Since the iRhythm IPRs on which we blogged recently, there have been two more (actually, many more) decisions that are leaving petitioners scratching their heads. In Dabico, the Acting USPTO Director discretionarily denied an IPR petition because of “settled expectations,” the same rationale as in iRhythm. The Acting Director went further and criticized the petitioner … Continue Reading
In a set of astonishing identical Director Review decisions, the Acting USPTO Director discretionarily denied five IPR petitions whose proceedings would have concluded over seven months before the underlying patent infringement suit would have gone to trial. The Acting Director reasoned that the petitioner waited too long to file its IPR petitions because, even though … Continue Reading
The Digital Markets, Competition and Consumers Act 2024 (DMCCA) [Digital Markets, Competition and Consumers Act 2024] has both increased consumer protection rights in the UK and the enforcement powers of the main consumer regulator, the Competition and Markets Authority (CMA) which for the first time has been granted wide-ranging powers to investigate suspected breaches of … Continue Reading
Monetary awards in trade secrets cases continue to grab headlines in 2025. As reported in this recent blog post, a Boston jury awarded a medical device company $452M for theft of trade secrets by a competitor, later reduced to $59.4 in exchange for a permanent injunction. Last month, an Arkansas jury found Walmart liable for … Continue Reading
The patent statute 35 U.S.C. § 325(d) allows the USPTO Director to deny institution of an IPR when “the same or substantially the same prior art or arguments previously were presented to the Office.” In IPR practice, relying on prior art that already had been before the PTO is perfectly acceptable. Under the 2020 decision in … Continue Reading
On April 1, 2025, the Act to Strengthen Germany as a Location for Justice—formally titled Justizstandort-Stärkungsgesetz of October 7, 2024 (Federal Law Gazette 2024 I No. 302)—entered into force. This legislation aims to enhance Germany’s attractiveness as a venue for international commercial litigation by, among other things, establishing commercial courts and permitting the use of … Continue Reading
The authors wish to thank Royce Clemente for his contributions to this post. In the recent case of Jaevee Homes Limited v. Mr Steven Fincham, the English High Court has handed down judgment that an exchange of WhatsApp messages between the parties formed a basic and legally binding contract, providing a reminder to parties involved … Continue Reading
In Insulet Corporation v. EOFlow Co., Ltd. et al., after a month-long jury trial, a federal court in Boston dropped the hammer on an insulin patch pump producer for misappropriating the trade secrets of its competitor. The jury found that EOFlow, a South Korean company, its U.S. subsidiary, and several individual defendants, including former employees … Continue Reading
As provided by statute at 35 U.S.C. § 311(b), a petitioner in an inter partes review (IPR) may challenge the claims of a patent “only on the basis of prior art consisting of patents or printed publications.” Does this provision permit IPR challenges based on Applicant Admitted Prior Art (AAPA) ― art identified in the … Continue Reading
If you’re a patent practitioner who works with innovation related to artificial intelligence, you’ll want to consider the Federal Circuit’s recent decision in Recentive Analytics, Inc. v. Fox. Corp. This decision is the first to explicitly consider patent eligibility in the context of the use of artificial intelligence. The Federal Circuit affirmed the district court’s … Continue Reading
In Part I of this set of blogs, we discussed the impact of the rescission of former USPTO Director Vidal’s Guidance Memorandum for handling discretionary denials in inter partes review proceedings before the Patent Trial and Appeal Board. We also discussed Chief Judge Boalick’s Guidance Memorandum on the rescission. In Part II, we examine a … Continue Reading
The recent Federal Circuit decision in AMS-OSRAM USA Inc. v. Renesas Electronics America, Inc. offers valuable lessons related to failed merger attempts, specifically the vast exposure that can result from a party breaching its confidentiality obligations. This protracted case—lasting more than 15 years and involving multiple trials and appeals—also highlights important principles about trade secret … Continue Reading
Recent actions from the USPTO have engendered a great deal of discussion among the bar practicing before the Patent Trial and Appeal Board. On February 28, 2025, acting Director Stewart rescinded former Director Vidal’s Guidance Memorandum for handling discretionary denials in inter partes review proceedings before the Board. On March 24, 2025, Chief Judge Boalick … Continue Reading
The Federal Circuit has long held that “the general rule” of patent infringement damages law is “a patentee may not claim, as its own damages, the lost profits of a related company.” More than 15 years ago, one patent owner argued that an exception to this general rule should be when a subsidiary’s profits “flow … Continue Reading
Wash World Inc. v. Belanger Inc. raises the question whether lost profit damages for patent infringement can extend to profits related to unpatented products sold with a patented product. As with many legal issues, including the lost profits issue I addressed in my recent post, the answer to the question is “sometimes.” In Wash World, … Continue Reading
Ackerman v. Pink asks how much of a written history can be claimed as proprietary by the author of that history. The answer: Not much. It is black letter that the author of a non-fiction work cannot prevent others from using historical facts in some other work – even if those historical facts are known … Continue Reading
The Supreme Court’s decision in Loper Bright Enterprises v. Raimondo has and will continue to alter the legality and enforceability of federal agency rules and regulations related to ambiguous federal statutes. As a reminder, Loper Bright abolished the Chevron doctrine, which instructed courts to give deference to federal agency interpretations of ambiguous statutes. In Loper Bright, the Supreme … Continue Reading
In October 2024 we reported on the case of Kompakwerk GmbH v Liveperson Netherlands B.V. [CL-2018-000802] which concerned the question of whether an agent selling access to end users in Great Britain to a third-party software as a service (SaaS) product should be considered an agent for the purposes of the Commercial Agents (Council Directive) Regulations … Continue Reading
In the UK, intellectual property (IP) infringement claims and other disputes in which IP is a major concern can be brought in either the High Court or in many cases the specialist Intellectual Property Enterprise Court (IPEC). Based at the Rolls Building in central London, the IPEC has a more streamlined procedure than the High … Continue Reading
Lost profit damages are notoriously difficult to recover in patent infringement cases. Lost profits damages are recovered in only a small percentage of cases that go to trial. Among the challenges in recovering lost profits under the Panduit test are that the patent owner must prove the absence of acceptable non-infringing alternatives (Panduit factor 2) … Continue Reading
In what may turn out to be an influential decision, Judge Stephanos Bibas ruled as a matter of law in Thomson Reuters v. Ross Intelligence that creating short summaries of law to train Ross Intelligence’s artificial intelligence legal research application not only infringes Thomson Reuters’ copyrights as a matter of law but that the copying … Continue Reading
In January 2025, the Copyright Office released Part 2 of its anticipated three-part series on copyright and artificial intelligence (AI). The report discusses copyrighting works that include AI-generated content and provides guidance for applicants seeking protection of such work. Part 2 emphasizes the importance of “human authorship,” as works purely generated by AI or works … Continue Reading
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, … Continue Reading
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 … Continue Reading
