ITC Confirms that a Disclaimer from a Later Patent Applies to the Same Term in an Earlier Related Patent

In a November 6, 2024 opinion in Certain Computing Devices Utilizing Indexed Search Systems and Components Thereof, the U.S. International Trade Commission (“ITC”) held that statements, disclaimers, and positions taken during the prosecution of a later patent apply to the construction and interpretation of the same term in an earlier related patent. Using this standard, the Commission found no violation of Section 337 of the Tariff Act of 1930, because a disputed claim term’s scope in an earlier asserted patent was narrowed by the applicant’s disclaimer in a later related patent.

The Asserted Patents and Claims

X1 Discovery, Inc. initiated the ITC investigation by filing a complaint against seven respondents, alleging violations of Section 337 based on infringement of U.S. Patent Nos. 8,498,977 (“the ’977 Patent”) and 8,856,093 (“the ’093 Patent”). These patents relate to systems and methods for efficient search indexing. The patents share a common specification and claim priority to the same parent application shown below. In addition, the ’093 Patent had a child patent, U.S. Patent No. 9,633,139 (“the ’139 Patent).

US PATENT FEE INCREASES FOR 2025: Not (Nearly) as Bad as They Could Have Been

By Raj Pai, Ph.D. and Frank Bernstein on December 18, 2024 Posted in Patent Litigation, Patents, US, USPTO

Earlier this year, as we discussed here, here, and here, the United States Patent and Trademark Office (USPTO or Office) proposed a number of sweeping changes to the Office’s patent fees, including a very steep set of fees for filing terminal disclaimers, later continuation applications, and three or more requests for continued examination (RCEs). The USPTO also proposed a 25 percent hike in America Invents Act (AIA) trial fees.

The new fees, announced last month and going into effect January 19, 2025, include some, but not all of these fee hikes. The ones that remain still may well affect patent prosecution strategies. We discuss some of the most prominent fee increases here.

Background

As we discussed in our prior blogs, in an April 3, 2024 Notice of Proposed Rulemaking (NPRM), the USPTO proposed a number of fee increases, ostensibly to help the Office recover its costs. The proposal would have increased terminal disclaimer fees by as much as 700 percent and received tremendous pushback, so the USPTO backed down. Likewise, because of strong objections, the USPTO withdrew its proposal for a very substantial fee for a third RCE.

Theft and Conversion as the Basis for a Violation of Section 337

By Adam Hess and Woli Urbe on November 19, 2024 Posted in Biotech, FDA, Food and Drug Administration, Intellectual Property, International Trade Commission, ITC Section 337, Life Sciences, Life Sciences Biotech Pharma, US

For the first time, the U.S. International Trade Commission (“ITC”) has set forth and applied its legal standard for a theft or conversion claim in a Section 337 of the Tariff Act of 1930 investigation. Section 337 gives the ITC broad powers to investigate and address unfair acts in the importation of articles into the United States. Most Section 337 investigations are based on infringement of statutory intellectual property such as patents, trademarks, and copyrights. But Section 337 investigations can also be based on non-statutory unfair acts, such as trade secret misappropriation, unregistered trade dress infringement, and anti-trust violations. In a November 1, 2024 opinion in Certain Botulinum Toxin Products and Processes for Manufacturing or Relating to Same, the Commission articulated the legal standard for establishing a violation of Section 337 based on theft or conversion. Applying that standard, and as discussed in this article, the Commission found no showing that the respondents converted complainant’s property, and hence no violation.

SaaS Resellers: High Court rules on protection for SaaS resellers under Commercial Agents Regulations

By Paul Jinks on October 28, 2024 Posted in Contract, Technology, UK

For 30 years many third-party agents who buy or sell goods in Great Britain on the behalf of another (their principal) as opposed to in the agent’s own name have qualified for protection under the Commercial Agents (Council Directive) Regulations 1993 [The Commercial Agents (Council Directive) Regulations 1993] (the Regulations). If the criteria for the Regulations to apply is met, then they protect both individual self-employed agents and companies who act as agents.

The Regulations stem from a 1986 EEC Council Directive [Directive – 86/653 – EN – EUR-Lex]. Equivalent protection for agents is in place in Northern Ireland [Commercial Agents (Council Directive) Regulations (Northern Ireland) 1993] with similar, but not always identical, protection across EU member states.

The Sky Is Not Falling for the ITC in a Post-Loper World

By Adam Hess on October 18, 2024 Posted in Uncategorized

Mandatory deference to an agency’s rulemaking may be gone, and numerous commentators fear that the Supreme Court’s decision in Loper Bright Enterprises v. Raimondo will drastically alter the legal landscape surrounding agency decisions. But that does not mean that every agency or agency decision is in peril. We explore here the implications of the Loper Bright decision on the U.S. International Trade Commission (“ITC”), when it conducts investigations under Section 337 of the Tariff Act of 1930 relating to alleged violations of intellectual property rights (e.g., allegations of patent infringement), which typically involve decisions of technical and economic analysis rather than rulemaking. Our analysis suggests that the ITC’s body of experience and a long history of judicial review of ITC Section 337 decisions should minimize the impact of the Loper decision on Section 337 investigations.

Breaking News from Germany! Hamburg District Court breaks new ground with judgment on the use of copyrighted material as AI training data

By Dr. Sandra Mueller on October 11, 2024 Posted in Artificial Intelligence, Copyright, Cybersecurity, Data Protection, Germany, Intellectual Property, Internet, Judiciary, Technology

In an eagerly anticipated judgment dated 27 September 2024 (case number 310 O 227/23) the Hamburg District Court dismissed the complaint by photographer Robert Kneschke asserting claims for copyright infringement against non-profit Large-scale Artificial Intelligence Open Network (LAION) based on the use of his photograph in a data set for training AI image generators. Mr. Kneschke had uploaded his photo on a microstock photography website. The website’s terms of use provide for a restriction of using automated programs, applets, bots or the like to access content on the website including scraping.

Dysfunctional Patent Families: The Federal Circuit Draws Two Different Conclusions on Whether a Later-Filed Patent Can Invalidate an Earlier-Filed One in the Same Family

By Bryan Jaketic on September 27, 2024 Posted in Designs, Intellectual Property, Patent Litigation, Patents, US, USPTO

When a patent application is allowed, the claims may not precisely cover everything that the applicant wants to protect. Rather than add new claims after a notice of allowance and prolong prosecution, applicants will commonly file one or more continuation applications to pursue different claims. The continuation has substantially the same specification and drawings as the original application and will claim priority to the original application, so it is treated as having the same filing date and – absent any adjustments due to patent office delay – the same expiration date as the original. But when such patents have different adjustments to their term, troubles may arise. The Federal Circuit’s most recent decision on this issue addresses some, but not all, potentially problematic situations, as we explain here.

Artificial Intelligence and Intellectual Property Legal Frameworks in the Asia-Pacific Region

By Candice Kwok and Nicole Brenner on September 17, 2024 Posted in Artificial Intelligence, Copyright, Cybersecurity, Data Protection, Intellectual Property, Patent Litigation, Technology

Globally, governments are grappling with the emergence of artificial intelligence (“AI”). AI technologies introduce exciting new opportunities but also bring challenges for regulators and companies across all industries. In the Asia-Pacific (“APAC”) region, there is no exception. APAC governments are adapting to AI and finding ways to encourage and regulate AI development through existing intellectual property (“IP”) regimes and new legal frameworks.

AI technologies aim to simulate human intelligence through developing smart machines capable of performing tasks that require human intelligence. The expanding market for AI ranges from machine learning to generative AI to virtual assistants to robotics, and this list merely scratches the surface.

Part III: You’ve Got Patents! Or Someone Else Does… Where Can You Find Resolution?

By Tamara Fraizer on September 12, 2024 Posted in Designs, Intellectual Property, IP Litigation, Life Sciences Biotech Pharma, Patent Litigation, Technology, US, USPTO

As noted in Part I of this series, patent litigation can be a mechanism for parties to spar and evaluate patent rights, as well as each other, prior to making the business agreements that settle such disputes. Once a patent is asserted to be infringed with the filing of a lawsuit, the dispute can become risky and costly for both sides. Opportunities for settlement, discussed in Part II of this series, may appear and foster discussion. But agreeing on terms for resolution of a patent dispute often requires the assistance of a neutral third party in some form of Alternative Dispute Resolution (“ADR”). We discuss several options here.

What’s So Confusing? Olympic Rings Tattoos Now Allowed

By Squire Patton Boggs on September 9, 2024 Posted in Brand Protection, France, Marketing, Trademarks

A few paralympic champions were disqualified in the past on the ground that the famous Olympic rings they had tattooed on their bodies could be seen during the competitions and this was forbidden by the rule set out by the International Paralympic Committee. The Olympic rings have been registered as trademarks in many countries and generate substantial revenue, and the rule was said to be justified due to a “risk of confusion” – a concept well-known to trademark specialists. The rule against those with Olympic Rings tattoos nonetheless raised many questions and the ban was lifted right before the beginning of the Paris Paralympic Games. Our French attorneys explain why this use of a registered trademark raised questions and some lessons to be learned from the actions of the Paralympic Committee actions. Check out the full post on our Sports Shorts blog here.