Is a patent-holder precluded from recovering lost-profits damages for patent infringement if those profits would have been earned on contracts for services to be performed outside of U.S. territory? That is the $93.4 million question presented by the cert petition in WesternGeco L.L.C. v. ION Geophysical Corp., No. 16-1011 and that the Supreme Court is … Continue Reading
The U.S. International Trade Commission (ITC) has denied respondents’ requests for entry into the ITC’s pilot program for early case disposition in a trio of recent orders: in Certain Insulated Beverage Containers, Components, Labels, and Packaging Materials Thereof, Inv. No. 337-TA-1084 (Nov. 17, 2017); and in the companion cases of Certain Color Intraoral Scanners and Related Hardware … Continue Reading
On Friday, December 15, 2017, the US Department of Justice and Department of State announced the launch of an IP Law Enforcement Coordinator Network. The Network focuses on international trademark counterfeiting, copyright piracy and other forms of intellectual property rights infringement across the world, spanning all industry sectors. Though the components of the Network are … Continue Reading
In its May 2017 decision in TC Heartland LLC v. Kraft Foods Group Brands, LLC, 137 S.Ct. 1514 (2017), the Supreme Court shocked the patent world by restricting the range of permissible venues in patent infringement cases for domestic corporations. (See our prior posts, here and here). The Federal Circuit has now found – in … Continue Reading
Under a pilot program initiated in 2013, the U.S. International Trade Commission (ITC) may designate an investigation for early disposition if the ITC believes that there is a potentially case-dispositive issue warranting the program’s speedy (100-day) treatment. Since the program’s inception, however, the ITC has designated only a handful of cases for early disposition. Although … Continue Reading
For the second time in the past few months, the U.S. International Trade Commission (ITC) has decided to maintain an exclusion order despite final unpatentability findings by the U.S. Patent and Trademark Office (PTO). The investigation is Certain Foam Footwear, Inv. No. 337-TA-567, which resulted in a general exclusion order in July 2011 based on … Continue Reading
The U.S. International Trade Commission (USITC) has determined to maintain the $650,000.00 penalty it imposed for violation of a consent order entered in a Section 337 investigation, notwithstanding that the parties and the Office of Unfair Import Investigations (OUII) supported rescinding the penalty.… Continue Reading
Half of the world’s population is now online. That’s around 4 billion people worldwide with access to the internet. Little wonder then that intellectual property rights holders are having to take active steps to respond to the infringement challenges that this multi-territorial digital marketplace presents. Occasionally, governments respond directly to curb infringement online. For example, … Continue Reading
The Federal Circuit has issued its long-awaited ruling in Aqua Products, Inc. v. Matal, No. 2015-1177, with the majority of the en banc court agreeing that the requirement by the Patent Trial and Appeal Board (PTAB) that patent owners have the burden to prove the patentability of amended claims proffered during inter partes review (IPR) … Continue Reading
The U.S. International Trade Commission (USITC) has decided to review in part an Administrative Law Judge (ALJ)’s finding of violation of Section 337 based on patent infringement in Certain Semiconductor Devices, Semiconductor Device Packages, and Products Containing Same, Inv. No. 337-TA-1010 (Sept. 29, 2017). While review of patent issues is not unusual, the Notice of … Continue Reading
In the UK, designs of three dimensional items (which are not artistic works) are protected against copying by a separate intellectual property right known as unregistered design right (UDR). For the purposes of an infringement action, it is critical to know which features of a design are protected by UDR and which are not. However, … Continue Reading
In Part One of this post, I summarized the Federal Circuit’s recent ruling on patent eligibility in Visual Memory LLC v NVIDIA Corp. In this second part I look at Judge Hughes’ dissent and the majority’s response to Hughes. Dissent Judge Hughes believed the claims could not be described at a lower level of abstraction … Continue Reading
In a rare reversal of a district court’s patent-ineligibility holding, the Federal Circuit found the claims at issue in Visual Memory LLC v NVIDIA Corp. patent-eligible under Step 1 of the Supreme Court’s two-part eligibility test in Alice v. CLS Bank. The Federal Circuit found that the claims (directed to computer memory) were, for purposes … Continue Reading
In yet another decision concerning how rulings in parallel, patent challenge proceedings impact Section 337 investigations, the U.S. International Trade Commission (ITC) has refused to rescind an exclusion order issued against a defaulted party despite a district court’s summary judgment ruling that it did not infringe the patent. The investigation is Certain Beverage Brewing Capsules, … Continue Reading
The United States Patent and Trademark Office (“USPTO”) recently released a Report summarizing the comments received during two roundtable discussions that the USPTO hosted in 2016 on patent subject matter eligibility. Since 2010, the U.S. Supreme Court has issued four major decisions that have transformed subject matter eligibility law, and the USPTO has responded with … Continue Reading
In an August 4, 2017 Notice, the US International Trade Commission announced that it has determined to review an administrative law judge (ALJ)’s initial determination in the enforcement proceeding in Certain Network Devices, Related Software, and Components Thereof, Inv. No. 337-TA-944 (Enforcement Proceeding). The Commission’s notice could lead to additional rulings by the presiding ALJ (Shaw) … Continue Reading
The America Invents Act of 2011, which ushered in a new regime for post-grant patent challenges at the U.S. Patent and Trademark Office (PTO), provides that any patent challenger initiating an inter partes review (IPR) proceeding at the PTO “may not assert” an invalidity ground in a patent case in U.S. district court or in … Continue Reading
In a much-anticipated ruling, the U.S. International Trade Commission (ITC) has declined to issue an exclusion order barring hoverboards from the U.S. market, finding that the popular consumer items did not infringe the claims of the patent asserted against them. The investigation, captioned Certain Motorized Self-Balancing Vehicles, Inv. No. 337-TA-1000, was instituted in May 2016 … Continue Reading
On June 22, an advocate general at the Court of Justice of the European Union (“CJEU”) issued an opinion indicating that Christian Louboutin S.A.’s signature red sole might be a protectable trademark — or it might not be — depending on whether the protection of the shape in combination with color would afford the mark … Continue Reading
The Federal Circuit has recently ruled on two appeals of Section 337 investigations involving findings of patent invalidity. As we reported in a prior blog, in Certain Beverage Brewing Capsules, Components Thereof, and Products Containing Same, Inv. No. 337-TA-929, the products under investigation were reusable beverage brewing capsules designed to replace the prior art cup-shaped … Continue Reading
Yesterday, the U.S. Supreme Court ruled in Matal v. Tam, 15-1293 (June 19, 2017), that the First Amendment of the U.S. Constitution prevents the U.S. Patent and Trademark Office (“PTO”) from declining to register trademarks deemed offensive or disparaging. While the decision concerned the PTO’s rejection of an application to register the name of the … Continue Reading
A superlative or excessive statement is often a dead give-away that the statement may not be true. In deciding whether the America Invents Act’s inter partes review provisions violate Article III of the Constitution of the United States, the Federal Circuit in MCM Portfolio LLC v. Hewlett-Packard Company, 815 F.3d 1284, 1291 (Fed. Cir. 2015) … Continue Reading
In an enforcement proceeding stemming from the ITC’s December 2015 decision in Certain Marine Sonar Imaging Devices, Inv. No. 337-TA-921, ALJ David Shaw has found that the ITC’s cease and desist order was violated by continued infringing sales of imported products and has recommended that respondent Garmin be assessed a civil penalty of $37 million. … Continue Reading
On May 30, 2017, the U.S. Supreme Court continued its recent string of decisions reversing Federal Circuit holdings on fundamental issues of patent law. Taking on patent exhaustion in Impression Products, Inc. v. Lexmark Int’l, Inc., No. 15-1189, the Court unanimously held that that “a patentee’s decision to sell a product exhausts all of its … Continue Reading
