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Ford Scores Win at the Federal Circuit in Design Patent Case

In its recently issued opinion in Automotive Body Parts Association v. Ford Global Technologies, LLC, the Federal Circuit reaffirms the importance of design patents and their value in an overall patent portfolio strategy for automotive manufacturers and others who may be threatened by aftermarket sales of replacement parts.  It also provides guidance on the arguments … Continue Reading

The Government Does Not Have Standing to Challenge Patents Under the Leahy-Smith America Invents Act (AIA)

The U.S. Supreme Court issued a 6-3 decision on June 10, 2019 holding that the Government was not a “person” capable of instituting one of the three AIA patent review proceeding described below.  This holding overturned a prior decision by Court of Appeals for the Federal Circuit (Federal Circuit) in favor of the United States … Continue Reading

Federal Circuit Affirms that Likelihood of Confusion – not “Use in Commerce” – is the Hallmark of Trademark Infringement

In VersaTop Support Sys., LLC v. Ga. Expo, Inc., 2019 U.S. App. LEXIS 11404 (Fed. Cir.  Apr. 19, 2019), the Federal Circuit turned its eye to the Trademark Statute and reaffirmed that the cornerstone of an infringement action under the Lanham Act – with or without “use in commerce” as that term is defined in … Continue Reading

Supreme Court Resolves Bankruptcy Circuit Split in Favor of Trademark Licensees

The Supreme Court’s decision today in Mission Product Holdings, Inc. v. Tempnology LLC resolved longstanding uncertainty at the intersection of trademark and bankruptcy law.  In particular, the Court determined whether the rejection of a trademark license in a bankruptcy case deprives the trademark licensee of its rights under the license for which it had likely … Continue Reading

Options for Amending Patents Challenged under the America Invents Act

On April 22, 2019, the US Patent and Trademark Office (“USPTO”) published a notice in the Federal Register regarding the existing options available for Patent Owners to amend their patents during or after an America Invents Act (“AIA”) challenge proceeding. This notice did not amend or alter existing USPTO practices, but instead summarized and clarified … Continue Reading

Squire Patton Boggs Celebrates World Intellectual Property Day

The theme for this year is “Reach for Gold: IP and Sports.” Accordingly, the Global Intellectual Property & Technology Blog would like to acknowledge the contributions of all innovators and creators involved in sports, as well as the commitment of the professionals who help secure and enforce their intellectual property and resolve intellectual property issues. … Continue Reading

Continued Progress in Developing the Digital Marketplace for Copyrighted Works

The Copyright Act often seems to lag behind technology, with infringements rampant on the Wild Internet.  Not so, as was evidenced by the robust discussions at the third public meeting on Developing the Digital Marketplace for Copyrighted Works, hosted by the US Department of Commerce’s Internet Policy Task Force on March 28, 2019. The Internet … Continue Reading

Experts in the USPTO: Not Just for IPRs?

In post-patent issuance proceedings before the US Patent and Trademark Office (USPTO) – inter partes review (IPR), covered business method (CBM), and post-grant review (PGR) – parties almost invariably submit expert testimony. Depending on the type of post-issuance proceeding, the testimony can relate to prior art, claim construction, patent-eligibility, or formal requirements for patentability including … Continue Reading

Preparing for IP Diligence: Ensuring Proper Inventorship and Ownership of Patents

The best preparation for diligence begins well in advance of any discussions with companies interested in investing in or purchasing assets of the innovating company. Ideally, the innovating company should implement policies and practices from day one of the company to help avoid problems that will inexorably come to light under the scrutiny of diligence. … Continue Reading

Theranos and the “Broken” Patent System

ArsTechnica published an excellent piece on how the United States’ “broken” patent system permitted Theranos to obtain hundreds of patents for technology that did not work and did not meet the “enablement” requirement of 35 U.S.C. section 112.  According to author Daniel Nazer, the USPTO did virtually nothing to ensure that Theranos’ technology had been … Continue Reading

USPTO Issues New Guidance on Computer-Implemented Means-Plus-Function Claim Terms

On January 4, 2019, the United States Patent and Trademark Office (USPTO) announced new guidelines for “Examining Computer-Implemented Functional Claim Limitations for Compliance with 35 U.S.C. § 112.” These guidelines, published in the Federal Register on January 7, 2019, take immediate effect and apply to all pending applications and issued patents. While nothing in these … Continue Reading
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