Tag Archives: intellectual property

Patent Declaratory Judgment Jurisdiction: Are Patentees Communicating Too Much?

Photo of Derek FreitasBy Derek Freitas on Posted in Patent, Patents
Historically, patentees needed not worry too much about whether their mere pre-suit communications sent from afar into a jurisdiction created personal jurisdiction for a declaratory judgment action. See e.g., Silent Drive, Inc. v. Strong Industries, Inc., 326 F.3d 1194, 1202 (Fed. Cir. 2003) (ruling that cease-and-desist letter sent by patentee into forum did not create … Continue Reading

A Recent Entrance to Copyright Protection: Can AI Qualify as an Author Under U.S. Copyright Law?

Photo of Cory BarnesPhoto of Ashtar AbboudBy Cory Barnes and Ashtar Abboud on Posted in Intellectual Property
Should copyright protection be given for AI-generated inventions? Stephen Thaler, the president and CEO of Imagination Engines, thinks so. The Complaint In 2018, Thaler filed an application to register a copyright for an AI-generated work produced by one of his AI systems, the Creativity Machine. The work, titled “A Recent Entrance to Paradise,” is part … Continue Reading

New Combined Petition Option for the Expanded Collaborative Search Pilot Program – Is It Worth Implementing Into Your International Patent Portfolio Strategy?

Photo of Tayan PatelBy Tayan Patel on Posted in USPTO
Effective March 29, 2022, the United States Patent and Trademark Office (USPTO), the Japan Patent Office (JPO) and the Korean Intellectual Property Office (KIPO) will accept a new combined petition option to participate in the Expanded Collaborative Search Pilot (CSP) program. The Expanded CSP program is currently active through Oct. 31, 2022, with each intellectual … Continue Reading

Close Case for Non-obviousness of Pharmaceutical Formulations — Adapt Pharma v. Teva Pharma

Photo of Scott ConleyBy Scott Conley on Posted in Patent
In Adapt v. Teva, the Federal Circuit affirmed the district court’s findings that methods of administering a naloxone nasal spray formulation were invalid as obvious. The decision, which the Court notes was a “close case,” reminds us how difficult it is to show non-obviousness of pharmaceutical formulations and their use. The patents at issue relate … Continue Reading

Substance Over Form — When a Quote May Constitute a Commercial Offer for Sale

Photo of Tayan PatelBy Tayan Patel on Posted in Patents
Recently the Federal Circuit reversed a district court’s grant of summary judgment of no invalidity of a design patent under the on-sale bar provision of 35 U.S.C. § 102. Junker v. Medical Components, Inc., No. 2021-1649 (Fed. Cir. Feb. 10, 2022). The Federal Circuit agreed with defendants-appellants (collectively, MedComp) that a pre-critical date letter, i.e., … Continue Reading

Federal Circuit Hints at Easier Service of Process on Foreign Defendants

Photo of Cory BarnesBy Cory Barnes on Posted in Federal Circuit, Intellectual Property, Patent, Patents
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

Lost Profits or Disgorgement?

Photo of Chunmeng YangBy Chunmeng Yang on Posted in Intellectual Property, Trademark
In trademark infringement cases involving competitors, the plaintiff typically seeks damages in the form of lost profits once infringement has been proven. The purpose of “lost profits” is to compensate the plaintiff for its losses. In contrast, disgorgement requires a defendant to give up all profits it has made as a result of illegal or … Continue Reading

Booking.com Remand on USPTO Attorney Fee Issue Portends Closure on Circuit Split

Photo of Lesley GrossbergBy Lesley Grossberg on Posted in Patent
As followers of this blog may recall, in December 2019, the Supreme Court resolved a circuit split as to whether the United States Patent and Trademark Office (USPTO) may recover its “attorneys’ fees” (effectively, the pro rata salaries of its legal personnel) in appeals from the Patent Trial and Appeal Board (PTAB) and Trademark Trial … Continue Reading

Full House Passes Defend Trade Secrets Act

By Regina Culbert on Posted in Trade Secret
On April 27, the full House of Representatives passed the federal Defend Trade Secrets Act (“the Act”) by an overwhelming vote of 410-2. As we have previously blogged, the Act is likely to be signed by the president and become law for any trade secret misappropriation that occurs after the Act is passed. In the … Continue Reading
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