused product would not have infringed.

On November 16, 2024, the United States Court of Appeals for the First Circuit affirmed a district court’s denial of a preliminary injunction, in which one Fall River, Massachusetts, business inspired by the legend of Lizzie Borden unsuccessfully asserted trademark rights against another Lizzie Borden-inspired business located right next door. The ultimate appellate decision seems largely justified, given the deferential scope of review applied by the First Circuit.