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  • 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 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 inAkamai 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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