Archives: Patents

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Federal Circuit Requires Prior Art Be Analogous for Anticipation of Design Patents

Design patents offer valuable protection in a patent portfolio, including conferring different strategic advantages compared to those of utility patents. For example, design patents allow for recovery of “total profits” — not just lost profits or reasonable royalties as provided for infringed utility patents.[1] Likewise, design patents are not subject to attacks under 35 U.S.C. … Continue Reading

Federal Circuit Hints at Easier Service of Process on Foreign Defendants

In a recent decision, In re: OnePlus Technology (Shenzhen) Co., Ltd., Case. No. 21-165, Dkt. 20, the Federal Circuit denied China-based smartphone maker OnePlus’ petition for mandamus seeking to direct a Western District of Texas court (Judge Alan Albright) to dismiss the five underlying patent infringement actions for insufficient service of process. The Federal Circuit … Continue Reading

Courts Rule That AI Inventorship Can Rust in Peace

On Sept. 2, 2021, the U.S. District Court for the Eastern District of Virginia addressed what it called a “core issue”—whether an artificial intelligence (AI) machine can be an “inventor” under the Patent Act. It ruled that the “clear answer” is no. The Patent Applications Plaintiff Stephen Thaler, Ph.D., is the owner of a Device … Continue Reading

Circuit Courts Continue To Limit Preclusive Effect of TTAB Decisions

On Sept. 17, 2021, the Third Circuit Court of Appeals became the latest Circuit Court to limit the preclusive effect of Trademark Trial & Appeal Board (“TTAB”) decisions. In 2015, the Supreme Court, in B&B Hardware,[1] decided in a 7-2 vote that issues decided in TTAB proceedings may have preclusive effect if the elements of … Continue Reading

No Wrong Notes: Federal Circuit’s Piano Factory Decision Holds TTAB in Tune with Arthrex

This blog previously reported[1] that on June 21, 2021, the Supreme Court issued its landmark decision in United States v. Arthrex, Inc., holding – in Chief Justice Roberts’ 5-4 opinion – that “the unreviewable authority wielded by [administrative patent judges, or APJs] during inter partes review [IPR] is incompatible with their appointment by the Secretary … Continue Reading

Bio-Rad Co-ownership Defense Fails at the CAFC

On April 29, 2021, the United States Court of Appeals for the Federal Circuit (CAFC) affirmed an International Trade Commission (ITC) decision holding the importation and sale by Bio-Rad Laboratories, Inc. (Bio-Rad) of certain microfluidic systems and components used for gene sequencing or related analyses infringed certain 10X Genomics Inc. (10X) patent claims and, moreover, … Continue Reading

Supreme Court to Decide Fate of Assignor Estoppel

In Hologic, Inc. v. Minerva Surgical, Inc. (Fed. Cir. April 22, 2020), the Federal Circuit declined the “invitation to ‘abandon the doctrine’ of assignor estoppel” and, after concluding that the district court did not abuse its discretion in applying the doctrine, affirmed the district court’s grant of summary judgment of no invalidity.  Opinion at 16, … Continue Reading

For a Few Facts More

After TC Heartland tightened up patent venue, Judge Albright’s local patent rules drew plaintiffs wanting a quick courtroom shootout. According to Lex Machina and IP Law360, Judge Albright, by himself, picked up 793 patent litigations last year in the Western District of Texas (WDTex). In just a year, Judge Albright accumulated 20 percent of newly-filed … Continue Reading

Podcast: When Fixing One Problem Creates Another: How Patent Infringement Arises Out of Product Repairs

Various products are subject to systems (e.g., purchase agreements) under which product purchasers and third parties are prevented from repairing the products and the only way to repair the product is to proceed through an authorized vendor or the original manufacturer. Manufacturers often favor such systems, as the systems (1) allow the manufacturers to obtain additional … Continue Reading

Moderna’s IP Vault Paves the Way for COVID-19 Treatments

On Oct. 8, Moderna, Inc., issued a statement on intellectual property matters during the COVID-19 pandemic. In the statement, Moderna acknowledged the importance of the role of intellectual property “in encouraging investment in research.” Nevertheless, Moderna feels it has a special obligation to allow others access to its patented technologies; accordingly, Moderna indicated that it … Continue Reading

Landmark UK Supreme Court Decision Grants UK Courts Power to Set the Global Royalty Rate for Standard Essential Patents

On Aug. 26, 2020, the United Kingdom Supreme Court issued a decision in Unwired Planet International Ltd & Anor v Huawei Technologies (UK) Co Ltd & Anor [2020] UKSC 37 that changes the landscape for patentees seeking to enforce standard essential patents, which are patents claiming inventions that must be used to comply with a … Continue Reading

‘Something of an Experiment’: District of Delaware Prepares for Socially Distanced Patent Trial Tentatively Set for August 2020

In an earlier blog post, we commented on how the COVID-19 pandemic has affected and may continue to affect patent litigation. A recent order from one of the country’s busiest patent courts, the District of Delaware, reflects the ways in which the pandemic may affect patent trial practice. On July 2, in Sunoco Partners v. … Continue Reading

USPTO Waives Petition to Revive Fees for Patents, Patent Applications, Trademarks and Trademark Applications Abandoned Because of an Inability to Respond Due to COVID-19

To give patent and trademark applicants as well as patent and trademark owners relief from the implications of the COVID-19 outbreak, the United States Patent and Trademark Office (USPTO) determined that the COVID-19 outbreak qualifies as an “extraordinary situation” and exercised its authority to waive certain petition fees. For patent owners and applicants unable to … Continue Reading

Not Dat Function, Dis Function

  When we talk these days about the role of functionality in determining the copyrightability of a useful article, we are generally talking about the 10 different separability tests currently duking it out at the Supreme Court in the Varsity Brands case. Our posts on that case are here, here and here. These tests enforce … Continue Reading

What CLS Bank Taketh, Copyright May Giveth Back

CLS Bank and Its Impact on Software Patents Courts, commentators and clients will be struggling for some time to assess the impact on software patents of Thursday’s Supreme Court decision in Alice v. CLS Bank.  Interpreted one way, the decision kills patents directed at computer-implemented business methods.  Interpreted another way, it’s business as usual for … Continue Reading
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