A recent Federal Circuit decision has re-affirmed prior guidance on the pleading requirements for a plaintiff alleging patent infringement. The decision was issued in Bot M8 LLC v. Sony Corp. of Am., Case No. 2020-2218, on July 13, 2021. In short, while a plaintiff need not prove its case at the pleading stage, a plaintiff must plead facts sufficient to show it is plausible that an accused product infringes the patent claim. A plaintiff may not just recite the claim elements and conclude that the accused product has infringed those elements. Continue Reading
New from China: Light Administrative Injunctions Now Available for Patents, Designs, and Copyrights
On June 21, 2021, the Shenzhen Administration for Market Regulation (Shenzhen AMR) issued the first ever administrative injunction against the alleged infringement of a design patent. The decision was based on a set of local IP regulations implemented in 2019 to increase protection of intellectual property (IP) rights associated with the booming local innovation in key new technologies. The trend set by the Shenzhen AMR may now expand to local administrative enforcers in other cities and provinces and could revolutionize the way certain IP rights, including design, patent and copyright, have been so far enforced. Continue Reading
The Cat and Mouse Game of Fighting Counterfeit Goods
Counterfeit electronics coming from China are increasingly problematic for many companies. The proportion that are seized by US customs is miniscule compared to those that make it into the country, despite recent efforts. Raids on the sources of such goods (e.g. a factory) may not help much because, in many cases, other sources can quickly take over production.
This issue was recently discussed (here) by The Information’s reporter Wayne Ma, who interviewed Squire Patton Boggs’ expert on this subject, Paolo Beconcini. In his article Ma focuses in particular on the increasing counterfeiting of Apple AirPods and the repercussion of such illicit trade on Apple’s business. Paolo Beconcini highlights some of the legal challenges and possible strategies to reduce brand owners’ risk and the economic impact of counterfeits on their business.
Patents for Humanity: The USPTO Recognizes Innovation Relating to COVID-19
The United States Patent and Trademark Office (USPTO) has announced the final deadline for submission of applications for its Patents for Humanity COVID-19 award: The submission deadline is 5 p.m. ET, September 30, 2021.
Patents for Humanity is the United States Patent and Trademark Office’s (USPTO) awards competition recognizing innovators who use game-changing technology to meet global humanitarian challenges.
Will Patents Become More Political? The PTO Begins to Implement Arthrex
In United States v Arthrex, the Supreme Court held that 35 U.S.C. §6(c), which sets forth the authority of Patent Trial & Appeal Board (“PTAB”) Administrative Patent Judges (“APJs”), is unconstitutional because APJs effectively wield the power of principal officers (who require Senate confirmation) while being appointed as inferior officers (who do not require Senate confirmation) (see our prior blog here).
The U.S. Patent and Trademark Office has begun charting its path forward for devising and implementing agency rules in response to the U.S. Supreme Court’s decision in United States v. Arthrex.
EU Roaming Regulation and What This Means For Machine-To-Machine (M2M) Communications
Ensuring lower international roaming charges continues to be a key policy priority for the EU, even at a time when non-essential travel is discouraged. The European Commission has in fact proposed that a new regulation will prolong the current EU roaming rules that are due to expire in 2022 (including, among other instruments, the Roaming Regulation (EU) 531/2012), for another 10 years.
Breaking News from Karlsruhe: Progress on the Unified Patent Court (UPC)
The progress on the ratification of the Agreement on a Unified Patent Court (UPC Agreement) had been delayed due to two constitutional complaints filed before the Constitutional Court in Germany. It was not the first attack on German UPC legislation. A first act of approval had been adopted by the Bundestag in March 2017, but was declared invalid by the Constitutional Court in February 2020 based on a complaint about how the UPC legislation had been passed.
In an order dated 23 June 2021, which was published on 9 July 2021, the German Constitutional Court rejected two applications for preliminary injunction directed against the second act of approval. In its reasoning, the Second Senate states that the constitutional complaints lodged in the principle proceedings are inadmissible because the complainants had not sufficiently substantiated the possibility of a violation of their fundamental rights. The Court’s press release can be accessed here.
These decisions clear the path for the ratification procedure in Germany. It is likely that Germany will sign the UPC Agreement within this year. This means the UPC could finally be ready to operate as early as Spring 2022! Your dedicated Squire Patton Boggs UPC Team is ready to help.
Litigators Take Note – Yu v. Apple is Not Just About Subject Matter Eligibility of Patents
Much of the discussion about the Federal Circuit’s precedential opinion in Yu et al. v. Apple, Inc. et al. has focused on the perceived confusion and dysfunction of U.S. patent law that invalidates a claim directed to an “improved digital camera” as a patent-ineligible “abstract idea.” After delving into the underlying record, this author posits that the Federal Circuit’s opinion has more to do with the manner in which the patent was asserted in the complaint and the resulting Fed. R. Civ. P.. 12(b)(6) motion practice than the nature of the patented invention. This opinion does, however, serve as a reminder to patent prosecutors to be careful when drafting claims having broad functionality because the § 101 inquiry does not depend solely on what is recited in preamble. Continue Reading
The Uncharted Legal Territory of Non-Fungible Tokens
The recent US$69 million sale of an “NFT” by digital artist Beeple in March 2021 generated considerable attention, both within and outside the realm of art. NFTs are digitally unique “non-fungible tokens,” based on block chain technology, that are used to manage the IP rights of artists in underlying works. New and innovative uses for NFTs are arising now across a variety of industries. As discussed by our colleagues, such uses present a host of potential legal issues in the uncharted territory surrounding these digital assets. Read more here.
BEST MODE: Did You, or Are You Just Going To, Test that Invention?
A patent must teach one skilled in the relevant art how to make and use the claimed invention, as required by 35 U.S.C. §112(a). The Manual of Patent Examining Procedure (MPEP) 608.01(p) explains that unless an invention is disclosed such that one skilled in the art will be able to practice it without undue experimentation, at least one operative example of the invention must be set forth. On July 1, 2021, the United States Patent and Trademark Office (USPTO) will publish a reminder to patent applicants and patent practitioners that to satisfy the enablement and written description requirement, a patent application must properly present examples in a manner that clearly distinguishes between “prophetic” examples, which describe predicted experimental results, and “working” examples, which report actual experimental results. Failure to do so raises an inequitable conduct issue related to the applicant’s duty of disclosure, as discussed in our related posts here and here.
