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Legal Insights Webinar – After Arthrex: The Implications of Arthrex and Its Progeny Going Forward

Join us on July 16, 2020 at 12pm EDT/9am PDT for a complimentary webinar – After Arthrex: The Implications of Arthrex and Its Progeny Going Forward. Last fall, the Federal Circuit answered a challenge to the constitutionality of the appointment of administrative patent judges to the Patent Trial and Appeal Board. The court held that … Continue Reading

“Consisting Essentially Of” Decision at Federal Circuit Supports Link between Specification and Claims in Composition Patents

The Appellants in HZNP Medicines v. Actavis Laboratories saw their hopes for rehearing dashed on February 25, 2020, when the Federal Circuit issued an order denying their petitions for panel rehearing and en banc rehearing. The decision leaves intact an order finding that claims reciting “consisting essentially of” could be found indefinite based on ambiguities … Continue Reading

When the PTAB Weighs Evidence of Secondary Considerations, Volume Matters

As discussed in a prior blog post here, the United States Patent and Trademark Office (“USPTO”) Patent Trial and Appeal Board (“PTAB”) designated a recent decision on secondary considerations as precedential.[1] At the same time, the PTAB designated two older decisions as informative. While the precedential decision of Lectrosonics focused largely on the nexus requirement … Continue Reading

PTAB Time-Bar Determinations Under 35 U.S.C. §315(b) Are Final and Not Appealable

Yesterday, in Thryv, Inc., f/k/a Dex Media, Inc. v. Click-To-Call Technologies, LP, et al., the U.S. Supreme Court ruled 7-2 that the non-appealability of Patent Trial and Appeal Board (PTAB) institution decisions encompasses PTAB decisions on whether a statutory time bar applies. More specifically, 35 U.S.C. §314(d), which sets forth the finality and nonappealability of … Continue Reading

Gender Diversity in Innovation Webinar and Toolkit

Most inventors named on patents are men – in the US, almost 90%. The disparity, discussed in a previous blog here, exceeds the underlying disparities in the education and advancement of women in science, technology, and engineering (STEM), suggesting that innovative contributions of women are not being patented. To assess and address this issue, the … Continue Reading

Federal Circuit Extends Potential Reach of Chemical Compound Structural Similarity Obviousness Law

In Valeant Pharmaceuticals Int’l, Inc. v. Mylan Pharmaceuticals Inc., No. 2018-2097 (Fed. Cir. April 8, 2020), the Federal Circuit was asked “whether prior art ranges for solutions of structurally and functionally similar compounds that overlap with a claimed range can establish a prima facie case of obviousness.” Concluding that they can, the Federal Circuit reversed … Continue Reading

The Cold Hard Fact of Arctic Cat: Actual Notice is Necessary to Protect a Damages Claim from the Cold After Unmarked Patented Goods are Sold

It is settled law under 35 U.S.C. § 287 that when the patent owner sells or authorizes the sale of a patented product, it must comply with the statute’s marking requirement to obtain the benefit of constructive notice or else damages do not begin to accrue until actual notice is given to the infringer. In … Continue Reading

Federal Circuit Says Logos Must Be Taken Seriously in Evaluating Infringement of Design Patents

In its November 13, 2019 decision in Columbia Sportswear v. Seirus, the Federal Circuit addressed the issue of whether the presence of a logo in the accused design should be considered when assessing  infringement of a design patent and found that the district court erred in granting summary judgement without considering the impact of a … Continue Reading

The Federal Circuit Reaffirms That Using Patents As Evidence Of Trade Secret Theft Does Not Require Resolution of A “Substantial Patent Question” Sufficient For Federal Subject Matter Jurisdiction

It is back to state court for Acer America Corp., after the Federal Circuit held that Acer’s state law trade secret claims should never have been removed to federal court in the first instance. Intellisoft Ltd. v. Acer America Corp., No. 19-1522. Vacating the district court’s judgment in Acer’s favor, the Federal Circuit reiterated longstanding … Continue Reading

USPTO Extends Trademark-Related Timing Deadlines under the CARES Act, as Other National Trademark Offices Extend their Timing Deadlines or Provide Notice of Delays

On March 31, 2020, in response to the Coronavirus Aid, Relief, and Economic Security (“CARES”) Act, the United States Patent and Trademark Office (“USPTO”) extended the time to file certain trademark-related documents and fees. In its announcement, the Director of the USPTO determined that the outbreak prejudices the rights of trademark applicants, registrants, and owners, … Continue Reading

Complimentary Webinar – The Current State of U.S. Patent Litigation: Have We Reached the Bottom Yet?

Intellectual Property & Technology partners Steven Auvil and Tamara Fraizer will assess the current state of US patent litigation, including historic trends, major law changes impacting patent litigation, a review of 2019 and an assessment of the road ahead. Join us Thursday, April 9, 2020 at 12pm EDT/9am PDT. For more information, and to register, … Continue Reading

“Numerous Reasons” Support Finding Inequitable Conduct: Another Example of the Federal Circuit’s Current Approach to Inequitable Conduct

When the Federal Circuit decided Therasense in 2011[1], many thought the heightened standard announced by the Court for proving equitable conduct spelled the practical end of the doctrine. Contemporary commentators noted, “The Federal Circuit Continues to Make Inequitable Conduct More Difficult to Prove” and asked, “Is Inequitable Conduct in Patent Prosecution Dead?” It’s not dead. … Continue Reading

Potential Bankruptcies Caused By COVID-19: What IP Licensees and Licensors Need to Know

It comes as no surprise that the COVID-19 pandemic has and will continue to negatively impact our economy and increase bankruptcy filings.  Attorneys Mark Salzberg and Ivan Rothman analyze impacts of COVID-19 related bankruptcies for IP licensees and licensors in our sister blog, Restructuring GlobalView. The post details concerns from the licensee’s and licensor’s perspectives, … Continue Reading

Federal Courts that Hear Intellectual Property Cases Requiring Litigation at a Distance

In an effort to contain the COVID-19 outbreak, courts across the US are now limiting services to those that are essential and enforcing social distancing, especially in civil matters. We summarize here key provisions of the COVID-19 orders for twelve federal courts that commonly hear patent, copyright, trademark and/or trade secret cases. These courts are … Continue Reading

Delaware Provides More Insight into the Scope of the Rights Derived by a Patent Term Extension

In a recent district court decision, Judge Stark (D. Del.) further clarified the scope of the rights derived from a Patent Term Extension (PTE) during the extension period. On January 7, 2020, Judge Stark granted a Rule 12(c) motion for judgment on the pleadings in Biogen Int’l GmbH v. Banner Life Sciences, dismissing Biogen’s complaint.[1]  … Continue Reading

The Federal Circuit Takes a Mulligan and Reins in the Eastern District of Texas’s Assertion of Venue the Second Time Around

The Federal Circuit sent Google an early valentine on February 13, 2020, when it granted the petition for mandamus in In re Google, Case No. 19-126, directing that the Eastern District of Texas either dismiss Super Interconnect Technologies LLC’s (“SIT”) infringement action or transfer it under 28 U.S.C. § 1406(a).  The court’s precedential opinion held that … Continue Reading

It’s Printed, But Is It Published? The PTAB Expands Its Discussion of Prior Art Status

Following the Patent Trial and Appeal Board’s (PTAB) Precedential Opinion Panel’s selection of Hulu, LLC v. Sound View Innovations, LLC[1] as precedential, on January 23, 2020, the PTAB issued a non-precedential decision in Cisco Systems, Inc. v. Centripetal Networks, Inc.[2]  In Cisco, the PTAB provided yet more discussion of criteria for determining whether a printed … Continue Reading

Intel’s New Diversity Standards for Outside Counsel

In a November 2019 blog post, Intel’s Executive Vice President and General Counsel Steven R. Rodgers announced Intel’s new diversity requirements.[1]  “Beginning Jan. 1, 2021, Intel will not retain or use outside law firms in the U.S. that are average or below average on diversity.” Intel’s new “above-average” rule requires that firms doing work for … Continue Reading

Direct Appeals to the Federal Circuit: The Exclusive Avenue for Challenging the Final Written Decision of an Inter Partes Review

In a recent ruling in Personal Audio, LLC v. CBS Corp., the Federal Circuit affirmed the District Court’s final judgment, which reversed a prior $1.3 Million jury verdict in Plaintiff’s favor. It found Personal Audio’s constitutional arguments raised in its appeal to the Federal Circuit were barred by its prior appeal of the US Patent … Continue Reading

You Don’t Say! Federal Trade Commission to hold Public Workshop on Voice Cloning Technologies

On January 28, 2020, the US Federal Trade Commission will hold a public workshop on voice cloning technologies. As the federal agency charged with protecting consumers from fraudulent and deceptive marketing practices, the FTC workshop will review the potential misuse of voice cloning technologies as well as its benefits.  The workshop will include three panel … Continue Reading

The American Rule Lives in Patent Law: “Expenses” Do Not Include USPTO Legal Salaries

In a decision that will delight patent applicants, on December 11, 2019, the U.S. Supreme Court decided Peter v NantKwest, Inc.[1], holding that the US Patent and Trademark Office (USPTO) was not entitled to recover pro rata salaries for legal staff (in the context of the USPTO, attorney’s fees) as “expenses” in district court litigation.  … Continue Reading

PTAB Appellants May Improve Outcomes by Filing Supplemental Expert Declarations

On November 25, 2019, the Patent Trial and Appeal Board (PTAB) of the United States Patent and Trademark Office (USPTO) affirmed an appeal from IBM that its invention fails to recite patent-eligible subject matter under 35 U.S.C. §101. U.S. Patent Application Number 15/212,216 claimed a method for mining threaded online discussions, where an information handling … Continue Reading
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