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Reining in The Western District of Texas? Recent Developments Affecting That Court’s Status As A Patent Infringement Filing Hotbed

In a unanimous February 1, 2023 Order, a Federal Circuit panel granted Google LLC’s petition for a writ of mandamus directing the U.S. District Court for the Western District of Texas to vacate its order denying transfer of patent infringement claims to the Northern District of California. As discussed here, this precedential decision signals the … Continue Reading

WEBINAR: How to Make the Best Out of Your Employees Inventions – Applicable Rules and Best Practices for Global Companies

As the global economy continues to integrate, companies are wrestling with how to manage innovations across borders. Given that most patentable inventions are developed in-house, can a global invention policy help attract and keep the most innovative employees? Are assignment agreements with employees appropriate regardless of where the innovation originates? Join our panelists Catherine Muyl, … Continue Reading

EU Design Reform Package: More efficient, Affordable, and Future-proof Design Protection Ahead

On 28 November 2022, the European Commission adopted proposals for a revised Regulation and Directive on industrial designs. The proposals, that are now sent to the European Parliament and Council for adoption, are aimed at modernizing the EU design system and the harmonized national design protection laws.… Continue Reading

Putting the Appeals of Both Sides to Bed: PTAB Rulings on the Patentability of Systems and Methods for Adjusting Air Pressure in a Mattress Affirmed

The Federal Circuit recently handed down an informative decision in American National v. Sleep Number Corporation affirming the Patent Trial and Appeal Board’s final decisions in two inter partes reviews finding some claims patentable and some claims not patentable. The claims at issue related to the systems and methods for adjusting pressure in an air … Continue Reading

The Alice Test for Patent Ineligibility in Practice, Part Two: The Federal Circuit Affirms a Dismissal

In a recent post, I discussed a September Federal Circuit decision (Cooperative Entertainment v. Kollective Technology) that reversed a lower court dismissal of a patent infringement case on Section 101 eligibility grounds under the Supreme Court’s 2014 Alice Corp. v. CLS Bank test. Just weeks after that ruling, the Federal Circuit in IBM v. Zillow … Continue Reading

What Gives You the Right to Be in This IPR? A Question OpenSky Should Have Answered

On October 4, 2022, in a 52-page Director review decision in an inter partes review (IPR) proceeding involving recently-formed entity OpenSky Industries LLC, USPTO Director Katherine Vidal sanctioned OpenSky “to the fullest extent of [her] power” because of OpenSky’s abuse of the IPR process, including flaunting of the Director’s discovery orders. The Director applied negative … Continue Reading

The Alice Test for Patent Ineligibility in Practice: The Federal Circuit Reverses District Court’s Dismissal of an Infringement Case

One of the threshold requirements for obtaining a patent under U.S. law is that the invention is a “new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof…” In other words, the subject matter of the invention must be eligible for patenting. Many courts have used this requirement … Continue Reading

Russia Suspends Compulsory License Payments for Some Non-Russians

In the latest example of the escalation of tensions between Russia and the West, Russian Prime Minister Mikhail Mishustin last week issued a decree that owners of Russian patents from countries that Russia considers to be unfriendly are no longer entitled to any compensation for compulsory licensing of their patents. In particular, the decree (translated … Continue Reading

Changes to Improve Chinese Patents

In a blog post published in February 2021 (here), we addressed regulatory initiatives from the Chinese government aimed at moving China from a country dependent on “imported” patents (i.e., patents filed by foreign entities) to a country with great autochthone creativity. The initiatives were intended to reduce or eliminate fraudulent and low-quality patent applications and … Continue Reading

Light Administrative Injunctions for Designs in China: Status-check on the 2021 Shenzhen AMR Reform

  In June 2021 the Shenzhen Administration for Market Regulation (Shenzhen AMR) issued the first ever provisions on administrative injunctions against the infringement of a design patents, including online infringements. It was a revolutionary provision. Without need to prove irreparable damage, a right holder could seek quick relief by filing a simple administrative complaint. Now … Continue Reading

China Accedes to the Hague Convention and Now Allows for International Design Filings

On February 5, 2022, China acceded to Hague System for the International Registration of Industrial Designs. The Hague provisions will become effective in China on May 5, 2022. China has been negotiating such accession for a few years, and it was partly anticipated by certain measures of harmonization introduced with the latest amendment to the patent law in … Continue Reading

Once Again, the ITC Finishes the Year with a Flurry of New Complaints

In January 2021, I noted that the U.S. International Trade Commission (ITC) saw a flurry of new complaints filed in the second half of 2020, particularly in November and December. See here. A similar pattern emerged at the end of 2021, culminating with eight Section 337 complaints filed between December 15 – 31, 2021.… Continue Reading

AFCP 2.0 Extended: Your Mileage May Vary

On October 12, 2021, the USPTO extended its program for after-final patent prosecution practice, AFCP 2.0, to September 30, 2022. The USPTO initiated the “pilot” program in 2013, to speed up prosecution and to increase contact between Examiners and applicants. Although the USPTO has not issued statistics about the results of the program, applicants still … Continue Reading

ITC Section 337: Tips for Avoiding Discretionary Denials at the PTAB

We previously wrote that a co-pending ITC Section 337 investigation virtually guarantees that the Patent Trial and Appeal Board (PTAB) will exercise its discretionary power to deny institution under 35 U.S.C. §§ 314(a) and 324(a) when considering a petition for inter partes review (IPR) or post-grant review (PGR). See ITC Section 337: Kiss of Death … Continue Reading

Plaintiffs Beware – Disclose all Evidence of Lost Profits Damages During Discovery

In a patent infringement lawsuit, a plaintiff often seeks to recover lost profits damages—the profits that the patent owner would have made but for the competitor’s alleged infringement—instead of a lower reasonable royalty. A plaintiff is not automatically entitled to such damages, though, even upon a finding of infringement. Rather, the patent owner must prove … Continue Reading

ITC Section 337: Kiss of Death for PTAB Proceedings

When considering a petition for post-grant review (PGR) or inter partes review (IPR), the Patent Trial and Appeal Board (PTAB) has discretion to deny institution under 35 U.S.C. §§ 314(a) and 324(a). The PTAB’s Consolidated Trial Practice Guide provides that, when exercising its discretion, the Board may consider “events in other proceedings related to the … Continue Reading

Timing is Essential for Filing Interlocutory Appeals — Do Not Wait for All Issues to be Resolved

The Federal Circuit recently dismissed an interlocutory appeal filed by LG Electronics as untimely because LG filed its notice of appeal more than seven months after the district court’s order disposing of all LG post-trial motions except for its post-trial motion on damages. The opinion stands as a lesson to all parties contemplating an appeal … Continue Reading

A Reminder to Patentees Suing for Infringement: Your Allegations Must be Sufficient to Show Plausibility that the Accused Product Infringes

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 … 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 … Continue Reading

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 … Continue Reading

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 … Continue Reading

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 … Continue Reading
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