DecIPhered

USPTO Provides Guidance on Inventorship of AI-Assisted Inventions

The United States Patent and Trademark Office (USPTO) recently issued guidance on how the USPTO will determine inventorship for artificial intelligence (AI)-assisted inventions (the “Guidance”).View

What Your Business Needs to Know about the New Jersey Data Privacy Act

New Jersey took a giant leap in pursuit of protecting consumers with the passage of the New Jersey Data Privacy Act (NJDPA) set to become effective January 15, 2025. Here's what you need to know! View

2023 Year-in-Review: Privacy Law

A description of notable cases and changes in Privacy Law in 2023. View

2023 Year-in-Review: Utility Patent Law

A description of notable cases and changes in Utility Patent Law in 2023. View

2023 Year-in-Review: Design Patent Law

A description of notable cases and changes in Design Patent Law in 2023. View

Federal Circuit Holds that Prosecution Disclaimer Does Not Apply to an Abandoned Argument About Patent Scope

In Malvern Panalytical Inc. v. TA Instruments-Waters LLC, the Federal Circuit held that the doctrine of prosecution disclaimer does not apply to an abandoned argument about the scope of a patent during prosecution of an unrelated but relevant patent, reversing the District Court’s holding.View

2023 Year-in-Review: U.S. Trademark Law

A description of notable cases and changes in U.S. Trademark Law in 2023. View

SCOTUS Clarifies Extraterritorial Reach Of Lanham Act

In Abitron Austria GmbH v. Hetronic Int’l, Inc., the Supreme Court placed limits on the reach of federal trademark laws to claims where the infringing use in commerce is within the U.S. market, holding that Sections 1114(1)(a) and 1125(a)(1) of the Lanham Act are not extraterritorial and that “‘use in commerce’ provides the dividing line between foreign and domestic applications of these provisions.”View

Supreme Court Curbs Use Of Trademarks In Artistic Works

In a unanimous decision, the U.S. Supreme Court in Jack Daniel’s Properties v. VIP Products, No. 22-148 (June 8, 2023), ruled that a lower court erred when it said a poop-themed chew toy that parodies the famed whiskey maker’s bottle was covered by the First Amendment’s free speech protections to avoid a claim of trademark infringement. View

Supreme Court Nixes Andy Warhol’s Fair Use Argument for Photograph of Prince

The Supreme Court in Andy Warhol Foundation for Visual Arts Inc. v. Goldsmith, No. 21-869 (May 18, 2023) addressed how fair use in Copyright Law applies to “appropriation art,” where a second artist takes most or even all of a first artist’s work and changes it to make a new work.View

Supreme Court Gives “Teeth” To Enablement Requirement In Striking Down Broad Functional Claims

The U.S. Supreme Court in Amgen Inc. v. Sanofi, No. 21-757 (May 18, 2023) applied enablement principles from its prior precedents involving Morse’s telegraph and Edison’s lightbulb filament to strike down Amgen’s broad functional claims directed to antibodies for lowering LDL cholesterol. Although Amgen described in its specification the amino acid sequences for 26 particular antibodies, Amgen broadly claimed any antibody capable of binding to a specific location on a protein and blocking that protein from raising LDL cholesterol levels. View

Minor Contribution To Claimed Invention Insufficient For Co-Inventorship

In HIP, Inc. v. Hormel Foods Corp., Case No. 2022-1696 (Fed. Cir. May 2, 2023), the Federal Circuit made clear that merely contributing one element to a single independent claim of a patent is not enough to establish a person as a co-inventor, if the contributed element represents an “insignificant” feature. It was undisputed that food engineer David Howard had provided to patentee Hormel the idea of using an infrared oven for preheating bacon pieces in a two-step cooking method. View

Federal Circuit Outlines Criteria for Ipsis Verbis Support and Blaze Marks

In Regents of the University of Minnesota v. Gilead, the Federal Circuit determined that UMN’s claim of priority to a provisional application for their ’830 patent lacked sufficient written description. The court made this determination by analyzing whether there was ipsis verbis support and whether there were sufficient blaze marks in the original application to guide the skilled artisan to the ’830 application. First, the court determined that UMN’s piece-meal analysis of the priority application to show ipsis verbis support of the later claimed subgenus did not meet the ipsis verbis standard. View

CPRA: New Data Privacy Rules for Companies Doing Business in California Now in Effect

In observance of Data Privacy Day 2023, we thought it was a good time to draw attention to the California Privacy Rights and Enforcement Act (CPRA) which is now in force. The CPRA modifies and expands the existing California Consumer Privacy Act (CCPA). In light of these developments, we provide a table below that summarizes the most impactful rights and obligations now in effect as a result of these acts and highlights the differences, as well as the commonalities, of the laws under these acts. View

2023 Data Privacy Day – 4 Measures Businesses Can Take Now to Prepare for the American Data Privacy and Protection Act (APPA)

International Data Privacy Day is recognized on January 28 in the United States and in over 47 other countries. This day serves as an annual reminder for companies to re-evaluate their data privacy and cybersecurity practices to ensure compliance with current standards and to prepare for coming changes in privacy and data protection laws. Companies continue to face challenges in establishing and maintaining compliance to avoid exorbitant expense and penalties. View

Federal Circuit Finds Patent Venue Proper based on Remote Employees

In In Re: Monolithic Power Systems, Inc., Case No. 2022-153 (Fed. Cir. 2022), the Federal Circuit denied a petition to grant a writ of mandamus directing the district court to dismiss or transfer a patent infringement suit brought against Monolithic in the Western District of Texas, finding that the district court’s decision that venue was proper should not be disturbed. The district court decision found that Monolithic had a regular and established place of business based on the location and activities of some of its remote employees. Specifically, the district court determined that Monolithic maintained a business presence in the Western District by soliciting employment in the region and by providing its remote employees with lab equipment or products for their homes as part of their employment. The Federal Circuit found that mandamus review was not warranted, as the district court’s reasoning was sufficient enough to establish venue, and thus did not grant the petition for writ of mandamus.View

Noncompete Clauses on the Chopping Block at the FTC

Employers have used noncompete clauses in employment agreements for decades as a way to protect company innovations. Such clauses may now be banned entirely by the FTC if their notice of proposed rulemaking announced on Jan. 5, 2023 becomes final.. The FTC's rule proposal broadly defines who is “a worker” and what qualifies as “a noncompete clause” between an employer and worker. With limited exceptions, it would prohibit employers from entering into, attempting to enter into, or maintaining noncompete restrictions on their workers. While employers in jurisdictions such as California already live within this proposed paradigm, the FTC’s rule would impact employers nationally.View

2022 Year-in-Review: U.S. Patent Law

Federal Circuit Expands IPR Estoppel - IPR Petitioners, Do Not Hold Anything Back In California Institute of Technology v. Broadcom, No. 20-2222 (Fed. Cir. Feb. 4, 2022)) (“CalTech”), the Federal Circuit expanded the scope of IPR estoppel and held that such estoppel applies not just to claims and arguments that the Patent Trial and Appeal Board PTAB (“PTAB”) addressed, but also to “all grounds not stated in the petition but which reasonable could have been asserted against the claims included in the petition.” Thus, the Federal Circuit overruled its own 2016 decision in Shaw Industries v. Automated Creel Systems, which held that estoppel applies only to the arguments that the PTAB addressed in the final written decision. In light of this recent ruling broadening IPR-based estoppel, a petitioner should put forth its strongest grounds in an IPR since it now cannot withhold any prior art references or arguments in reserve for litigation. View

2022 Year-in-Review: U.S. Design Patent Law

Preliminary Price Quotes To A Potential Customer Trigger An Invalidating Offer For Sale Defendants Medical Components, Inc. and Martech Medical Products, Inc. appealed a lower court decision awarding $1.2 million in damages to plaintiff Junker for infringement of Junker’s design patent directed to a “Handle For an Introducer Sheath.” The defendants challenged the decision, asserting that a letter written by Junker in response to a potential customer's “request for quote” prior to the statutory critical date was a commercial offer for sale that invalidated the design patent. View

2022 Year-in-Review: U.S. Trademark Law

Domain Name Registration Game, Vox Strikes out at Federal Circuit Vox, the domain registry operator for the .SUCKS generic top-level domain ('gTLD') for Internet websites, and home to websites such as “life.sucks” or “divorce.sucks,” ultimately lost its battle to register .SUCKS as a service mark. Vox attempted to register .SUCKS for '[d]omain name registration services featuring the gTLD in the mark' as well as 'registration of domain names for identification of users on a global computer network featuring the gTLD in the mark.' The trademark office rejected the application on the ground that, when used in connection with the identified services, it fails to function as a mark. The decision was affirmed by the Trademark Trial and Appeal Board (“TTAB” or “Board”), finding that consumers will view .SUCKS as only a non-source identifying part of a domain name, rather than a mark. View

Federal Circuit Holds that Inventors for Artificial Intelligence-Based Technologies Must be Human Beings

In Thaler v. Vidal, No. 2021-2347 (Fed. Cir. 2022), the Federal Circuit affirmed a district court’s holding that the inventor of a patent must be a natural person. Stephen Thaler originally filed two patent applications directed to software technology and named an artificial intelligence system (“AI System”) he developed as the inventor. To address the requirement that an inventor submit an oath or declaration, Mr. Thaler submitted a statement on behalf of the AI System. After being issued a notice that his application was incomplete for failing to name an inventor, Mr. Thaler unsuccessfully petitioned the USPTO for further review and then sought judicial review in District Court, where his request to reinstate his applications was also denied. On appeal, the Federal Circuit determined that the AI System that Thaler listed as the inventor on his patent applications cannot be an inventor as required by the Patent Act as the AI System is not an “individual,” as required by the Patent Act, the plain meaning of the term being a “natural person.” To account for the lack of a definition for “individual” in the Patent Act, the Federal Circuit looked to Supreme Court precedent along with dictionary sources to arrive at the conclusion that an individual is a “human being.” Ultimately, the Federal Circuit found there is no ambiguity in the Patent Act requirement that an inventor listed on a patent application be a human being. View

Federal Circuit Holds that General Industry Skepticism Cannot on its own Negate a Finding of Motivation to Combine

In Auris Health, Inc., v. Intuitive Surgical Operations, Inc., No. 2021-1732 (Fed. Cir. 2022), the Federal Circuit vacated and remanded a decision of the Patent Trial and Appeal Board that found there was no motivation to combine two references asserted to invalidate the claims of a challenged patent. The Court reasoned that the Board “impermissibly rested its motivation to combine finding on evidence of general skepticism about the field of the invention.” The Court went on to explain that, “generic industry skepticism cannot, standing alone, preclude a finding of motivation to combine.” However, the Court did explain that evidence of industry skepticism may be relevant to an obviousness analysis as a secondary consideration. In particular, the Court reasoned that where specific evidence of industry skepticism is presented that is related to a specific combination of references, such evidence may contribute to a lack of motivation to combine such references.View

Federal Circuit Supports “readily identifiable and persuasive” Evidence Standard for Permitting the PTAB to sua sponte Reject Substitute Claims

In Hunting Titan, Inc. v. DynaEnergetics Europe GmbH, Case Nos. 2020-2163, 2020-2191 (Fed. Cir. Mar. 24, 2022), the Federal Circuit affirmed a decision of the Precedential Opinion Panel of the USPTO that vacated the denial of a motion to add substitute claims to a patent challenged by Hunting Titan in an IPR. At issue was whether the Patent Trial and Appeal Board acted within the bounds of its authority when it sua sponte found the substitute claims anticipated when such grounds were not raised by Hunting Titan. Although the decision of the Precedential Opinion Panel was affirmed, the Federal Circuit suggested that this was the result of a procedural failure on the part of Hunting Titan to challenge the Panel’s decision as an abuse of discretion, and not because of the substantive rationale of the Panel. As to the question of the Board’s authority to arrive at a decision on a patentability issue sua sponte, the Federal Circuit suggested that when there is “readily identifiable and persuasive” evidence relating to patentability based on the prior art of record, as the facts of this case suggest, the Board should sua sponte identify patentability issues for proposed substitute claims.View

SCOTUS Holds Copyright Act’s Safe Harbor Provision Protects Good-Faith Mistakes

Recently, the Supreme Court found that a copyright registration was valid even though the application for registration included a mistake that was determined to be of a legal nature. In Unicolors Inc. v. H&M Hennes & Mauritz, L.P., 142 S. Ct. 941 (Feb. 24, 2022), the Court found that although Unicolors had been unaware that its inclusion of 31 fabric designs in one copyright application did not satisfy the “single unit of publication” requirement because not all of the designs were directed to the same groups of customers, the filing of the application by Unicolors was not an act performed “with knowledge that it was inaccurate.” For this reason, the Court determined that the registration is protected by a safe harbor provision in the Copyright Act that extends to both mistakes of fact and mistakes of law. The Court reasoned that both the Copyright Act itself and its legislative history indicate that an applicant’s good-faith mistakes should not preclude the applicant from obtaining a valid registration. A key takeaway from Unicolors is that getting it right from the start is important, especially with complex areas of IP procurement. Innocent mistakes may be forgivable, but it can take a trip to the Supreme Court to get forgiveness. View

2022 Privacy Law - Tips That Could Save Your Company From Financial Penalties

Today, January 28th, is recognized in the U.S. (and in more than 47 countries) as International Data Privacy Day (IDPD). This day serves as an annual reminder for companies to re-evaluate their data privacy and security practices to ensure compliance with current standards and to prepare for coming changes in privacy and data protection laws. View

Supreme Court Allows Inventors To Challenge Their Own Patents In Limited Circumstances

In Minerva Surgical, Inc. v. Hologic, Inc. (June 29, 2021), the Supreme Court upheld, but narrowed, the doctrine of assignor estoppel, which typically bars a patent assignor from later arguing its assigned patent is invalid in defense to the assignee’s infringement claim against the assignor. View

SCOTUS Resolves IPR Constitutionality Problem By Providing USPTO Director With Discretion To Review PTAB Decisions

In U.S. v. Arthrex, Inc. (S. Ct. June 21, 2021), the Court held that decisions by Administrative Patent Judges (APJs) appointed to the Patent Trial and Appeal Board (PTAB) were unconstitutional because they were not previously reviewable by a principal executive officer, such as the Director, of the U.S. Patent and Trademark Office (USPTO). However, the Court remedied this problem by providing the USPTO Director with discretion to review PTAB decisions. As explained by Chief Justice Roberts: “To be clear, the Director need not review every decision of the PTAB. What matters is that the Director have the discretion to review decisions rendered by APJs.”View

National Inventor's Day is Today

On National Inventor’s Day, we honor innovators everywhere but especially within New Jersey. And in Black History Month it is only appropriate to honor New Jersey’s heritage of innovation in and the contributions from the African American community. For example, John Stanard, born in Newark, New Jersey, invented a modern refrigerator and a new space-saving oil stove in the 1800s. And Alice Parker of Morristown, New Jersey invented a central heating system using natural gas in the early 1900s.View

2021 Privacy Law Checklist for Your Business

Fast-changing data privacy laws and regulations govern how companies must obtain and protect personally identifiable or other sensitive information. The challenge is to establish and maintain compliance to avoid exorbitant expense and penalties in addressing such issues upon notice of noncompliance. January 28th is recognized as International Data Privacy Day in the United States and over 47 other countries. The purpose is to raise privacy law awareness, and promote privacy and data protection best practices. The day serves as an annual reminder for companies to re-evaluate their data privacy and security practices to ensure compliance with current standards and to prepare for coming changes in privacy and data protection laws.View

Federal Circuit Holds Venue For Hatch-Waxman Cases Is Proper Only Where Acts Sufficiently Related To The ANDA Submission Occur

In Valeant Pharmaceuticals v. Mylan Pharmaceuticals, No. 2019-2402 Nov. 5, 2020, the Federal Circuit answered a question of first impression relating to where “acts of infringement” occur for venue purposes in ANDA cases, a point not addressed by SCOTUS’s TC Heartland decision. The underlying facts were that Mylan sent an ANDA submission from its offices in West Virginia to the FDA’s office in Maryland but was sued by Valeant in the District Of New Jersey. The decision hinged on whether venue should be interpreted to include places where future acts of infringement may occur. The Court held: “[I]n Hatch-Waxman cases, venue is not proper in all judicial districts where a generic product specified in an ANDA is likely to be distributed. It is proper only in those districts that are sufficiently related to the ANDA submission—in those districts where acts occurred that would suffice to categorize those taking them as a ‘submitter’ under § 271(e).” The Court also indicated that a foreign defendant was properly subject to venue in any judicial district. The decision affirmed the district court’s decision to dismiss the case for improper venue as to Mylan’s West Virginia and Pennsylvania corporations, but remanded the case for further proceedings with respect to the Indian entity. View

SCOTUS Rejects PTO's Sweeping Rule Denying Registrations for "generic.com" Domain Name Marks

In United States Patent and Trademark Office v. Booking.com B.V., No. 19-46 (June 30, 2020), SCOTUS rejected the PTO's attempt to create a "sweeping rule" of nonregisterability of marks styled "generic.com." Booking.com had sought to register "Booking.com" marks in connection with travel-related services. The PTO concluded that the term "booking" was generic for travel-related services and thus "Booking.com" was also unregistrable. Both the district court and Fourth Circuit Court of Appeals disagreed, finding that the combination of a generic term, such as "booking, "with ".com" was not necessarily generic. SCOTUS agreed, holding that a "term styled 'generic.com' is a generic name for a class of goods or services only if the term has that meaning to consumers." While SCOTUS rejected the PTO's nearly per se rule, it also cautioned that "we do not embrace a rule automatically classifying such terms as nongeneric." View

Willfulness Is Not Required for an Award of Profits for Trademark Infringement

The U.S. Supreme Court held that a plaintiff in a trademark infringement suit is not required to show that a defendant willfully infringed the plaintiff’s trademark as a precondition to an award of the infringer’s profits. Romag Fasteners, Inc. v. Fossil, Inc. et al., No. 18-1233 (April 23, 2020). Romag appealed to restore a $6.7 million jury award of Fossil’s profits after Fossil was found to have infringed Romag’s trademark-protected magnetic fasters. A district court judge vacated the award, citing Second Circuit precedent that a finding of willfulness was required to award profits. The Federal Circuit affirmed the decision, and Romag appealed to the Supreme Court. View

SCOTUS Disallows Appeal of Timeliness of IPR Petitions

In Thryv, Inc. v. Click-to-Call Technologies, LP, No. 18-916 (April 20, 2020), the Supreme Court held that the U.S. Patent Trial and Appeal Board's decision finding an inter partes review petition to be timely filed was nonappealable. Under the patent laws, the "determination . . . whether to institute an inter partes review . . . shall be final and nonappealable." 35 U.S.C. § 314(d). In addition, under 35 U.S.C. § 315(b), "[a]n inter partes review may not be instituted if . . . filed more than 1 year after the date on which the petitioner . . . is served with a complaint alleging infringement of the patent." The issue before the Court was whether the one year time limit was nonappealable within the provisions of §314(d). View

Color Marks for Product Packaging Can Be Inherently Distinctive

In a precedential ruling, the Federal Circuit held that "color marks can be inherently distinctive when used on product packaging, depending upon the character of the color design." In re Forney Industries, Inc., Appeal No. 20191-1073 (April 8, 2020). The case came before the Federal Circuit as a result of Forney's seeking trademark registration of a black, yellow, and red design for its product packaging. The TTAB refused registration on the basis that a color mark applied to product packaging can never be inherently distinctive, citing the SCOTUS's Qualitex decision. In Qualitex, SCOTUS held that color may function and be protected as a trademark as long as it has secondary meaning.View

Federal Circuit Holds Same-Party And New-Issue Joinder Not Allowed To An Instituted IPR

In Facebook, Inc. v. Windy City Innovations, Nos. 2018-1400 et al. (Fed. Cir. March 18, 2020), the PTO Patent Trial and Appeal Board had instituted an IPR proceeding with respect to certain claims of patents asserted in an underlying lawsuit where Windy City had not yet identified the specific claims it was asserting in the district court proceeding. After it identified the claims it was asserting, Facebook filed two additional petitions for IPR for additional claims but by the time of that filing, the one-year time bar had passed. The Board granted Facebook’s request to add new petitions raising new issues to the already instituted proceeding, but the Federal Circuit reversed, holding that the “clear and unambiguous text of § 315(c) does not authorize same-party joinder, and does not authorize the joinder of new issues.” View

SCOTUS Holds That The USPTO Cannot Recover Its Attorney Fees Under 35 U.S.C. § 145

In Peter v. NantKwest, Inc., No. 18-801 (Dec, 11, 2019), the Supreme Court considered whether 35 U.S.C. § 145, which provides that an applicant must pay "[a]ll expenses of the proceedings" when it appeals an adverse USPTO decision in the district court, should include the pro rata salaries of USPTO attorneys and paralegals who worked on the case.View

Federal Circuit Holds Design Patents Cover Only Specifically Claimed Items

In a case of first impression involving design patents, the Federal Circuit held that the language recited in the single "claim" of a design patent can limit the scope of a design patent "where the claim language supplies the only instance of an article of manufacture that appears nowhere in the figures." In the case at hand, the design patent illustrated a unique "Y" shaped pattern, but none of the figures showed the pattern on a specific product. However, the title of the patent and sole claim were amended to indicate that the design was a "Pattern for a Chair." Thus, the Federal Circuit affirmed the dismissal of an infringement suit against a company selling baskets with a "Y" shaped pattern because the design patent was deemed to be limited to chair designs only.View

PTAB Holds Service of Deficient Infringement Claim May Start One-Year IPR Filing Period

In GoPro, Inc. v. 360Heros, Inc., IPR2018-01754 (PTAB Aug. 23, 2019) (Paper 38), the Precedential Opinion Panel ('POP') of the PTAB held that a deficiently pleaded counterclaim where standing was lacking still triggered the one-year IPR filing period under 35 U.S.C. § 315(b). That provision bars institution of an IPR if the petition is filed "more than 1 year after the date on which the petitioner ... is served with a complaint alleging infringement of the patent." View

As Of August 2019 U.S. Licensed Lawyers Required For Trademark Matters Before The USPTO

Effective August 3, 2019, the United States Patent and Trademark Office will require all non-U.S. trademark applicants, non-U.S. trademark registrants, and non-U.S. parties to a trademark proceeding to be represented by a U.S. licensed lawyer. The USPTO will correspond only with the appointed U.S. licensed attorney. View

Supreme Court Paves The Way For Registration Of Offensive Trademarks

In Iancu v. Brunetti, No. 18-302 (June 24, 2019), the Supreme Court, citing the First Amendment, struck down a portion of the Lanham Act prohibiting registration of "immoral or scandalous" marks, just as it had previously struck down the portion of the Lanham Act barring registration of "disparaging" trademarks in June 2017. The Court paved the way for an applicant to register the mark "FUCT" for a line of clothing, which an appeals board had found unregistrable as "highly offensive" and "vulgar." Because the law "disfavors certain ideas," Justice Kagan wrote, it violates the First Amendment. "Viewpoint discrimination is poison to a free society," Justice Alito wrote in his concurrence, saying that the Court must "remain firm" on this issue during "a time when free speech is under attack." This case is unique both for its intersection between intellectual property and First Amendment law, and for its obvious puns IP lawyers will no doubt make about the state of the Lanham Act. View

Federal Circuit Clarifies Inter Partes Review Time Bar Provision Under 35 U.S.C. § 315(b)

In Power Integrations, Inc. v. Semiconductor Components Industries., LLC, the Federal Circuit tackled for the first time the issue in inter partes reviews of "whether privity and RPI [real party in interest] relationships arising after filing but before institution should be considered for purposes of the § 315(b) time-bar." Power Integrations, No. 2018-1607, slip op at 12-13 (Fed. Cir. June 13, 2019). The Court concluded that the "best reading" of § 315(b) required that privity and RPI relationships that arise after the filing of an IPR petition but before institution be considered in determining whether a petition was time-barred. Id., at 14. In this case, Semiconductor Components Industries, LLC, which did business as ON Semiconductor ("ON"), merged with a third party (Fairchild Semiconductor) who had been served with a complaint more than one year before ON filed its petition. Id., at 4. That merger closed just four days before the PTAB's decision to institute. Id. The Court held the IPR was time-barred "because Fairchild was an RPI at the time the IPR was instituted, even though it was not an RPI at the time the petition was filed." Id., at 21. Slip opinion available at http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/18-1607.Opinion.6-13-2019.pdfView

SCOTUS Holds “Secret Sales” May Trigger On-Sale Patent Bar

In Helsinn Healthcare S.A. v. Teva Pharm. USA, Inc., No. 17-1229, (Jan. 22, 2019), a unanimous Supreme Court held that the “on sale” bar of 35 U.S.C. § 102(a)(1) of the America Invents Act (“AIA”) could be triggered by a patentee making a “secret” commercial sale of an invention more than one year before filing a patent application. The Court explained that it was well-settled under pre-AIA law that the "on sale" bar could be triggered by "a commercial sale to a third party who is required to keep the invention confidential," and held that the AIA's addition of the catchall phrase "or otherwise available to the public" in § 102(a)(1) was not enough of a change for the Court to conclude that Congress intended to alter this settled meaning.View

Copyright Registration - A Requirement to File Suit Says The Supreme Court

On March 4, 2019, the Supreme Court unanimously ruled that copyright owners must first obtain a copyright registration from the U.S. Copyright Office, or receive a denial of a registration, before they can bring a copyright infringement lawsuit. Fourth Estate Public Benefit Corp. v. Wall-Street.com, LLC, No.17-571 (Mar. 4, 2019). The ruling, authored by Justice Ginsburg, resolved a split of authority among different circuit courts in which some courts did not require a registration prior to filing suit, only the filing of a copyright application.View

Supreme Court Upholds Award of Lost Foreign Profits For Patent Infringement

The Supreme Court expanded the territorial reach of patent damages in WesternGeco LLC v. ION Geophysical Corp., No. 16-1011, 2018 U.S. LEXIS 3842 (June 22, 2018), holding that, in cases involving the infringing exportation of components for assembly abroad, '§271(f)(2) and §284 allow the patent owner to recover for lost foreign profits.' WesternGeco's competitor, ION Geophysical Corporation, had created an infringing ocean floor surveying system by manufacturing components in the United States and shipping them to companies abroad, where they were combined. As a result, WesternGeco lost foreign survey contracts that amounted to over $90 million dollars. In finding that WesternGeco could recover for these foreign losses, the Court emphasized that the infringing conduct at issue under Section 271(f)(2) was purely domestic, even if the harm arising from the infringing exportation occurred abroad.View

Supreme Court Rules Inter Partes Decisions Are Here To Stay, With Modifications

Supreme Court Rules Inter Parties Decisions Are Here, With Modifications The Supreme Court issued two much-anticipated decisions Tuesday in cases involving Inter Partes Review (IPR) proceedings before the Patent Trial and Appeal Board (PTAB). In the first case, Oil States Energy Services, LLC v. Greene's Energy Group, LLC, No. 16-712, 584 U.S. __ (April 24, 2018), the Court ruled that IPR proceedings are constitutional and do not violate either Article III or the Seventh Amendment. Essentially, the Court reasoned that invalidity challenges need not be brought in court, but rather such proceedings are entirely proper at the PTAB, which is itself part of the U.S. Patent and Trademark Office, which decides issues of patentability in the first instance. View

Fourth Circuit Provides Important Guidance Regarding DMCA Safe Harbor

The Digital Millennium Copyright Act (“DMCA”) protects against claims of copyright infringement for online providers who host user-generated content on their sites. It provides a “safe harbor” against copyright infringement claims arising from user posts, so long as the internet service provider implements an appropriate “repeat infringer policy” that terminates user accounts in appropriate circumstances.View

Federal Circuit Makes It Easier For Patent Owners To Amend Claims in IPR

In a fractured en banc decision, the Federal Circuit ruled that the petitioner in an inter partes review, not the patent owner, has the burden of showing that amended claims are unpatentable. Aqua Products, Inc. v. Matal, No. 2015-1177 (Fed. Cir. Oct. 4, 2017). Furthermore, the PTAB must base its patentability determinations regarding such amended claims on the entirety of the IPR record, not just the "face of the motion to amend." View

File or Re-File Your DMCA Notice Now

The Digital Millennium Copyright Act, commonly known as "DMCA," provides protection against claims of copyright infringement for website owners and other providers of online services or network access such as bloggers, social media platforms and mobile apps (hereafter "service providers") who may have inadvertently or unknowingly uploaded material in violation of third party copyrights. In order to secure the protections provided by the DMCA, website owners and service providers must file documentation with the Copyright Office so that aggrieved parties can request removal of allegedly infringing works. The Copyright Office has revamped the DMCA procedures by which website owners and service providers can obtain safe harbor from copyright infringement allegations.View

Supreme Court Expands Doctrine Of Patent Exhaustion

In a decision overturning longstanding Federal Circuit law, the Supreme Court in Impression Prods., Inc. v. Lexmark Int'l, Inc., 581 U.S. __ (May 30, 2017) held that a patent owner's sale of a patented product anywhere in the world exhausts all of its U.S. patent rights in that product, regardless of post-sale restrictions the patent owner may have imposed on the purchaser. Such exhaustion also occurs upon sale by a licensee acting in compliance with a valid license. View

Supreme Court Limits Patent Venue

The Supreme Court limited venue for patent infringement actions in TC Heartland LLC v. Kraft Foods Group Brands LLC, No. 16-341 (U.S. May 22, 2017). Reversing the Federal Circuit, the Supreme Court unanimously held that "resides" for the purpose of a domestic defendant corporation in patent litigation means its state of incorporation. Thus, patent owners can only bring a patent infringement suit in a judicial district where the alleged infringer: (a) is incorporated or (b) both has committed acts of infringement and has a "regular and established place of business."View

Supreme Court Creates Encouraging Test For Copyright Protection Of Designs Incorporated Into Useful Items

The Supreme Court resolved “widespread disagreement” about the availability of copyright protection for designs used on useful items. Star Athletica, LLC v. Varsity Brands, Inc., ___ U.S. ___ (Mar. 22, 2017). The question presented was how to determine when design works are “conceptually separable” from useful items, the latter not being eligible for copyright protection. The Supreme Court’s holding that copyright protection is indeed available for some designs incorporated into useful items is encouraging for creators seeking protection of their original works. View

Supreme Court Eliminates Laches Defense To Patent Damages

In a 7-1 decision, the Supreme Court held that the equitable doctrine of laches cannot be used to bar damages for patent infringement that occurred within the 6-year "look-back" period prescribed by 35 U.S.C. § 286. SCA Hygiene Prods. v. First Quality Baby Prods., ___ U.S. ___ (Mar. 21, 2017). The Court's decision closely followed the reasoning of its earlier decision in Petrella v. Metro Goldwyn Mayer, Inc., 134 S.Ct. 1962 (2014), in which the Court disallowed laches during the 3-year damages period prescribed by the Copyright Act's statute of limitations. In SCA, the Court concluded that Section 286 of the Patent Code "represents a judgment by Congress that a patentee may recover damages for any infringement committed within six years of the filing of the claim," and thus held that applying laches during that period would go "beyond the Judiciary's power." View

Supreme Court Reins In Infringement Liability For Exporting "Components"

The Supreme Court in Life Technologies Corp. v. Promega Corp., 580 U.S. ___ (Feb. 22, 2017) trimmed the scope of infringement liability under 35 U.S.C. § 271(f)(1), which makes it an act of infringement to supply from the United States "all or a substantial portion" of the components of a patented invention for combination abroad. The Court construed the phrase "a substantial portion" in Section 271(f)(1) as having a quantitative, not a qualitative, meaning, requiring the exportation of "plural" components. View

Design Patents Continue To Offer Powerful Protection Even After Supreme Court Decision Reining In Damages

The Supreme Court's decision in Samsung Elecs. Co. v. Apple Inc., No. 15-777 (U.S. Dec. 6, 2016) to reverse a $399 million damages award against Samsung for infringement of Apple design patents directed to the rectangular shape and rounded corners of a smartphone, has received significant attention in the IP community. Lost in the discussion, however, is the substantial value that design patents continue to have, both domestically and abroad, in protecting an innovator's products against copying.View

Federal Circuit Further Clarifies Scope Of Abstract Idea Exception

A pair of recent Federal Circuit decisions have benefited software patents by clarifying restrictions imposed by the Supreme Court's decisions in Mayo and Alice. The cases emphasize that the first step in the Mayo/Alice analysis is "a meaningful one," and that "a substantial class of claims" in software and other fields are not exempt from patentability as abstract ideas.View

Federal Circuit Clarifies Patent Eligibility For Life Sciences Inventions

The USPTO has issued new guidance to examiners to aid them in determining subject matter eligibility of life sciences method claims that facilitates obtaining such patents.View

Supreme Court Rejects Test For Enhanced Damages in Favor of Less Burdensome Test

Although Section 284 of the Patent Act provides that courts "may increase the damages up to three times the amount found or assessed," the Federal Circuit previously established a more burdensome test for proving enhanced damages. According to In re Seagate Technology, LLC, 497 F.3d 1360 (Fed. Cir. 2007), a patent owner was required to (1) "show by clear and convincing evidence that the infringer acted despite an objectively high likelihood that its actions constituted infringement of a valid patent" and then (2) show that the risk of infringement "was either known or so obvious that it should have been known to the accused infringer" in order to capture enhanced damages.View

Defend Trade Secrets Act Is Passed

The Defend Trade Secrets Act ("DTSA") has now passed both the House and Senate and been signed into law by President Obama.View

Petitions For Inter Partes Review Face Increased Scrutiny

Amid continuing popularity of Inter Partes Review as a vehicle for challenging patent validity, the Federal Circuit vacated a PTAB finding of invalidity because the PTAB had not adequately explained why the claimed invention was obvious.View

Laches Defense Still Applicable To Patent Cases

The laches defense remains available in patent cases. In an en banc decision,SCA Hygiene Products v. First Quality Baby Products, LLC 2015 U.S. App. LEXIS 16621 (Fed. Cir., September 18, 2015), the Federal Circuit distinguished the Supreme Court's decision last year in the View

Federal Circuit Expands Scope Of Divided Infringement Liability

Resolving a protracted battle regarding so-called "divided infringement," the Federal Circuit held en banc in Akamai Technologies, Inc. v. Limelight Networks, Inc., No. 2009-1372 (Fed. Cir. Aug. 13, 2015) that an entity may be liable for direct infringement of a method claim even if it does not perform all method steps, so long as it directs or controls the performance of the remaining method steps or engages in a joint enterprise to do so.View

Federal Circuit Applies Extraterritoriality Principle To Trim Damages Award

Continuing its careful scrutiny of damage awards in patent cases, the Federal Circuit in Carnegie Mellon University v. Marvell Technology Group Ltd., et al., 2014-1492 (Fed. Cir. Aug. 4, 2015) reversed a substantial portion of a $1.5B patent infringement award and remanded for determination of whether accused chips that were made and delivered solely outside of the United States could be used to measure damages for infringement of a method claim in the U.S. View

Good-Faith Belief In Invalidity No Longer A Defense To Inducement Of Infringement

Earlier today, the Supreme Court ruled that a good-faith belief regarding patent invalidity is no longer a defense to an induced infringement claim.Commil USA LLC v. Cisco Systems Inc., No. 13-896 (U.S. May 26, 2015).View

Supreme Court Upholds Preclusive Effect Of TTAB Decisions

In a decision reflecting the increasing importance of adversary proceedings in the Patent and Trademark Office, the Supreme Court held in B&B Hardware, Inc. v. Hargis Indus., Inc., No. 13-352 (U.S. Mar. 24, 2015) that Trademark Trial and Appeal Board decisions regarding likelihood of confusion are binding on district courts, so long as the ordinary elements of issue preclusion are satisfied. View

Design Patents To Get Boost From New Treaty

The United States will enhance protections for designs by acceding to the Geneva Act of the Hague Agreement on May 13, 2015, making the United States a member of the Hague Union.View

Supreme Court Shifts Claim Construction Review

It is well-established law that the meaning of claim terms ("claim construction") is to be determined by a judge, even when such determination requires consideration of factual evidence.View

Willful Infringement: Still Viable

he Federal Circuit recently upheld a finding of willful infringement in a case in which enhanced damages could approach one billion dollars. Bard Peripheral Vascular, Inc. v. W.L. Gore & Associates, Inc. (Fed. Cir. 2015). View

District Court Endorses "Patent Exhaustion" Defense

An increasing willingness by the courts to uphold exhaustion as a defense in patent infringement actions continues.View

Federal Circuit Panel Reaffirms Viability Of Laches Defense In Patent Cases

A three-judge panel of the Federal Circuit held this week that laches continues to be available as a defense to claims for patent infringement damages, notwithstanding the Supreme Court's ruling in Petrella v. Metro Goldwyn Mayer, Inc., 134 S. Ct. 1962 (2014) that the defense cannot be invoked in most copyright cases.View

Supreme Court Continues To Issue Significant Patent Rulings

Continuing its hands-on approach in patent cases, the Supreme Court issued two more decisions clarifying the standards for evaluating patent infringement and validity. In Limelight Networks, Inc. v. Akamai Technologies, Inc., the Supreme Court held that a defendant may not be found liable for inducing infringement absent direct infringement by a single entity. View

Supreme Court Weighs In Regarding Patentability Of Financial Products

The Supreme Court issued another significant patent ruling this week, holding in Alice Corp. Pty. Ltd. v. CLS Bank that patent claims directed to financial methods and systems that are otherwise unpatentable are not made patentable just because they are implemented on a computer.View

Supreme Court Sharply Limits Laches Defense

In a sweeping ruling, the Supreme Court held that a plaintiff's significant delay in suing for copyright infringement did not bar the plaintiff from seeking damages for infringement occurring during the Copyright Act's three-year "look back" window.View

Supreme Court Weighs In On Fee Awards In Patent Cases

In two decisions issued yesterday, the Supreme Court relaxed the standard for awarding fees in patent cases. Both decisions should have the effect of reducing baseless patent suits.View

Federal Circuit Expands Reach of Doctrine of Equivalents

In a recent decision, the Federal Circuit expanded the scope of protection of existing patents. The courts have long held that patent claims cover not only their literal scope of protection but future unforeseeable developments as well, provided the future developments are considered equivalent.View

PTAB Ruling Demonstrates Value of Patent Owner Preliminary Responses in Inter Partes Review

The widespread adoption by patent challengers of Inter Partes Review remains high. The vast majority of petitions to initiate an IPR are granted by the USPTO. However, the tactical use of a Patent Owner Preliminary Response can be very effective, as our firm recently showed.View

Patent Office Invalidity Challenges Gather Momentum

The Federal Circuit has held that the cancellation of patent claims in a Patent Office reexamination acts to extinguish a damages award previously rendered in concurrent district court litigation. This highlights the power of Patent Office proceedings to challenge patent validity, including ex parte reexamination and the recently-enacted Post-Grant Review, Inter Partes Review and Supplemental Examination procedures under the America Invents Act.View

Belief in Invalidity an Important Factor in Finding No Inducement

The Federal Circuit recently decided in Commil USA, LLC v. Cisco Systems, Inc. that a good faith belief that a patent is invalid may negate the intent required for an induced infringement case (i.e., a case where the plaintiff is accused not of directly infringing, but rather of inducing others to infringe a patent).View

Supreme Court Decision Renders Patent Ineligible Isolated DNA

The predictions of those that attended the oral argument before the Supreme Court for Association for Molecular Pathology et al. v. Myriad Genetics were correct - despite two Federal Circuit decisions to the contrary and the USPTO's years of issuing patents with claims to isolated DNA, the Supreme Court held that such claims are not patentable subject matter.View

Sony Wins Knock-out Jury Verdict

Following a three-week jury trial in a San Francisco federal court, Lerner David delivered a complete victory for its client Sony against allegations by Television Interactive Data Corporation ("TVI") that Sony's Blu ray players, DVD players, and PlayStation3 consoles infringed four TVI patents relating to "autoplay" technology.View

Global Changes To Facilitate Brand and Design Protection Continue

Mexico joined the United States and Colombia as the first countries in the Americas to adopt the Madrid Protocol, allowing far greater flexibility for trademark protection.View

Consider Filing Patent Applications As One Of Your New Year's Resolutions

You've likely heard that the United States will become a first-to-file patent system on March 16, 2013. Simply put, invention priority will be awarded to the first filed patent application.View

New Virtual Patent Marking Rules Offer Convenience And Flexibility

New rules on “virtual patent marking” implemented by the America Invents Act have already taken effect: • A product may now be marked with “pat.” or “patent” and reference to a freely-accessible Web address that identifies the patent numbers that cover that product.View

Recent Federal Circuit Decision Changes Law On Divided Infringement

On August 31, 2012, the Federal Circuit issued its long awaited decision in Akamai v. Limelight. Although it did not specifically address the law of direct infringement, the Court did overrule its previous decision on induced infringement. No longer is it necessary for a single entity to perform all of the steps of a method claim for another party to be liable for induced infringement. View

America Invents Act Changes Go Into Effect September 16, 2012

Inter Partes Review (IPR), a major part of the new patent law, goes into effect September 16. It provides new and dynamic options for challenging the patents of competitors and others whose patent rights pose threats.View

USPTO Reacts To Prometheus Decision

In March, the US Supreme Court issued a ruling limiting the scope of patentable subject matter for inventions relating to laws of nature. Since then, the United States Patent and Trademark Office has been evaluating the decision so that patent examiners can follow uniform guidelines. A recent USPTO memo to patent examiners provides a three question analysis for examiners to determine whether a claim is patentable.View

Supreme Court Authorizes Federal Court Challenges To Pharmaceutical "Use Codes"

In a closely watched case, the Supreme Court has held that generic drug companies may challenge in federal court the “use codes” that brand-name drug manufacturers submit to FDA. Such codes are used to describe the brand company’s patents on methods of using an approved drug.View

Recent Supreme Court Case Impacts Patentability Of Diagnostic Testing Claims

The Supreme Court issued an opinion in the highly anticipated Mayo Collaborative Servs. v. Prometheus Labs., Inc., No. 10-1150, 2012 U.S. LEXIS 2316 (U.S. Mar. 20, 2012), involving method claims for optimizing therapeutic treatments for autoimmune diseases. View

The America Invents Act Is Coming

nter Partes Review and Post Grant Review, which are intended to be substitutes for more expensive in-court challenges to patent validity, commence September 16, 2012. Post Grant Review will initially be limited to certain business method patents, but will subsequently apply to all patents filed on or after March 16, 2013. View

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