Imagine That IP Law Blog

The concept of the "person of ordinary skill in the art" (POSITA) remains pivotal in patent law, particularly in evaluating obviousness under 35 U.S.C. § 103 and compliance with enablement and written description requirements under 35 U.S.C. § 112. Traditionally, the POSITA is defined by their technical competence and ordinary creativity, enabling them to recognize and combine known methods to achieve predictable outcomes. However, with advances in generative AI such as ChatGPT, a new question arises: could such AI fulfill the role of the POSITA, including providing a benchmark ... Read More ›

The United States Patent and Trademark Office (USPTO) today announced that the After Final Consideration Pilot Program 2.0 (AFCP 2.0) will be allowed to expire. Originally launched in 2013 to facilitate better interaction between patent applicants and examiners after a final rejection, AFCP 2.0 provided a framework for further consideration of claims without the need for expensive and time-consuming appeals or Requests for Continued Examination (RCEs). The program's expiration marks the end of a decade-long pilot, but the USPTO has extended the deadline for final requests ... Read More ›

Patent eligibility in the United States is governed by 35 U.S.C. § 101, which requires that an invention must fit within the categories of a process, machine, manufacture, or composition of matter. However, even if an invention falls into one of these categories, it may still be ineligible for patent protection due to judicial exceptions that exclude laws of nature, natural phenomena, and abstract ideas. A common issue arises when patents claim a desired result without providing the specific method or process for achieving that result. In this blog post, we explore the legal ... Read More ›

Congratulations! You are ready to file a United States (U.S.) non-provisional patent application for your invention. This is a major milestone for any startup. But what comes next? Is it just a waiting game? Well ... maybe not.

A challenge with the standard patent process is that U.S. non-provisional patent applications are subject to the overburdened queues of the U.S. Patent and Trademark Office (USPTO). USPTO statistics for an application show that the Traditional Total Pendency is 26.1 months to 42.9 months. (See Pendency Statistics USPTO from July of 2024). This means that ... Read More ›

UPDATE:  On September 30, 2024 The United States Patent and Trademark Office  announced that the After Final Consideration Pilot Program 2.0 (AFCP 2.0) will be allowed to expire. See The Expiration of the After Final Consideration Pilot Program 2.0 (AFCP 2.0)

Final rejections are inevitable in patent prosecution, often requiring patent practitioners and applicants to carefully consider their next steps. While a Request for Continued Examination (RCE) is a common option, it is not always the most cost-effective, especially when a response can be submitted within the shortened ... Read More ›

The case of Contour IP Holding LLC v. GoPro, Inc. is the first time since October 2021’s Cosmokey Sols. GMBH & Co. KG v. Duo Sec. LLC, 15 F.4th 1091  where the U.S. Court of Appeals for the Federal Circuit has reversed a district court holding of ineligibility under 35 U.S.C. § 101. Accordingly, the Federal Circuit’s September 9, 2024 decision provides valuable insights into how patent eligibility is assessed, particularly for innovations related to video technology.

Background of the Case
Contour IP Holding LLC (“Contour”) filed suit against GoPro, Inc. (“GoPro”) for ... Read More ›

On September 3, 2024, the United States Court of Appeals for the Federal Circuit rendered a significant decision in Broadband iTV, Inc. v. Amazon.com, Inc., which reaffirms the stringent approach towards patent eligibility under 35 U.S.C. § 101. The case concerned five patents owned by Broadband iTV (BBiTV), all related to video-on-demand technology and electronic program guides. BBiTV accused Amazon of infringing these patents, but Amazon successfully moved for summary judgment on the grounds that the patents claimed ineligible subject matter. The Federal Circuit affirmed ... Read More ›

In the case of Allergan USA, Inc. v. MSN Laboratories Private Ltd., the Federal Circuit addressed the issue of obviousness-type double patenting (ODP) concerning claim 40 of U.S. Patent No. 7,741,356 (the '356 patent). This patent was challenged based on the assertion that it was invalid due to ODP over two related patents, U.S. Patent Nos. 8,344,011 (the '011 patent) and 8,609,709 (the '709 patent). The district court initially ruled in favor of invalidity, determining that because the '356 patent expired after the '011 and '709 patents—despite sharing a common priority ... Read More ›

Software development has become a driving force behind innovation and progress across many industries. A key factor in this development is open source software, which has transformed the way technology is created and shared. In this article, we’ll discuss open source software, the risks associated with using such software and strategic insights for corporations who use open source software.

What is Open Source Software?
Open source software (OSS) is computer software that is licensed in a way that allows its source code to be publicly available. This allows anyone to view ... Read More ›

On May 7, 2024, the Federal Trade Commission published a final rule banning the enforcement of nearly all non-compete clauses in employment agreements nationwide (89 FR 38342). This new rule will have sweeping effects across all sectors of the economy, if it survives court challenges that have already been filed (see, e.g., Chamber of Commerce of the United States of America et al. v. FTC, 6:24-cv-00148 (E.D. Tex., April 24, 2024).

What is the new rule?
The FTC’s new rule makes it an unfair method of competition to enter into new non-compete clauses or enforce existing non-compete ... Read More ›

On Tuesday, the Federal Circuit issued an en banc decision in LKQ Corp. et al. v. GM Global Technology Operations LLC, case number 21-2348 (Fed. Cir. May 21, 2024) (en banc) overruling decades long precedent for challenging design patents based on obviousness under 35. U.S.C. § 103.

The prior test, known as Rosen-Durling, required as a primary reference an earlier design that had "basically the same" visual impression as the patented design, to which features could be added from additional prior art designs that are "so related" to it that the appearance of features in one design ... Read More ›

Artificial Intelligence (AI) is all the rage and grabs the public’s attention for its almost instantaneous song writing feats to creating deep fakes of all sorts. The possibility of having an almost instantaneous answer to a problem may prompt an employee to seek the answer AI can provide. Even if your company’s employee understands that the initial AI answer may be refined by follow up questions, this does not mean that the final result is not an intellectual property problem for your organization. Many companies believe their operations are such that the risk of IP infringement ... Read More ›

At times, corporate stakeholders may consider IP due diligence as slowing down business instead of creating and preserving value. However, pro-active trademark portfolio development and management can often streamline business resources, help jumpstart new brand initiatives, generate added asset valuations, and minimize downtime when expanding into new territories. This article discusses important trademark basics as well as common questions and issues in-house counsel often encounter during due diligence or IP audits.

What is a Trademark?
At a very high level, a ... Read More ›

In 2022, when asked whether an artificial intelligence could be an inventor on a patent, the United States Court of Appeals for the Federal Circuit definitively answered “no.” Thaler v. Vidal, 43 F.4th 1207 (Fed. Cir. 2022). But does this mean that inventions made with AI systems are completely ineligible for patenting? In a new memo published Tuesday in the Federal Register, the United States Patent and Trademark Office (USPTO) also says “no.”  “Inventorship Guidance for AI-assisted Inventions,” 89 FR 10043 (USPTO, February 13, 2024).

In Thaler v. Vidal, the ... Read More ›

When drafting method claims, a strategic patent practitioner must keep in mind whether any portion of the claim language will be interpreted by a Patent Examiner, PTAB tribunal, or Federal Circuit as conditional. Initial considerations may include whether conditional claim language will even serve the objective of protecting an invention and what types of claim terms may explicitly or implicitly invoke a conditional limitation. If claims include a conditional limitation, how might that affect an Examiner’s prior art search, and what would be required for infringement? A ... Read More ›

The Pokémon Company considers legal action against Palworld for intellectual property violations. On January 25, The Pokémon Company issued a statement on its Japanese website where it confirmed it intends to investigate “another company’s game” that was released in January 2024.

For gamers, this is an obvious nod to Palworld which has made headlines since its recent launch as many believe the animated world has strong similarities to Pokémon.  With over 8 million downloads in six days, legal action by The Pokémon Co. and its co-owner Nintendo appears imminent. The value ... Read More ›

On January 9, 2024 Relish Labs LLC (Relish) and its parent corporation The Kroger Co. (Kroger) filed a Petition for a Writ of Certiorari to the U.S. Supreme Court, seeking review of the Seventh Circuit’s refusal to issue a preliminary injunction against Grub Hub’s use of the orange fork and knife logo. Grubhub Inc. v. Relish Labs LLC, 80 F.4th 835 (7th Cir. 2023). Relish Labs LLC owns the HOME CHEF logo that also utilizes a fork and knife design. See Petition here.

Kroger’s Petition asks SCOTUS to determine once and for all if the determination of a likelihood of confusion is a factual ... Read More ›

Online sellers whose primary income results from sales on third party marketplaces must be vigilant in making sure they have notice of lawsuits filed against them or their products. A litigation process referred to as “Schedule A” that is becoming more prevalent has provided patent and brand owners with what can be a potent enforcement tool. These “Schedule A” cases may not put a seller on notice that they have been sued for intellectual property infringement. A temporary restraining order (TRO) could issue against an online marketplace, which could result in an immediate ... Read More ›

In patent claim drafting, two distinct ways to claim combinations of elements are Markush and Superguide constructions. Both approaches have been explored in recent case law, particularly with respect to the significance of proper syntax when reciting the limitation of “at least one” when it precedes a series of elements. A closer look at both the Markush and Superguide approaches for reciting elements in combination offers guidance to avoid traps for the unwary.

Superguide
Of the two, the Superguide construction is likely simpler. In exploring Superguide v. DirecTV as a ... Read More ›

The U.S. Patent and Trademark Office (USPTO) recently announced on December 2, 2023 the Semiconductor Technology Pilot Program (STPP), which is designed to support the Creating Helpful Incentives to Produce Semiconductors (CHIPS) Act of 2022 by expediting the examination of patent applications related to semiconductor technology.  More specifically, the STPP is designed to encourage research, development, and innovation in semiconductor manufacturing.

Under the STPP, an applicant must file a timely “petition to make special” using the required petition form (Form ... Read More ›

The recent September 2023 Federal Circuit decision in Elekta Ltd. v. Zap Surgical Systems, Inc., Case No. 21-1985 (Fed. Cir. 2023) shows that patent applicants should give consideration to formally addressing – on the record during prosecution - the relevance of the prior art references disclosed in their information disclosure statements (“IDSs”) to avoid later misinterpretation by tribunals in potential future Inter Partes Review (IPR) proceedings and court decisions.  Such misinterpretation may lead a tribunal to combine IDS references from irrelevant fields and ... Read More ›

In an Inter Partes Review (IPR), one of the arguments that a patent owner can raise against petitioner’s argument for unpatentability based on obviousness is that the asserted prior art is not analogous art.  According to the Federal Circuit, “[t]wo separate tests define the scope of analogous prior art: (1) whether the art is from the same field of endeavor, regardless of the problem addressed, and, (2) if the reference is not within the field of the inventor’s endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is ... Read More ›

When a party wishes to challenge the validity of another's patent, the party may chose to file a Petition Inter Partes Review (IPR) with the United States Patent and Trademark Office’s (USPTO) Patent Trial and Appeal Board (PTAB). If the Petition fails to provide sufficient evidence to  to demonstrate a reasonable likelihood of success on the merits, the PTAB will deny institution of the IPR.

For example, the Petition is required to include “[a] full statement of the reasons for relief requested, including a detailed explanation of the significance of the evidence including ... Read More ›

In the case of In re Cellect, the Federal Circuit upheld a United States Patent and Trademark Office (USPTO) decision that the patentee’s (Cellect’s) patents were unpatentable due to Obviousness-type Double Patenting (ODP). In reaching its decision, the Court ruled that Patent Term Adjustments (PTA) and Patent Term Extensions (PTE) should be treated differently when considering ODP.

In particular, the Court held that when different patent family members have different expiration dates based on PTA, the patent family members that expire on an earlier date can be relied upon ... Read More ›

“Unlike district court litigation—where parties have greater freedom to revise and develop their arguments over time and in response to newly discovered material—the expedited nature of IPRs bring with it an obligation for petitioners to make their case in their petition to institute.” Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1369 (Fed. Cir. 2016). Accordingly, the Patent Trial and Appeals Board (PTAB) rules state the Petitioner must “seek leave to file a reply” to a Patent Owner’s Preliminary Response (POPR) and “ [a]ny such request must make a ... Read More ›

The Federal Circuit issued a decision in In re Cellect on August 28, 2023 which may have far-reaching consequences during the assertion of one or more patents that are related members in a patent family, and that include claims that may be subject to an argument for invalidity for obviousness-type double patenting (ODP). The Federal Circuit found that when two or more related family member patents in a patent family cover similar enough or overlapping inventions, ODP can be applied to invalidate one of the patents where the related family member patents expire at different times due to ... Read More ›

AI-generated images have taken the internet by storm. From (occasionally terrifying) “deep fakes” to whimsical images of King Charles breakdancing, AI-generated images have entered the mainstream.

On August 18^th, in the case Thaler v. Perlmutter et al., Case No. 1:22-cv-01564 (U.S. District Court for the District of Columbia), Judge Howell of the DC Circuit held that artificial intelligence cannot be an author under U.S. Copyright Law.

The copyright application before the Court claimed that a particular artificial intelligence (“AI”) system was the “author” and ... Read More ›

In an Inter Partes Review (IPR), the burden of proof and persuasion lies with the petitioner to demonstrate "unpatentability by a preponderance of the evidence" under 35 U.S.C. § 316(e). “[T]hat burden never shifts to the patentee.” Dynamic Drinkware, LLC v. Nat'l Graphics, Inc., 800 F.3d 1375, 1378-79 (Fed. Cir. 2015). Accordingly, to invalidate a claim in an IPR, the petitioner must establish by a preponderance of the evidence, that a claim in a patent is unpatentable.

To prove that a claim is unpatentable for violating “obviousness” requirements under 35 U.S.C §103, a ... Read More ›

The Bayh-Dole Act, officially known as the Patent and Trademark Law Amendments Act, was enacted in 1980 as a United States federal law. Its purpose is to establish a framework for the ownership and commercialization of intellectual property that arises from research and development (R&D) activities funded by the federal government.

Prior to the enactment of the Bayh-Dole Act, the U.S. government retained ownership of inventions resulting from federally funded research. However, this approach often led to the underutilization of these inventions, as the government lacked the ... Read More ›

Applicant-admitted prior art (“AAPA”) refers to a situation in patent applications where the person or entity applying for a patent acknowledges the existence of prior art relevant to their invention. When an applicant admits prior art, they are essentially acknowledging that the invention they are seeking to patent is not entirely new or novel. By admitting the existence of prior art, the Applicant is disclosing that similar or related technologies or inventions already exist, which could potentially impact the patentability of their own invention.

In the United States ... Read More ›

In Sanofi-Aventis Deutschland GMBH v. Mylan Pharmaceuticals Inc., No. 2021-1981, 2023 U.S. App. LEXIS 11311 (Fed. Cir. 2023), the Federal Circuit reversed a decision by the Patent Trial and Appeal Board (“PTAB”) that found all challenged claims of U.S. Patent No. RE47,614 (“the ‘614 patent”) unpatentable in Inter Partes Review (IPR) IPR2019-01657. The Petitioner (Mylan) argued that the combination of three prior art references rendered the claims obvious. In attempting to sustain its burden of establishing obviousness, Mylan appears to have attempted to apply the ... Read More ›

In Amgen v. Sanofi (Case No. No. 21–757), the U.S. Supreme Court affirmed the lower courts’ holdings that Amgen’s patent claims to antibodies were invalid. These claims were claims 19 and 29 of U.S. Patent No. 8,829,165 and claim 7 of U.S. Patent No. 8,859,741.

The ‘traditional manner’ of antibody claim was to recite the epitope to which the antibody binds plus the effect of the binding. This has been the format since at least In Re Wands (858 F.2d 731) in 1988. For example, see claims 1 and 7 of Amgen’s U.S. Patent 8,859,741:

1. An isolated monoclonal antibody that binds to ... Read More ›

In last week’s precedential decision in HIP, Inc. v. Hormel Foods Corp, the Federal Circuit reversed a decision by the District Court of Delaware holding that an inventor, David Howard, should be added as a joint inventor on U.S. Patent 9,980,498 (“’498 Patent”). The Federal Circuit reasoned that the inventor failed to satisfy the three-part test articulated in Pannu v. Iolab Corp., 155 F.3d 1344,1351, because his contribution to the claims of the ‘498 Patent was “insignificant in quality.” HIP, Inc. v. Hormel Foods Corp., No. 2022-1696, 2023 U.S. App. LEXIS ... Read More ›

On May 2, 2023, the Writers Guild of America (WGA) went on strike, initiating yet another standoff in the entertainment industry. One of the primary issues in the WGA’s contract dispute with the Alliance of Motion Picture and Television Producers (AMPTP) is the use of artificial intelligence and creative machines such as GPT-4 in union projects, which the WGA sought to prevent. In an interview with Vice, John August, screenwriter of Charlie’s Angels and Big Fish, stated, “these large language models are progressing at an incredible rate. AI-generated material isn't ... Read More ›

Newly developed artificial intelligence systems have been used to generate new inventions (e.g. Dr. Stephen Thaler’s “Device for the Autonomous Bootstrapping of Unified Sentience” or DABUS), works of authorship (e.g. Alice and Sparkle, created by Ammaar Reshi using the ChatGPT large language model), and works of art (e.g. Zarya of the Dawn, created by Kristina Kashtanova using the Midjourney image generator). The U.S. Patent and Trademark Office and the U.S. Copyright Office have each held that artificial intelligence systems cannot qualify as inventors or authors for ... Read More ›

Last week’s non-precedential decision by the Federal Circuit Court of Appeals in Cioffi v. Google LLC, No. 2018-1049, 2023 U.S. App. LEXIS 9142 (Fed. Cir. Apr. 18, 2023) serves as a warning for both holders of reissue patents and patent owners considering filing a reissue. The Court held that the “original patent” requirement is the standard for support in the specification for claims in a reissued patent under 35 U.S.C. §251. In order for a claim to be supported under the original patent requirement, there must be an express disclosure of the exact embodiment claimed on reissue ... Read More ›

The summer of 2023 marks the most significant summer for concert goers since the start of the COVID-19 pandemic. With a highly anticipated concert line up ranging from Taylor Swift and Beyoncé to Billy Joel and Stevie Nicks, fans are spending hours waiting in ticket queues and arriving hours early to shows to buy merchandise. When purchasing goods within the venue or from a distributor licensed by the artist’s team, consumers assume that the products are made to high quality standards and accurately reflect the artist’s brand. However, despite the quality assurance, many fans ... Read More ›

Earlier this week, the Federal Circuit issued an opinion in Sequoia Technology LLC v. Dell Inc. et al. that underscores the importance of intrinsic evidence when construing claim language in a District Court litigation. Of particular importance are the Court’s statements regarding the patent specification’s provision of an “express purpose of the invention” and a “preferred embodiment,” as well as the Court’s reliance on statements made by the Patent Owner in its pre-institution filings and on a document cited in an Information Disclosure Statement (IDS) during ... Read More ›

In Salazar v. AT&T Mobility LLC, the Federal Circuit found that a claim reciting "a microprocesser" that performed several functions was not infringed by a system where the claimed functions were distributed among multiple microprocessors. The Court reasoned that “for a dog owner to have ’a dog that rolls over and fetches sticks,’ it does not suffice that he have two dogs, each able to perform just one of the tasks.”  Salazar v. AT&T Mobility LLC, Nos. 2021-2320, 2021-2376, 2023 U.S. App. LEXIS 8071, at *15 (Fed. Cir. Apr. 5, 2023). 

The claim in Salazar recited:

1. A communications ...

In Arbutus Biopharma Corporation, FKA Protiva Biotherapeutics, Inc. V. Modernatx, Inc., FKA Moderna Therapeutics, Inc. (Fed. Cir. 2020-1183, April 11, 2023), Moderna challenged claims 1–22 of Arbutus’ U.S. Patent No. 9,404,127 (the ’127 Patent) by Inter Partes Review. The Board found all challenged claims anticipated by U.S. Patent 8,058,069 (Yaworski). The Board’s determination of anticipation relied on inherency and the disclosure of documents incorporated by reference by both Yaworski and the ’127 Patent.

The ’127 Patent was directed to compositions of ... Read More ›

The Federal Circuit’s 2004 decision in Superguide v. DirecTV can be influential in determining the fate of a patent’s validity based upon a simple test: does your claim recite “OR” or does your claim recite “AND” when listing a series of elements?  SuperGuide Corp. v. DirecTV Enters., Inc., 358 F.3d 870 (Fed. Cir. 2004).  What seems to be a triviality becomes critical under SuperGuide.  At issue is how to interpret the plain meaning of the phrase “at least one of” when it precedes a series of elements, such as in the hypothetical claim language, “at least one of A, B, and ... Read More ›

NFTs, or “non-fungible tokens”, are a quickly growing space for artists and investors alike. The rapidly growing interest in NFTs is likely due to the shocking value an NFT can attain and the incorporation of blockchain technology. One piece of NFT artwork, Everydays: The First 5000 Days, sold for a whopping $69 million. $69 million is a lot of money to spend on anything, but this is just one example of many NFTs fetching massive price tags.

In one sentence, an NFT is a non-interchangeable, digital asset that is backed by a certificate of authenticity stored in the blockchain. The name ... Read More ›

Regents of the University of Minnesota v. Gilead Sciences., Inc., CAFC 2021-2168

Gilead Sciences filed a petition for Inter Partes Review (IPR) against the University of Minnesota’s U.S. patent No. 8,815,830 (the ’830 Patent). Gilead challenged claims 1-9, 11-21, and 23-28 of the ’830 Patent, and alleged that they are anticipated by U.S. pre-grant publication No. 2010/0016251 (Sofia). The Patent Trial and Appeal Board (PTAB) held that the Challenged Claims were anticipated, and the University of Minnesota appealed to the Court of Appeals for the Federal Circuit.

The ... Read More ›

In part one of this article, I discussed Dr. Stephen Thaler and his system DABUS, short for “Device for the Autonomous Bootstrapping of Unified Sentience,” and distinctions between this and other artificial intelligence systems. Thaler believes the system is sentient and has the ability to dream and invent.

So what if he is right? The inventorship issue may be moot in a practical sense, as an applicant could simply use their own name on a declaration of inventorship, though Dr. Thaler contends this would be fraud. “I think the way that our lawmakers and courts are steering things ... Read More ›

Just as the U.S. Patent Office has declined to consider patent applications naming an artificial intelligence as an inventor, the U.S. Copyright Office has declared that works authored by artificial intelligent artists or authors are ineligible for copyright protection. In a new notice published in the Federal Register, “Copyright Registration Guidance: Works Containing Material Generated by Artificial Intelligence,” 88 FR 16190 (March 16, 2023), the Copyright Office reiterated that “copyright can protect only material that is the product of human creativity.” ... Read More ›

Part 1 in a 2 Part Series

In the age of creative machines and artificial intelligence, intellectual property law is facing new challenges and questions. As we continue to push the boundaries of what machines can create, the questions of ownership and authorship become more and more complex. An AI that can produce patentable inventions could also be used to pre-empt competitors’ use of the patent system by flooding the space with artificially generated prior art. Courts have yet to address this possibility. Judging by Dr. Stephen Thaler’s description of his DABUS system, the time ... Read More ›

Earlier this week, in Intel Corporation v. Pact Xpp Schweiz Ag, the Federal Circuit reversed a final written decision by the Patent Trial and Appeal Board (PTAB) that a processor claim was valid as being non-obvious over a combination of cited references because the Petitioner’s argument under the “known technique” test was found to be lacking. In particular, the PTAB held, and the Federal Circuit reversed, that the “known technique” test requires that the proposed combination would result in an improvement over the base reference. This appears to be in conflict with how ... Read More ›

Director Vidal is reshaping the rules for discretionary denials of Inter Partes Review (“IPRs”) at the Patent Trials and Appeals Board (“PTAB”). The Director’s most recent decision in AviaGames v. Skillz Platform, Inc., IPR2022-00530, comes on the heels of her decision in CommScope Tech. v. Dali Wireless, Inc., IPR2022-01242.  In AviaGames, the Director articulates a new discretionary denial standard for IPRs where the patent has been ruled invalid under 35 U.S.C. § 101 in the parallel District Court litigation. (For a detailed discussion of CommScope see our previous ... Read More ›

On January 12, the United States Court of Appeals for the Federal Circuit (Appeals Court) issued its decision in Grace Instrument Industries, LLC v. Chandler Instruments Company, LLC. The case was an appeal from the United States District Court for the Southern District of Texas (District Court). Grace v. Chandler teaches us that care should be taken to avoid indefinite claim terms when possible. However, when a claim term is questioned, its meaning is ultimately determined in how it is explained in the specification and how it is discussed during prosecution.

In May 2020, Grace sued ... Read More ›

The Director of the USPTO, Kathi Vidal, issued a decision this week raising the likelihood that the Patent Trials and Appeals Board (PTAB) will exercise its discretion to deny the institution of Inter Partes Review (IPR) challenges. Last June, Vidal issued guidance on the discretionary denial standard, which was widely interpreted to be the death knell for discretionary denials. The Director’s decision this week will undoubtedly change that view. It appears that the prospects for discretionary denial are alive and well at the PTAB.

In  COMMSCOPE TECHNOLOGIES LLC, v DALI ... Read More ›

Before examining whether a particular invention is patentable over the prior art, there’s an even more fundamental question: who is the inventor? The U.S. Constitution gives Congress the power to grant exclusive patent rights to inventors, but does not define who or what qualifies as an inventor. Previously, this has been a relatively straightforward issue, with the Federal Circuit noting in Univ. of Utah v. Max-Planck-Gesellschaft zur Forderung der Wissenschaften e.V, 734 F.3d 1315, 1323 (Fed. Circ. 2013), that “inventors must be natural persons and cannot be corporations ... Read More ›

ChatGPT has exploded in the media recently with news stories ranging from educators’ concerns over students using ChatGPT to cheat on assessments, to ChatGPT becoming an existential threat to Google’s online advertising dominance, as well as ChatGPT potentially replacing professionals such as software coders and writers, and even the threat that an artificial intelligence (AI) could take and pass exams for doctors and lawyers.

For those not yet exposed to it, ChatGPT is an online “chat bot” from OpenAI, powered by artificial intelligence (AI), that can engage in a ... Read More ›

The advantages of 3D printing in the automotive industry are clear — reduce the overhead spend on standard manufacturing tools and procedures while also increasing speed of production. Computer-aided design (CAD) software, generally provided in the form of an electronic file for use on a computer, is fundamental to the 3D printing manufacturing process in that the end product is based upon the CAD file. While a company’s actual 3D-printed products can be protected by both design and utility patents, securing the intellectual property of the manufacturing process, including ... Read More ›

One misconception among those who primarily litigate patent infringement actions before U.S. federal courts is that post-grant proceedings before the Patent Trial and Appeal Board (PTAB), including inter partes reviews (IPRs) and post grant reviews (PGRs), are similar to federal patent litigation. Although there are similarities between these types of proceedings, as IPR/PGR proceedings are also adversarial between the petitioner (i.e., the patent challenger) and the patent owner, there are important differences between the two. Besides the differences in legal ... Read More ›

Discussing the technical advantages of an invention, a standard practice in many jurisdictions such as before the European Patent Office, has long been disfavored in the US.  However, recent Federal Circuit case law suggests that there may be significant value to be gained by discussing the advantages of the claimed invention in the context of the prior art in order to establish patent eligibility under 35 U.S.C. §101.

In the recent Federal Circuit Court of Appeals case of Cooperative Entertainment, Inc. v. Kollective Tech, Inc., the Court reaffirmed the importance of the ... Read More ›

Artificial Intelligence (AI) is everywhere these days, from personal assistants to self-driving cars. With the continuous introduction of new technology, the use of artificial intelligence in business has been growing rapidly, and in ways that people have never imagined. AI is used in many software products and services, and is also being integrated into manufacturing processes. AI frequently automates routine tasks that were previously performed by people, eliminating tedious work, making business processes more efficient, and creating new capabilities and ... Read More ›

A distinctive trademark in a competitive marketplace can often be one of a company’s most valuable assets. This is because it does not only indicate the source of a good or service, but it also differentiates that good or service(s) from that of other competitors. Separate and apart from its value as a source indicator, trademarks can also be used as collateral to secure loans and can also form the basis of corporate acquisition strategies.

Like the valuable asset they are, trademark rights should and can be protected. Resultingly, common law, state law, and federal law provide a means ... Read More ›

The April 16^th, 2022, New York Times editorial entitled “Save America’s Patent System” recommends that the US Patent and Trademark Office (USPTO) be improved through collaboration with other agencies such as the Food and Drug Administration (FDA). The editorial identified that “[e]xisting regulations allow medical device makers to sidestep burdensome regulatory approvals if their newer products are deemed similar to ones that already exist.”

However, the editorial board of the New York Times recognized that the lack of collaboration between the FDA and the USPTO ... Read More ›

Earlier this year, based on a suggestion from the Congress of the United States, the United States Patent and Trademark Office (“USPTO”) implemented the Deferred Subject Matter Eligibility Pilot Program (“Pilot Program”). During the duration of the Pilot Program, the USPTO will be evaluating the effects of permitting applicants to defer responding to Subject Matter Eligibility Rejections, i.e., 35 U.S.C. §101 rejections. The Pilot Program began in February of this year and runs through the end of July, and will likely have a large impact in art units focused on Artificial ... Read More ›

A recent Federal Circuit decision in Larry G. Junker v. Medical Components, Inc., Martech Medical Products, Inc., 2021-1649, 2022 U.S. App. LEXIS 3647 (Fed. Cir. Feb. 10, 2022) serves as a reminder for businesses to carefully watch commercial activity with respect to the bar date for patent applications.

The subject of the appeal is Mr. Junker’s design patent claiming an ornamental design for a handle for an introducer sheath shown below with solid lines.

Mr. Junker accused the defendants of infringing the patented design. In response, the defendants countered in-part that the ... Read More ›

In the latest measure affecting global intellectual property protection, Russian Prime Minister Mikhail Mishustin announced a new law allowing “parallel imports.” This action will permit Russian importation of goods without the permission of the rightful trademark owners. The new law was enacted in response to sanctions placed on the Russian economy after recent events. It seeks to satisfy the demand for goods that arose after famous brands like Apple, Nike, McDonald's, Coca-Cola, and Pepsi temporarily suspended sales in the Russia. Practical application of the law could ... Read More ›

When you begin to study the law of trade secrets, you are advised that trade secret protection requires that the secret cannot be publicly disclosed, and this requirement is contrary to the patent protection system that requires the owner to publicly disclose the invention. This secrecy requirement appears unrealistic in a commercial environment. It is difficult to imagine how one can exploit the trade secret commercially without some disclosure to others engaged in the commercial activity associated with use of the trade secret. Those necessary disclosures could involve ... Read More ›

As the threat of cyberattacks looms in the wake of the U.S.’s response to Russia’s invasion of Ukraine, President Biden signed into law a $1.5 trillion spending package on March 11, 2022 that funds the federal government through the fall. The law includes the strongest cybersecurity legislation in recent history and adopts the Strengthening American Cybersecurity Act of 2022. Jen Easterly, director of the Cybersecurity and Infrastructure Security Agency (“CISA”), stated, “Put plainly, this legislation is a game changer.”

The law increases funding for CISA over 22 ... Read More ›

In recent years, the United States Patent and Trademark Office (USPTO) has taken strides to reduce, on average, the duration of time between the filing of a patent application and either abandonment or issuance (also referred to as “patent pendency”).

The USPTO has hired hundreds of new patent examiners to replenish manpower lost during the pandemic and indicates plans to increase examiner hires steadily through 2026. USPTO, Fiscal Year 2022: Congressional Justification, 37 (2021) Various changes in the assignment of applications to art units and pre-issuance processing ... Read More ›

Once only a tool for scientists, artificial intelligence (AI) is becoming an everyday tool, from voice assistants and targeted advertising to autonomous driving. It is used in a wide variety of applications from product recommendations to medical diagnosis. AI is now entering the legal field in many areas, such as in litigation forecasting, damages calculation, document review and document drafting.

As AI has progressed over time, it is now replicating more and more things that only humans had done before. This is now creating new legal issues. For example, if an AI invents ... Read More ›

If a startup company wants to become an established, successful business, the company needs to carefully manage all of its resources, both tangible and intangible, in the same manner as an established, successful business – focusing meticulously on maximizing the return on every expenditure. If the company is founded on proprietary technology, carefully planning an intellectual property (IP) strategy as part of the business plan is critical. A well-managed and organized IP portfolio is attractive to potential investors at all stages of a business’s development and can be ... Read More ›

“This writing business. Pencils and what-not. Over-rated, if you ask me. Nothing in it. Silly stuff.” Eeyore, from A.A. Milne’s 1926 classic, Winnie-the-Pooh. Well, Eeyore, for the last 95 years millions of readers felt otherwise, at least when the writing business came to their beloved Pooh, Piglet, Rabbit, Kanga, Roo and Owl. This year, however, marks a new beginning for these characters and their friend Christopher Robin, for the U.S. copyright on the original Winnie-the-Pooh book expired on the last day of 2021. That includes not only the story but the wonderful ... Read More ›

Pressure for development of more efficient battery chemistry in electric vehicle fleets is now greater than ever, prompting greater collaboration between major original equipment manufacturers (“OEMs”), such as Ford, Chrysler and GM, and battery component suppliers. Collaboration within the auto industry may often provide a measure of security against competitors.

But to all OEMS and well-funded startups, take fair warning! When such collaboration takes the form of licensing arrangements to jointly invent a new concept to a commercially satisfactory stage of ... Read More ›

Astrazeneca v. Mylan (Fed. Cir. 2021) 2021-1729

AstraZeneca AB and AstracZeneca Pharmacueticals LP (AstraZeneca) sued Mylan Pharmaceuticals Inc. and Kindeva Drug Delivery L.P. (Mylan) for infringement of every claim of each of U.S. Patent Nos. 7,759,328 (the ’328 Patent); 8,143,239 (the ’239 Patent); and 8,575,137 (the ’137 Patent). These patents are listed in the U.S. FDA “Orange Book” as the patents covering AztraZeneca’s Symbicort® pMDI and Symbicort® Turbohaler, and Mylan obtained an interest in an abbreviated new drug application (ANDA) seeking ... Read More ›

2021 has seen many different trends, with a large one being break ups, specifically, major companies splitting into multiple entities. Earlier this year, several fortune 500 companies, including General Electric (GE) and Toshiba announced that they would be splitting into multiple entities. But how do intellectual property (IP) rights play into these major spin offs?

Splitting companies and determining where the IP rights will go requires careful consideration of a variety of factors. While it may be clear where some IP goes, such as specific patents or trademarks, other IP may ... Read More ›

Uncertainty surrounding patent eligibility jurisprudence has been a thorn in the side of many patent applicants, patent holders, scholars, and judges for years, leading voices in the patent sector to issue repeated, though unavailing, calls for legislative action. Recent activity by lawmakers, however, suggests that rising innovation in the artificial intelligence (AI) sector may be viewed as a catalyst for change.

Central to the issue of patent eligibility is the framework set forth in Mayo Collaborative Services. v. Prometheus Labs, 132 S.Ct. 1289 (2012) and Alice v. CLS Bank ... Read More ›

Facebook’s CEO Mark Zuckerberg announced on October 28, 2021 that Facebook changed its corporate name to Meta and its stock ticker from FB to MVRS.

This does not mean that the social media app will be changing its name to Meta. Instead it signals a shift in corporate strategy. It appears that that Meta will be the parent company under which its social media applications (Facebook, Instagram, and WhatsApp) will become subsidiaries along with potential new business in the fields of augmented and virtual reality. In other words, Facebook’ goodwill, which it claims in its 2020 annual ... Read More ›

Companies face many hurdles when bringing a new product to market, including technical problems, regulatory requirements and changing market forces. Introducing a new drug or medical device to the market introduces additional regulatory hurdles before both the Food and Drug Administration (FDA) and the US Patent and Trademark Office (USPTO). The strategies for meeting these regulatory requirements may often seem contradictory, and can be a trap for the unwary.  This ultimately doomed the Belcher Pharmaceutical patent as will be explained in detail below.

When filing a patent ... Read More ›

It takes two to tango, and if you are like many of us still working remotely, you may use a two-step identification method for accessing a secure network, such as the Duo Security two-part authentication dance to log onto your remote platform. Well, you might be dancing to something different one day now that the Federal Circuit has upheld validity of a patent owned by Duo competitor CosmoKey. In CosmoKey Solutions, GMBH & Co. KG. v. Duo Security, LLC (Fed. Cir, Oct. 3, 2021), the appeals court reversed a Delaware District Court ruling that CosmoKey’s authentication patent U.S ... Read More ›

Scam solicitations involving intellectual property notices have plagued trademark and patent owners for many years. As technology and scammer sophistication improve, these schemes are becoming more prevalent and confusing, and a growing international problem. Currently the U.S. Patent and Trademark Office (USPTO) is tracking over 50 such scams originating in the U.S. and dozen overseas. Staying vigilant is the best protection.

Typically, these fraudulent solicitations target owners of U.S. registrations and patents. They often provide misleading deadline information ... Read More ›

On September 29, 2021, Senators Patrick Leahy (D-VT) and John Cornyn (R-TX) introduced a bipartisan bill, “Restoring the America Invents Act.” The bill would roll back changes introduced by the courts and former USPTO Director Andrei Iancu. Specifically, the bill would “restore” aspects of the Patent Trial and Appeal Board (PTAB) and the inter partes review (IPR) and post-grant review (PGR) programs.

The purpose of the bill is “to address problems for small businesses and ordinary Americans caused by poor-quality patents” according to the Senators’ joint ... Read More ›

Let’s face it: patents are expensive and most fail to be profitable. For any typical patent portfolio, the challenge is to efficiently weed out the winners from the duds and then assert the winners strategically to effectively monetize the portfolio.

To successfully monetize a patent, one must: 1) prove infringement of one or more asserted claims, 2) defend the asserted claims against invalidity attacks, and 3) establish high-impact damages caused by the accused products’ infringement. So, how does one mine a portfolio for patents that are most likely to help achieve these ... Read More ›

Actress Kristen Bell, alongside her business partner Monica Padman, debuted a limited series podcast this summer, which focused on sharing the stories of exceptional women. They called it Shattered Glass, an homage to the ceiling-smashing work of storied guests like Oprah Winfrey, Reese Witherspoon, Gloria Steinem, and Malala Yousafzai.

By the fifth episode, the podcast had been renamed We Are Supported By and Bell was embroiled in a public skirmish with the creators of a different podcast called Shattered Glass – one that also celebrated the stories of strong women, and that had ... Read More ›

The influencer industry has ballooned in size and importance since the first affiliate marketing network was launched fifteen years ago. With this growth, however, comes increasing legal responsibility for those who profit off it.

Celebrities make headlines for commanding upwards of $1M for sponsored social media posts, but the average influencer is more likely to be a young person, armed with an iPhone and a shoestring budget. In a world where affiliate marketing, sponsored posts, and giveaways trump traditional print advertising, influencers - from nano-influencers to Kim ... Read More ›

In the United States, trademark rights flow from use, not registration. A business may be afforded a certain level of trademark protection in its geographic area simply by being the first to use a mark in commerce in connection with its goods or services. However, any unregistered or “common law” rights may be limited geographically. There are critical differences between common law trademark rights and trademark rights obtained via a federal trademark registration with the United States Patent and Trademark Office (USPTO). As discussed in this article, priority battles can ... Read More ›

Juno Therapeutics v. Kite Pharma

Kite Pharma appealed a final judgement that (1) claims 3, 5, 9, and 11 of U.S. Patent No. 7,446,190 (the ’190 Patent) are not invalid for lack of written description or enablement, (2) the ’190 patent’s certificate of correction is not invalid, and (3) Juno Therapeutics, Inc., and Sloan Kettering Institute for Cancer Research (collectively, Juno) were entitled to $1,200,322,551.50 in damages. Let that sink in. $1,200,322,551.50 in damages.

The ’190 Patent related to CAR T-cell Therapy. T-cells are part of your immune system, and have ... Read More ›

For an estimated $1.6 million, soccer superstar Cristiano Rinaldo will advertise a product in an Instagram post to his 329 million followers. Other celebrities who command more than $1 million per endorsement include Ariana Grande, a handful of Kardashians/Jenners, and The Rock. This practice, known as “influencer marketing,” has ballooned from a $1.7 billion market size in 2016 to an expected $13.8 billion in 2021,  while at the same time upending traditional print and broadcast advertising.

Now, a trademark lawsuit threatens to derail the gravy train. What happens when an ... Read More ›

GlaxoSmithKline v. TEVA
Fed. Cir

Patent and U.S. Food and Drug Administration practices are complex. But these two fields were further complicated by meshing them together in a design intended to both (1) reward drug innovators but then (2) insure that cheaper, generic versions of drugs hit the market quickly after the innovator patents expired. One aspect of this tangled net of highly specialized legal fields was brought to light in the recent case GlaxoSmithKline v. Teva, 2018-1976, 2018-2023 (Fed. Cir., August 15, 2021). This post covers only a small, but still complicated ... Read More ›

One year ago, on July 16, 2020, the Court of Justice of the European Union (CJEU) issued a landmark decision in Data Protection Commissioner v. Facebook Ireland and Maximillian Schrems (Schrems II). At issue were data transfers between the EU and the U.S.

In a decisive blow to normal operating procedures for thousands of U.S. businesses, the Schrems II court upended two mechanisms that most companies relied on to transfer data – the EU-U.S. Privacy Shield and standard contractual clauses (SCCs). The Privacy Shield was determined inadequate for data privacy protection and ... Read More ›

One month ago, the idea of a meat processing plant as the subject of a cyberattack seems almost inconceivable to the average person. Yet, in early June, JBS, the world’s largest meat supplier, wrestled to resolve a massive breach that shut down parts of its supply chain in the U.S. and Australia. Three weeks before, a similar attack had disrupted the Colonial Pipeline’s computer infrastructure, causing soaring gasoline prices and temporary shortages in the southeastern U.S.

These attacks highlight a vulnerability facing all organizations in today’s rapidly changing ... Read More ›

Well trained inventors are essential to building a high-quality patent portfolio that won’t blow the budget. The questions below are based on an informal poll of questions frequently asked of patent attorneys by inventors within large organizations, but they also apply to smaller companies and startups. They can form a starting point or a supplement to your inventor training.

Before reviewing the questions, inside counsel should first ask “Who trains my inventors?” and “How often?” Hopefully, the answer is not “nobody” and “never,” but even if it is, this ... Read More ›

In patent law, the doctrine of “assignor estoppel” refers to barring a party who assigned a patent from later challenging the validity of the patent. Assignor estoppel is an equitable doctrine that has been relied upon in order to prevent someone who has assigned the rights to a patent (or patent application) from later contending that what was assigned was, in fact, worthless. The doctrine has been applied to not just inventors, but also parties in privity with the original inventor, such as a corporation founded by the inventor. Essentially, the doctrine of assignor estoppel is ... Read More ›

In its recent opinion in Free Stream Media Corp. v. Alphonso Inc. on May 11, 2021, the U.S. Court of Appeals for the Federal Circuit confirmed that abstract idea claims directed to “targeted advertising” are patent ineligible subject matter under 35 U.S.C. § 101. Since the Supreme Court’s decision in Alice Corp. v. CLS Bank Int’l in 2014, which provides the current authority for determining whether a proposed invention is patent eligible under § 101, the Supreme Court has not provided additional guidance in the area of subject-matter eligibility, and courts have been unable ... Read More ›

Under US law, to obtain a trademark registration, an Applicant must demonstrate a bona fide use of the mark in the ordinary course of trade. In recent years, there has been a dramatic increase in trademark applications that falsely claim a bona fide use in trade. As a result, the United States Patent and Trademark Office (“USPTO”) has been issuing and maintaining registrations for trademarks that should never have issued. When such fraudulent registrations remain on the Trademark Register, they block the legitimate efforts of businesses to launch new trademarks into the ... Read More ›

Beauty is in the eye of the beholder is a catch phrase well known and of ancient origin. Benjamin Franklin even had a wry turn at it in Poor Richard's Almanack, 1741: “Beauty, like supreme dominion is but supported by opinion.”  As it turns out, however, in the opinion of the District Court of Delaware, “beauty,” or in this case, enhancement of the skin is not a term one ought to have in their patent claims, because that which relies on opinion is indefinite in the eyes of the court. Univ. of Mass. and Carmel Labs., LLC v. L’Oréal Inc., D.Del. (April 21, 2021).

University of ... Read More ›

A recent opinion issued by a federal court in the District of New Jersey provides a cautionary tale regarding patent infringement cases. In EagleView Techs., Inc. v. Xactware Solutions, Inc., plaintiff, EagleView filed a motion for enhanced damages and attorneys’ fees. The Court granted enhanced damages and attorneys’ fees, excluding those associated with the pretrial phase. The basis for this judgement follows.

Enhanced Damages

Pursuant to 35 U.S.C. 284, the court may increase damages up to three times the amount found. Enhanced damages serve as a punitive sanction for ... Read More ›

The ongoing pandemic has wreaked uncertainty for many businesses. Forecasting expenses and costs, especially in the research and development areas, has become more difficult. In the intellectual property world, opinions of counsel on patentability, infringement, clearance, and validity are often overlooked as tools to control budgets and forecast spending. While each of these opinions will necessarily require upfront costs, the information they provide often yields tangible cost savings resulting from a more focused research and development effort. This article ... Read More ›

On Earth Day, environmentalists all over the world encourage society to reduce its collective carbon footprint. A popular way of generating less waste is “upcycling,” or the practice of taking something no longer being used and giving it new life. Upcycling often increases the value of the object; take, for example, Stuart Haygarth’s chandeliers made entirely from spectacles found on beaches - one sold at auction in 2008 for £36,500.

Upcycling is also at the heart of a recent decision by the U.S. District Court for the Southern District of New York. In Hamilton International v ... Read More ›

There are an ever increasing number of developments being made on the Ethereum blockchain. Those closely following these developments may be aware of Uniswap’s announcement about its upcoming release of its V3 protocol on the Ethereum mainnet in May.

Uniswap is a DEX or decentralized exchange application for cryptocurrencies and tokens. Like most decentralized financial (DeFi) protocols, Uniswap runs on fully open-source software which utilize smart contracts on Ethereum’s blockchain. Being decentralized, Uniswap protocols are voted on by users of the platform, and ... Read More ›

Generally, many U.S. jurisdictions protect confidential communications between attorneys and their clients—attorneys and their clients cannot be forced to testify to these confidential communications and only the client can waive this privilege, unless the privilege is broken by some other event. Attorney-client privilege is broken when the confidential communication is shared with a third party, unless the third party is indispensable to the lawyer giving legal advice or facilitates in the lawyer giving legal advice (e.g., a client’s accountant present when the ... Read More ›

After more than a decade of litigation, the Supreme Court of the United States concluded that Google’s use of Oracle’s software code was fair use.

The dispute centered on use of Oracle’s Java programming language’s application programming interfaces (APIs) and source code, which was used in early versions of Google’s Android operating system. Oracle sued Google, arguing that the APIs were copyrightable. In response, Google asserted a defense of fair use.

Below we share the highlights from the Court’s long-awaited opinion.

A Victory for Fair Use

The Court found in ... Read More ›

Functional claim language—which defines an invention by what it does rather than what it is—can be a powerful claim drafting tool when used carefully. For example, functional language may be advantageous for computer-implemented inventions that are characterized with reference to logical components instead of physical hardware. 35 U.S.C. § 112(f) (formerly § 112¶ 6) expressly permits the use of functional claiming and is traditionally invoked by the phrase “means for” followed by a functional modifier. But even when the term “means” is not used, other terms that ... Read More ›

Design patent protection is an under-utilized tool that can provide fifteen (15) or more years of protection at a fairly reasonable cost for the new and non-obvious ornamental appearance of different Articles, which can vary from consumer and industrial products to computer icons.  Once a design patent is issued, one study has shown that design patents provide a higher probability for obtaining an infringement verdict and a substantially lower chance of being found invalid than utility patents.  Accordingly, where appearance distinguishes a product from others in the ... Read More ›

GLAXO GROUP LIMITED and HUMAN GENOME SCIENCES, INC. v. DRIT LP (Delaware Supreme Court, March 3, 2021, N16C-07-218).

Sophisticated parties will be held to the agreements they negotiate, and the implied covenant of good faith will not negate an unrestricted contractual right.

Background
Lupus, or systemic lupus erythematosus, is an autoimmune disease in which a person’s own immune system turns on it and destroys healthy tissue. Patients suffering from Lupus have “intense B-cell activation.” That is, their immune systems are overcharged, and one type of immune cell, the ... Read More ›

It is March, and while love celebrated on Valentine’s Day may be in the air for many, breakups are inevitable. In the case of a breakup between an employer and an employee, the departure of an employee with access or knowledge of the employer’s intellectual property (IP) can put the employer at risk for IP theft or exposure. Disputes over IP ownership can have significant negative impact on a company’s value, growth potential, and reputation, even if the company ultimately comes out the victor. Therefore, it is critical to have a well-defined and consistent exit process for ... Read More ›

Greater flexibility in remote working environments for employees has led to an increase in the revolving door of new and departing employees and greater challenges for employers to keep up with on-boarding and exiting procedures to protect corporate intellectual property (IP) rights. Such intellectual property rights typically include patents which protect inventions; trademarks which protect a company’s brand and reputation; copyrights which protect works of authorship and creativity; and trade secrets which protect a company’s confidential or propriety ... Read More ›

Intellectual property (IP), like other forms of property, is an asset that can be subject to contractual obligations and agreements between multiple parties. Due to the unique nature of IP as compared to physical assets, the provisions governing IP agreements also have unique characteristics. Parties to these agreements must take special care to ensure that the scope of the agreements are clearly defined, in addition to making each party’s obligations explicit. IP agreements can come in a variety of forms, such as license agreements, assignment agreements, and joint ... Read More ›

On October 17, 2020, the Chinese Legislature passed the Fourth Amendment to the China Patent Law, which will take effect on June 1, 2021. The Fourth Amendment marks the first major change in Chinese patent law since 2008. These changes will have a major impact on both prosecution and enforcement. Key amendments include those related to patent terms, damages, and licenses. Below is a summary of a few of these key amendments.

New Article 20 adds a “Good Faith” provision which reads, in part, “patent rights shall not be abused to harm public interests or the legitimate rights and ... Read More ›

Data Privacy Day occurs annually on January 28. Launched in the U.S. and Canada in 2008 by the National Cybersecurity Alliance, the Data Privacy Day campaign raises awareness about internet safety and data privacy concerns.

A survey conducted in 2018 by the Pew Research Center found 79% of Americans are “not too or not at all” confident that a company will admit to having made a mistake or accept responsibility for the implications of compromised personal data. (See “Americans and Privacy: Concerned, Confused and Feeling Lack of Control Over Their Personal Information”Read More ›

What if someone told you not all clauses in a Non-Disclosure Agreement (NDA) are created equally? This was one of several lessons that could be drawn from SiOnyx LLC v. Hamamatsu Photonics K.K., 981 F.3d 1339 (Fed. Cir. 2020) which involved an NDA that contained several clauses, some of which ended up being more important than others.

At the beginning of their engagement in or around 2006-2007, SiOnyx was a startup and Hamamatsu was an established manufacturer interested in the technology that SiOnyx was developing. The parties entered into an NDA to allow them to share confidential ... Read More ›

The Administrative Office of the United States Courts announced new security procedures to protect confidential filings on Wednesday, January 6, 2021. The changes come in the wake of a massive cybersecurity breach identified in December 2020. The breach involved a known compromise of third-party provider products, and has affected a number of federal agencies, including the Departments of Energy, Commerce, State, and Treasury. The Judiciary uses an impacted product for IT network monitoring and management and; consequently, its online filing system has been jeopardized.

In ... Read More ›

Issue preclusion and claim preclusion are two strategic defenses that an accused infringer can rely upon if that party was previously cleared of patent infringement.

Issue preclusion, or collateral estoppel, precludes a party from relitigating an issue actually decided in a prior case and necessary to the judgment. Under claim preclusion, or res judicata, a judgment on the merits in a prior lawsuit bars a second lawsuit involving the same parties or their privies based on the same cause of action. Claim preclusion also bars claims that could have been brought in the first action ... Read More ›

Significant intellectual property law provisions are part of the $2.3 trillion spending bill passed by Congress.

Copyrights

In the copyright area, the Protecting Lawful Streaming Act of 2020 is directed to curbing "commercial, for-profit streaming piracy services" that profit from streaming unlicensed or otherwise illegally copied copyrighted material. Penalties could include significant fines and imprisonment. The law currently has a carve-out for "individuals who access pirated streams or unwittingly stream unauthorized copies of copyrighted works.”

The new laws ... Read More ›

The requirements for ownership of a patent and the right to bring suit for the enforcement of the patent would seem to be well settled in patent law. As demonstrated in the recently decided Federal Circuit Court of Appeals (Case 2019-2244), AntennaSys, Inc. v. AQYR Technologies, Inc., et al., overlooking the ownership or enforcement requirement can result in wasted time and cost for the litigants and frustration for the courts. This article raises awareness of the nuances of ownership and enforcement rights in the hope of avoiding the cost and frustrations for all involved.

The ... Read More ›

As the political dust kicked up by Brexit very gradually settles, the focus has shifted from “What if?” to “Now, what?” In a post-Brexit world, what can U.S. companies expect, particularly with respect to their European Union (EU) trademark and design rights? And more importantly, what can U.S. companies do about it?

In thinking about Brexit, it’s helpful to keep a few things in mind. First, the breakup is taking place at the same time as an unprecedented global pandemic, which has delivered major shocks to the world’s economic systems and institutions. Brexit would be a ... Read More ›

While COVID-19 may have temporarily slowed some of the day-to-day activities in the legal profession, the headlines show that the wars over Standard Essential Patents (SEPs) and fair, reasonable, and non-discriminatory (FRAND) licensing of SEPs persist without abandon. Appellate courts around the world previously had relatively few opportunities to offer guidance as to the licensing terms or the manner of negotiating licenses to SEPs. But recently, the highest civil courts in Germany and the United Kingdom handed down important decisions in disputes over SEPs and FRAND ... Read More ›

One of the main advantages of hiring outside patent counsel is the ability to pass invention materials to a drafting attorney to prepare a patent application. This work transfer reduces the in-house counsel’s burden, freeing them to devote more of their time to strategic portfolio management rather than the minutiae of preparing an individual application.

Too frequently, however, the invention materials provided to outside counsel are incomplete. The understanding is that the drafting attorney will be able to use their engineering acumen to sort through the pieces, determine ... Read More ›

The conflicts over sovereign immunity date back to our country’s founding when states were concerned about possible overreaching by a central government. An early Supreme Court decision in Chisholm v. Georgia, 2 US 419 (1793) rejected sovereign immunity and held that the federal government had sovereign immunity but the states did not. Congress quickly responded with the 11^th Amendment, which was ratified in 1798, stating:

“The Judicial power of the United States shall not be construed to extend to any suit in law or equity, commenced or prosecuted against one of the United ... Read More ›

On July 16, 2020, the Court of Justice of the European Union (CJEU) issued a highly anticipated ruling in Data Protection Commissioner v. Facebook Ireland and Maximillian Schrems (Schrems II). The case centers on the validity of two key data transfer mechanisms: Standard Contractual Clauses (SCCs) and the EU-U.S. Privacy Shield (Privacy Shield) – both of which are methods widely used by U.S. businesses to comply with the EU’s laws regarding the transfer of personal data to countries outside the EU. In considering the effectiveness of data protection in cross-border data ... Read More ›

Trademarks function to identify the source or origin of products or services and distinguish them from the products or services of others. On the other hand, generic terms are used by consumers to refer to a type of product or service that cannot function or be registered as a trademark. For example, one cannot register COMPUTER as a trademark for laptops and personal computers. Likewise, one cannot register “APPLE” to identify a fruit (as opposed to “APPLE” to identify computer technology).

However, what if a generic term is combined with “.com” or another top-level ... Read More ›

In November 2019, the China National Intellectual Property Agency (“CNIPA”) issued new Patent Examination Guidelines for applying China’s “inventive step” requirement, the patentability standard roughly equivalent to the US patent requirement of “non-obviousness.” Chinese Patent Law defines “inventive step” such that the invention has a prominent substantive feature and represents notable progress. Under the new Guidelines, inventive step can be determined as a whole from a perspective of “invention concept.”

Regarding “inventive step,” ... Read More ›

Fiction and reality collide. The Netflix series Designated Survivor included a story line about a viral outbreak in Louisiana; a devastating pandemic was looming. Fictional president Tom Kirkman learns that the fictional cancer drug Extasis, being developed by fictional Pharm. Co. Benevax, showed promise to defeat the virus. Fictional CEO Carlton Mackie and the fictional President had a heated exchange in the oval office where Carlton Mackie ineptly tried to explain the economics of drug development. The fictional President chewed him out, and then used a political strategy to ... Read More ›

On Thursday, April 23, 2020, in the case Romag Fasteners, Inc. v. Fossil Group, Inc., the Supreme Court held that the statutory provision governing remedies for violations in the Trademark Act, §1117(a), does not require a showing of willfulness in order for a plaintiff to recover profits in an infringement action arising under Trademark Act, 15 U.S.C. § 1125(a). This decision could tip the scales in favor of trademark owners.

The case involved a fastener manufacturer, Romag, that originally contracted with Fossil, to allow Fossil to use Romag’s magnetic snap fasteners for ... Read More ›

In the current business environment, companies are justifiably concerned about the uncertain future and controlling the cost associated with managing their IP portfolios and engaging outside counsel. In-house counsel also knows that IP is part of the long game and sacrificing company IP now to save costs may cast a long cloud over the future. So, how can the company’s IP interests be effectively managed under current conditions and the required service be provided by outside counsel?

In more conventional time, automatically turning to outside counsel based on past engagements ... Read More ›

In Valeant Pharmaceuticals International, Inc. v. Mylan Pharmaceuticals, Inc., the Federal Circuit reversed the District Court of New Jersey’s grant of summary judgement in favor of Valeant that claim 8 of U.S. Patent 8,552,025 (the ‘025 patent)  owned by Valeant.

The message is clear for pharmaceutical formulation patents. To establish a prima facie cases of obviousness, compounds having similar structure and function can be used as the basis for establishing similar properties.Read More ›

Businesses rely upon color for a variety of purposes. For example, colors may provide ornamentation, or may serve to allow a product to blend in with its surroundings (camouflage for hunting gear) or indicate a product’s flavor (yellow for lemon). Importantly, colors can serve as trademarks, but only if they function as a source identifier.

While colors are not included within the statutory definition of trademarks, since 1985, singular colors and color combinations can be trademarked as part of a product, package or service, if, like any other trademark, they serve a source ... Read More ›

To the dismay of CBD enthusiasts everywhere, the FDA recently issued a highly anticipated report on the status its efforts to develop regulations for the sale of hemp-derived CBD products. Unfortunately for the CBD industry, the report offered little in terms of policy updates for cannabidiol products and instead described the agency’s concerns and its efforts to develop regulations to safely allow use of the ingredient.

The 2018 Farm Bill legalized hemp and its derivatives containing less than .3 percent THC, thus allowing the introduction of CBD products. Today, you can find ... Read More ›

Intellectual property (IP) is often the most critical asset for an early stage company.  Developing a strong, cost effective IP strategy and risk management strategy to avoid costly IP litigation can make the difference in a company’s survival.  Investors or potential acquisition entities are well-versed in the importance of a strong intellectual property portfolio and strategy, and typically value early stage companies on the strength of their IP rights.  It is essential to protect intellectual property at early stages in the company’s life cycle in order for any startup to be ... Read More ›

The popularity of craft breweries and distilleries has grown at exponential rates in the past few years.  There are now over 1,800 craft distilleries in the U.S. up from roughly 100 in 2005 and 7,400 craft distillers up from approximately 1400 in 2005.  These increases are reflected in Pennsylvania where the number of distilleries has gone from single digits in 2011 to over 80 in 2019.  Similar growth is occurring internationally and in related sectors such as craft hard cider and seltzer.

With this growth there has also been a rise in trademark filings with the United States Patent and ... Read More ›

For many of us, New Year’s resolutions typically involve various forms of self-improvement, such as dieting or getting to the gym.  Just as individuals adopt personal New Year’s resolutions, it is important for companies and business to set goals that improve their competitive fitness in the upcoming year.  One way to improve a company’s well-being is to ensure that its intellectual property assets are being protected, maintained, and properly leveraged.  Since intellectual property is not tangible, it can be overlooked particularly by companies that focus on physical and ... Read More ›

With a new decade underway, copyright holders are one step closer to having a new avenue to protect their work.  On October 22, 2019 the House of Representatives passed the Copyright Alternative in Small-Claims Enforcement Act H.R. 2426 (“CASE Act”) with an overwhelming 410-6 vote. 

The CASE Act will create a Copyright Claims Board (“Board”), which will be a body within the United State Copyright Office.  This Board will serve as a voluntary alternative to copyright holders bringing a case in court.  If both parties voluntarily agree to have the dispute heard by the Board, they ... Read More ›

Tesla CEO Elon Musk once explained that “in certain sectors like automotive, solar, and space, you don’t see new entrants.”¹ The auto industry, in particular, rebuffs new startups with a host of ominous caveats: the inability to appraise the future of the industry, the protracted history of broken manufacturers – thousands of them, in fact – and the calculated entry of the major tech companies, like Apple and Google, that seek to challenge the incumbents for market share. Building and delivering cars to the end user has always been a battle of attrition. So the emerging ... Read More ›

In Arthrex, Inc. v. Smith & Nephew, Inc., Arthrocare Corp., No. 2019-2140 (Fed. Cir. October 31, 2019), the Federal Circuit raised Patent Owners’ hopes that inter partes review (IPR) of patents could potentially be constitutionally defective, based on how Patent Trial and Appeal Board (PTAB) judges are appointed. But the court then dashed those hopes by curing the constitutional defect in the statute controlling Administrative Patent Judge (APJ) appointment. For those accused of patent infringement, breathe easy; IPRs survive and can be used to minimize the threat of patents.Read More ›

OSI Pharmaceuticals, LLC (OSI) discovered and patented a method of treating non-small cell lung cancer (NSCLC). See US Patent No. 6,900,221. The method comprises administering a therapeutically effective amount of erlotinib to an NSCLC patient. Apotex Inc. (Apotex) challenged OSI’s patent by filing a petition for Inter Partes Review (IPR) at the United States Patent and Trademark Office (USPTO). Three references were produced during the IPR, as follows:

(1) The reference “Schnur” disclosed erlotinib along with 104 other different compounds, as potent inhibitors of a ... Read More ›

Google^® CEO Sundar Pichai demonstrated the capabilities of Google Assistant onstage at Google I/O.¹ Triggered by a voice command, the Google Assistant software seamlessly and successfully communicated with a hair salon employee, via a phone call that the software initiated, to book the appointment. Pichai explained that Google Assistant actually “understand[s] the nuances of conversation” by combining natural language understanding, deep learning and text-to-speech technology. This represents a new and less blatantly artificial development in the scope of AI ... Read More ›

Under 35 U.S.C. § 171 of the Patent Act, patent protection is provided for a “new, original and ornamental design for an article of manufacture.” Design patents cover the appearance of an article of manufacture. Design patents have been used to obtain patent protection on the appearance of articles including hair scrunchies, sneakers, paintball goggles, and almost any other consumer product one can think of.

Design patents are essentially comprised of a title, drawings, and a description of the drawings. In design patents, unlike utility patents, the claimed scope is defined ... Read More ›

Kaiser, K. et al. recently reported their synthesis of a brand new carbon molecule, cyclo[18]carbon. The structure and synthesis of cyclo[18]carbon, an 18 ring carbon chain with no substituents, is detailed in Kaiser et al. “An sp-hybridized molecular carbon allotrope, cyclo[18]carbon” (2019) Science Online.

Cyclo[18]carbon is an exciting development, as this molecule has never existed before now and some researches doubted that the molecule could be stably made in the lab. It provides important insights into the organic synthesis of complex carbon-based molecules ... Read More ›

While it is sometimes the case that intellectual property lawsuits involve subject matter that is overly technical or perhaps difficult to relate to, there are times when these lawsuits involve subjects from popular culture that capture the imagination. That is just the case with two recent lawsuits, one involving a beloved figure in Philadelphia sports, and the other focused on the Old Spice commercial jingle.

The subject matter of The Phillies, L.P. v. Harrison/Erickson, Incorporated et al, 1:19-cv-07239 (August 2, 2019), pending in the U.S. District Court for the Southern ... Read More ›

Does a generic term in one country render trademark protection unavailable in another? Not in the U.S.!

Under U.S. law, generic trademarks are common terms used to refer to products or services. What you’re using right now to read this blog post – a computer, a phone – no one can claim rights to these terms. Generic trademarks are not qualified for protection and cannot be registered.  Conversely, even the strongest of trademarks can, over time, become generic and lose their registration. Products like aspirin, linoleum, and yo-yo were once registered as federal trademarks ... Read More ›

The ever increasing speed at which information travels over social media and the expanding volume of information available on the internet has helped and hindered small and start up enterprises. It is easier to get recognition through social media but that recognition does not always translate into revenue. Likewise, it is easier to find information but the reliability of the information can be suspect. All of this matters because long term business success is often the result of the access to funds for the next phase of research, marketing and expansion. The concern here is the ... Read More ›

On March 20, 2019, the Federal Circuit Court of Appeals issued an opinion that may bring some long-awaited good news for wireless patent holders. In particular, in SRI Int’l, Inc. v. Cisco Sys., the Federal Circuit found methods for improving security of a computer communication network to be patent-eligible subject matter under 35 U.S.C § 101. SRI Int’l, Inc. v. Cisco Sys. Inc., No. 2017-2223, 2019 U.S. App. LEXIS 8249, *1, *4 (Fed. Cir. 2019). This news comes in the wake of Federal Circuit decisions in 2016 and 2018, respectively, that found methods of 3G authentication and ... Read More ›

Every aspect of day-to-day life is increasingly influenced by artificial intelligence and automation. Mundane household tasks such as setting the temperature on thermostats, brewing a pot of coffee to coincide with our morning routines, and other simple chores can now be performed by automation. (Google’s U.S. Patent 9,513,642: “Flexible functionality partitioning within intelligent-thermostat-controlled HVAC systems” and General Electric’s U.S. Patent 4,330,702: “Electronic control system for coffeemaker”).

Recently, more complex and ... Read More ›

On January 22, 2019, the United States Supreme Court ruled that the sale of an invention to a third party who is obligated to keep the invention confidential may place the invention “on sale” for purposes of the Leahy-Smith America Invents Act (AIA). The case is Helsinn Healthcare S.A. v. Teva Pharmaceuticals USA Inc. With this decision, the Supreme Court answered a question about the “on-sale bar” to patentability that has lingered since the enactment of the AIA in 2011.

Prior to the AIA, it was settled law that a sale embodying an invention, whether public or private ... Read More ›

It is common for the parties to a commercial transaction or relationship to conclude that their circumstance requires more than a non-disclosure agreement. And it is frequently the case that certain privileged attorney client communications may need to be shared. The parties often seek to protect that information with what are known as common-interest agreements or joint defense agreements, depending on the circumstances. Both of the agreements fall under a broad legal umbrella known as the "Common Interest Doctrine" (Doctrine).  While the Doctrine is generally known, it is ... Read More ›

In a step toward consistent interpretation of patent claims before federal courts and the Patent Trial and Appeal Board (PTAB) during post-grant proceedings, today the United States Patent and Trademark Office (“USPTO”) published a final rule revising the claim construction standard used during proceedings established by the Leahy-Smith American Invents Act (“AIA”).

Changes to the Claim Construction Standard for Interpreting Claims in Trial Proceedings Before the Patent Trial and Appeal Board, 83 Fed. Reg. 51,340 (Oct. 11, 2018) (to be codified at 37 C.F.R. pt. 42)Read More ›

The Leahy-Smith America Invents Act (AIA) became fully effective in March 2013, and its impact over the last five years continues to disrupt U.S. patent practice. The AIA made significant statutory changes to how patent applications were prosecuted at the U.S. Patent and Trademark Office (USPTO); however, the changes to post-grant proceedings (PGPs) are possibly more significant. The AIA authorized administrative proceedings as an alternative to litigation and left it to the USPTO to promulgate accompanying rules to incentivize various PGPs where patents could be ... Read More ›

The United States Supreme Court today (June 22, 2018) ruled that a plaintiff in a patent case can recover damages for foreign sales, under certain circumstances. The case is WesternGeco LLC v. ION Geophysical Corporation, 2013-1527, 2014-1121, 2014-1526, 2014-1528.

WesternGeco LLC originally sought to recover damages for patent infringement based on Ion Geophysical Corp.’s sales of product components shipped outside the United States. The plaintiff argued that the Patent Act provided for recovery against patent infringement related to the supply of components of the ... Read More ›

Volpe and Koenig, P.C. is sensitive to your concerns about data privacy. We developed this Privacy Policy to explain how we handle your information and to describe the rights of those whose information is subject to the General Data Protection Regulation (GDPR). Readers to whom this Policy applies include clients and prospective clients, job applicants, and visitors to our website.

Below we clarify which of your information we keep, how we obtain your information, our reasons for collecting your information, the measures we take to safeguard your information, and your available ... Read More ›

The U.S. Supreme Court's June 2014 landmark decision  Alice v. CLS Bank International, 134 S.Ct. 2347 (2014), altered the course and viability of software patents in the United States and continues to cause uncertainty over the eligibility of software for patent protection.  Alice announced a multi-step test for analyzing patent eligibility, under which the basic question for any software application is, "does the application satisfy the patent eligibility conductions of 35 U.S.C. Section 101 (Section 101)?" The United States Patent and Trademark Office (USPTO) has established ... Read More ›

When Lori Gildea became seriously ill, a close examination of her routine and symptoms led doctors to the likely culprit: her gym bag. Unbeknownst to her at the time, her gym bag had undergone a transformation from functional accessory to blossoming petri dish. As she regained her health and strength, Lori looked for ways to prevent another bacteria-induced sickness from disrupting (and jeopardizing) her life, as well as the lives of other active individuals. Her pursuit for a safer, cleaner and healthier workout bag led to ThePureBag™.

Lori wanted a solution to keep workout gear ... Read More ›

On March 21, 2018, a split Ninth Circuit Court of Appeals handed down a verdict confirming copyright infringement in the case of the song “Blurred Lines,” and the decision left many in the music community “all shook up.” The song, recorded in 2012 and released in 2013, hit number one on the Billboard Top 100 songs in 25 countries and became a best-selling single with more than 14.8 million sales. It was also nominated for Record of the Year and Best Pop Duo/Group Performance at the 2013 Grammy Awards.  As the song rapidly climbed the charts, media interest in the song grew due to its ... Read More ›

March’s arrival signals the onset of Spring and college basketball bracket battles. The three-week basketball tournament gradually whittles 64 teams down to two for a final showdown. It may come as a surprise to fans to learn that the tournament has not always been known as “March Madness” and the National College Athletic Association (NCAA) is not the first organization to use the term. This is particularly surprising given that “March Madness” is the NCAA’s biggest money maker, reaping 85 percent of the organization’s yearly budget.¹ That revenue is made ... Read More ›

Benjamin Franklin is credited with coining the axiom that "an ounce of prevention is worth a pound of cure." Allegedly, Franklin actually made the statement in connection with fire safety, which was an avocation for him. Today, the axiom applies perfectly to corporate efforts to manage intellectual property (IP) issues. Many companies rely on old proprietary rights forms or use generic forms collected by the human resource department (HR) with little thought given to downstream consequences.

This article advocates for having in-house or retained counsel make periodic reviews of ... Read More ›

Copyright protection is an often overlooked component of an intellectual property portfolio.  However, it is important to consider pursuing copyright protection in order to provide a more robust intellectual property portfolio.  Given the relatively low costs to acquire a copyright registration and the ability to collect statutory damages, pursuing a copyright registration can prove to be a worthwhile expense.  Although copyright registration is often a relatively simple process, there is an ongoing split among various circuit courts as to the effectiveness of a pending ... Read More ›

Propagating news program clips online, such as on social media including Instagram and Twitter, just became more difficult.

On Tuesday, February 27, 2018, the United States Court of Appeals for the Second Circuit handed down a decision holding that TVEyes, a search engine for video clips obtained through media-monitoring, was in violation of copyright law for unlawfully re-distributing the copyrighted work of others.¹ The decision reversed a 2014 holding by the District Court that the service was protected by the doctrine of fair use and as a result, has the potential to ... Read More ›

With each Olympics, the iconic five interlocking rings and Team USA paraphernalia are inescapable. The high profile and high profit marks are tenaciously protected both on an international and national stage.

The International Olympic Committee (IOC) and the United States Olympic Committee (USOC) earn billions of dollars worldwide through licensing use of their iconic rings, name, athletes’ images and other trademarks. In fact, being a top sponsor of the Olympics can cost a company hundreds of millions of dollars. Panasonic paid a cool $350 million in 2016 for an eight-year ... Read More ›

On February 12, 2018, Judge Frederic Block of the U.S. District Court for the Eastern District of New York entered judgment in the amount of $6.7 million dollars in favor of plaintiff graffiti artists whose building murals were destroyed in 2013 by the owner of the building, in violation of the Visual Artists Rights Act of 1990 (“VARA”), 17 U.S.C. § 106A. While the ruling in this case may seem like a coup for artists, the implication may be that building owners may be less enthusiastic about commissioning creative works to adorn their building’s exteriors.

THE LAW – The Visual ... Read More ›

Many consumers and companies are familiar in some form or another, but until a recent Federal Circuit ruling, companies and individuals looking to pursue tongue-in-cheek or risqué marks faced an uphill battle in obtaining federal trademark registrations. On December 15, 2017, the Federal Circuit ruled in In re Brunetti¹ that the bar on registering immoral or scandalous trademarks under the Lanham Trademark Act, Section 2(a), 15 U.S.C. § 1052(a), “is an unconstitutional restriction of free speech.”

Appellant, Erik Brunetti, founded the clothing brand “fuct” in ... Read More ›

Divided infringement, or infringement carried out by multiple actors, seemed like an easy escape from accusations of direct infringement for entities teaming up to perform different steps of a patented method. That is until the Federal Circuit ultimately expanded the scope of direct infringement in the recent Travel Sentry, Inc. v. Tropp¹ case. The Federal Circuit’s decision expanded the scope of direct infringement by loosening the standard used to determine whether all steps of a claimed method are attributable to a single entity.

In the midst of evolving case ... Read More ›

The identification of the proper venue for commencing a patent infringement or declaratory judgement action was rather straight forward for a number of years. However,  when the U.S. Court of Appeals for the Federal Circuit, which has exclusive appellate jurisdiction in patent matters, addressed the venue issue in  VE Holding v. Johnson Gas Appliance, 917 F.2d 1574 (Fed. Cir. 1990), it liberalized the venue requirement to where the defendant is subject to the court's personal jurisdiction. This decision lead to lower courts applying a liberal view of personal jurisdiction when ... Read More ›

The holiday industry in the United States is a multi-billion dollar business.  In 2016, U.S. consumers spent $655.8 billion dollars between Black Friday and Christmas Eve and the average household budget for holiday gifts came in at approximately $588.90.¹ Given the volume of consumer spending devoted to holiday cheer, most companies aim to capture a slice of the proverbial fruitcake.  Occasionally, this battle for profit can pit companies against one another, leading to less-than-cheerful legal showdowns. One case in particular comes down to a battle over a quintessential ... Read More ›

Patent Term Adjustment (PTA) is additional time added to the term of a patent based on delays by the United States Patent and Trademark Office (USPTO) during prosecution. The PTA is determined after an application has been granted a patent. An applicant or patent prosecutor should be cognizant of PTA during prosecution because any gain of PTA due to USPTO delay is reduced by applicant delay. In the lifetime of a patent that covers a successful product or technological standard, every day can be highly valuable. This is especially true for biotechnology and pharmaceutical patents for ... Read More ›

The United States Supreme Court’s decision in TC Heartland jolted the IP law community by displacing long-standing Federal Circuit precedent and leaving a divide amongst district court judges, as well as a bevy of unanswered questions.¹ Since TC Heartland, two more decisions from the U.S. Court of Appeals for the Federal Circuit help clarify the landscape for patent litigators. Additionally, a study from Lex Machina further outlines the shifting horizon of forum shopping.

In 1990, the U.S. Court of Appeals for the Federal Circuit decided in VE Holdings v. Johnson Gas ... Read More ›

THE COLLABORATIVE SEARCH PILOT PROGRAM

In an attempt to expedite and promote the quality of patent application examination, the United States Patent and Trademark Office (USPTO) began a Collaborative Search Pilot (CSP) program in partnership with the Japan Patent Office (JPO) and the Korean Intellectual Property Office (KIPO). The program is designed to provide USPTO examiners with the best prior art by collaborating with examiners at the JPO and KIPO that are examining corresponding Japanese and Korean patent applications.

In the initial CSP program, examiners shared and ... Read More ›

Every so often, intellectual property law leaps from the backrooms of scientific exploration, labs ripe with technological advancement, or the worn desks of learned men and women, into social consciousness via an unwitting member of pop culture’s elite. Celebrities, the cult of personality that surrounds them, and the brands they establish, are still subject to the same rules of intellectual property law as less-known inventors, authors and developers. The nature of being in the public eye, and ownership of personal brands, can sometimes prove headache-inducing for the ... Read More ›

Since the passage of the Leahy-Smith America Invents Act (“AIA”), it has been extremely difficult, if not impossible, for a patent owner whose patent is challenged in an inter partes review (IPR) to amend the challenged claims. As of April 30, 2016, the Patent Trial and Appeal Board (PTAB) had completely denied 112 of 118 patent owner motions to amend and partially denied motions to amend in four of the six remaining IPRs.

Today’s en banc decision by the United States Court of Appeals for the Federal Circuit in Aqua Products, Inc. v. U.S. Patent and Trademark Office, Case No ... Read More ›

In 1886, Dr. John Pemberton created the formula for Coca-Cola.¹ The formula for Dr. Pemberton’s beverage sensation did not even make it onto paper until 1919 when the recipe was secured in a vault where it remained for 86 years until its relocation to an exhibit at The World of Coca-Cola.² The Coca-Cola Company formula, one of the world’s most famous trade secrets, has been kept secret for more than 125 years.³ While trade secrets enjoy certain protections, such a formula could potentially benefit from patent protection. With its long history, the question remains: does ... Read More ›

Throughout time industries have developed techniques and processes that are believed to be essential elements that contributed to the company's success.  For almost as long, companies have sought and devised ways to protect those techniques and processes that constituted the company's intellectual property. Many companies turned to federal patent protection, others chose to treat the information as trade secrets, and others chose to use contractual obligations to protect their intellectual property. These various forms of protection were especially meaningful in what ... Read More ›

Kids are so indulged these days! They get to play with a new toy known as a “fidget spinner,” in contrast to previous generations who grew up creating their own, low-quality “fidget spinners” by spinning a ruler around the tip of a pencil. The official fidget spinner, the hottest toy fad of 2017, is a two or three prong gadget with a bearing in the center which allows the contraption to simultaneously balance and spin utilizing one or both hands. Although, as the name suggests, the toy is ideal for those who cannot remain still, all ages and levels of fidgeters are buying the “fidget ... Read More ›

On Tuesday, May 30, 2017, the United States Supreme Court issued another unanimous decision in an intellectual property appeal. In Impression Products, Inc. v. Lexmark International, Inc., No. 15–1189, the Supreme Court ruled that (i) a patentee’s decision to sell a product exhausts all of its patent rights in that item, regardless of any restrictions the patentee purports to impose, and (ii) an authorized sale outside the United States, just as one within the United States, exhausts all rights under the Patent Act.

The case at issue involved toner cartridges. The patent owner ... Read More ›

The United States Supreme Court issued its opinion in the much-anticipated TC Heartland LLC v. Kraft Foods Group Brands LLC case, No. 16–341, on May 22, 2017.

Under the unanimous decision, the term “reside[nce]” in the federal venue statute refers only to the state of incorporation of a U.S. corporate defendant in a patent lawsuit. This holding could eliminate the “forum shopping” that brings many defendants to particular courts.

The TC Heartland case considered the proper venue for patent cases as codified in 28 U.S.C. § 1400(b). Section 1400(b) limits venue to judicial ... Read More ›

Designers of haute couture fashion have long been troubled by the inability to protect their designs, and the speeds at which designs can be copied now have added to their frustrations. The root of the problem for many years was the U.S. copyright law, which was considered to prohibit enforcement of a copyright in wearable fashions. The Copyright Act, 17 U.S. C. Section 101 et seq., limited copyright protection for “pictorial, graphic, or sculptural features” of “a useful article” to features that “can be identified separately from, and are capable of existing ... Read More ›

The landscape for patent law has changed more quickly over the last five years than it had in preceding decades. The America Invents Act, which was enacted in September 2011, may be the most comprehensive and significant change to patent law in decades, and recent case law appears to be accelerating changes. For example, Mayo Collaborative Services. v. Prometheus Labs, 566 U.S. 66 (2012), changed how patent-eligible subject matter is determined and what currently is patentable eligible. Alice v. CLS Bank International, 134 S. Ct. 2347 (2014), dramatically changed the landscape for ... Read More ›

In 2017, the Supreme Court will issue opinions on a wide range of important issues in intellectual property law. Below are two pending cases to keep on your radar, as well as three cases that the Court has already decided earlier this year.

TC Heartland LLC v. Kraft Food Brands Group LLC

In TC Heartland, the Supreme Court will examine whether the Federal Circuit’s stance on patent venue is correct. The Federal Circuit has interpreted patent venue broadly, holding that venue is proper in any federal court that has personal jurisdiction over the accused infringer.

Proper venue for patent ... Read More ›

The Supreme Court issued a decision today removing the laches as a defense to patent infringement. The case is reported at SCA Hygiene Products Aktiebolag et al. v. First Quality Baby Products, LLC, et al., Slip. Op. No. 15–927 (March 21, 2017).

Historically, laches is an equitable defense to patent infringement, based upon an unreasonable and prejudicial passage of time in bringing a lawsuit. Thus, if a patent owner knew of an alleged infringer for a long period of time, an accused infringer could argue that the patent owner waited too long to sue for patent infringement and that the ... Read More ›

Patents have had unusual attention from the U.S. Supreme Court recently. In addition to high-profile cases like Alice v. CLS Bank International, 134 S. Ct. 2347 (2014), that dramatically changes the landscape for technology-based patents, Samsung v. Apple, 137 S. Ct. 429, 431 (2016), that has the potential to dramatically change the landscape for damages in design patent infringement, and Life Technologies v. Promega, 2017 U.S. LEXIS 1428 (U.S. Feb. 22, 2017), which tests the limits of liability under U.S. law for infringement abroad, the court is poised to consider whether the ... Read More ›

In my last post “Design Patents Face Another Million Dollar Question,” I noted that the U.S. Supreme Court declined to decide what the relevant ‘article of manufacture’ was for calculating damages in Apple’s design patent row with Samsung, and the Supreme Court remanded this to the Federal Circuit Court of Appeals.

Now the Federal Circuit has itself “passed the buck,” further remanding the case back to the District Court for the Northern District of California. This effectively gives the Judge at the District Court level a blank slate to craft a test for identifying ... Read More ›

The following article was first published in the Late Fall 2016/Early Winter 2017 issue of Central Bucks Chamber of Commerce’s W4 Magazine.

In today’s business environment, companies inadvertently or purposefully imitate their competitors. Today’s employees, with knowledge of a company’s confidential information, may become tomorrow’s competitor. How can a business safeguard its valuable assets?

Understanding the basics of intellectual property (IP) rights and seeking protection for such assets can save money and be critical for business growth and ... Read More ›

This article reviews the television show “Shark Tank” on a weekly basis, with a focus on the intellectual property (IP) embodied by the products or business ideas each contestant pitches on that show. As always, keep in mind the following types of IP protection:

• A utility patent is used to protect the functional aspects of an idea, and this is what the Sharks (judges) are for the most part referring to when they inquire into how contestants have protected their ideas.
• A design patent protects the ornamental appearance of an article.
• A trademark protects any word, symbol or design that ...

This article reviews the television show “Shark Tank” on a weekly basis, with a focus on the intellectual property (IP) embodied by the products or business ideas each contestant pitches on that show. As always, keep in mind the following types of IP protection:

• A utility patent is used to protect the functional aspects of an idea, and this is what the Sharks (judges) are for the most part referring to when they inquire into how contestants have protected their idea.
• A design patent protects the ornamental appearance of an article.
• A trademark protects any word, symbol or design that ...

This article reviews the television show “Shark Tank” on a weekly basis, with a focus on the intellectual property (IP) embodied by the products or business ideas each contestant pitches on that show. As always, keep in mind the following types of IP protection:

• A utility patent is used to protect the functional aspects of an idea, and this is what the Sharks (judges) are for the most part referring to when they inquire into how contestants have protected their idea.
• A design patent protects the ornamental appearance of an article.
• A trademark protects any word, symbol or design that ...

Many small business entities find that they occasionally have a new product or process for which they wish to seek patent protection. Some of those small businesses may have had some prior experience with the patent process. Unfortunately, many of the prior patent laws changed with the advent of the America Invents Act (AIA). The AIA made fundamental changes in the consequences associated with a business engaging in market activities prior to the filing of a patent application and many commercial entities that occasionally pursue patent protection have not made the necessary ... Read More ›