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
On April 18, 2023, the U.S. Patent and Trademark Office (PTO) will begin moving away from issuing paper patents and will begin issuing patents electronically as electronic patent grants (eGrants). In addition to reducing paper waste, the PTO states that eGrants will “benefit[] stakeholders by reducing pendency and streamlining the process.”[1] According to the PTO, … Continue Reading
The District of Delaware is renowned as a patent litigation hot spot, but the district sees its fair share of other IP litigation. Two recent opinions shed some light on this practice and are useful for anyone seeking to file a trademark or copyright suit, or called to defend against one, in the district. First … Continue Reading
On August 5, 2022, the Federal Circuit in Thaler v. Vidal ruled that an artificial intelligence (AI) system cannot be listed as a named inventor on a patent application, affirming the United States Patent and Trademark Office (USPTO) and Eastern District of Virginia rulings. The Federal Circuit concluded that the Patent Act requires an “inventor,” … Continue Reading
On June 6, the U.S. Court of Appeals for the Federal Circuit held oral argument on the issue of whether an invention generated by artificial intelligence (AI) is patentable. The Patent Applications As described in a companion article, which can be found here, Plaintiff Stephen Thaler, Ph.D., is the owner of a Device for the … Continue Reading
The United States Patent and Trademark Office recently issued an Examination Guide clarifying the standard for refusing trademark applications on genericness grounds. Like other substantive refusals, to establish a prima facie case of genericness, the examining attorney must provide “sufficient evidence” to support a reasonable predicate for the refusal. Prior to this clarification, the Trademark … Continue Reading
As the metaverse continues to become a more established marketplace, and consumers become more familiar with non-fungible tokens (NFTs), NFT marketplaces, decentralized domains, bitcoin, crypto wallets and the blockchain, it is no surprise that intellectual property (IP) owners are starting to see an increase in unauthorized uses of their trademarks and copyrights. There is a … Continue Reading
A party sued for patent infringement may seek to shift some or all of its liability through an indemnification claim. While a patent infringement defendant may seek to implead an indemnitor under Rule 14 of the Federal Rules of Civil Procedure, a recent Eastern District of Kentucky decision is a reminder that third-party complaints are … Continue Reading
In addition to another year of the pandemic, 2021 brought with it several key developments in the realm of intellectual property (IP) that BakerHostetler has covered in this blog series. We hope readers have found these posts informative and entertaining thus far. Looking forward to 2022, there are a number of issues already teed up … Continue Reading
Earlier this month, certain regulations implementing the Trademark Modernization Act (TMA) went into effect. Per the final rule, the new tools are primarily to clear the “deadwood” – that is, unused registered trademarks – from the Registry and are now available for use. A summary of the changes follows:… Continue Reading
On Dec. 10, 2021, the U.S. Patent and Trademark Office (USPTO) issued a precedential Final Order for Sanctions against Chinese practitioner and law firm Yusha Zhang and Shenzhen Huanyee Intellectual Property Co., Ltd. for filing more than 15,000 applications and other submissions that were deemed fraudulent. The USPTO described the mass filings as “[a] scheme … Continue Reading
One common rationale used to support an obviousness argument is that the patented solution would have been “obvious to try.” The Supreme Court has stated that where “there are a finite number of identified, predictable solutions” for solving a problem and that “a person of ordinary skill has good reason to pursue the known options,” … Continue Reading
Partner Stephanie Lodise, Ph.D., and Patent Agent Tracy Palovich, Ph.D., break down the differences between obviousness rejections and obviousness-type double patenting rejections. They then provide important prosecution strategies how to respond to each type of rejection so as to maximize patent protection Questions & Comments: slodise@bakerlaw.com Listen to the Episode Subscribe to BakerHosts Apple Podcast | Google … Continue Reading
Under U.S. law, every patent claim must be supported by an adequate written description, which conveys to those skilled in the art the nature and breadth of the invention.[1] The Federal Circuit recently decided two cases that found that claiming both a quantitative value and a quantitative range requires particular clarity in the disclosure. In … Continue Reading
I recently received a call from a friend who expressed that his company is struggling with helping inventors identify a point of novelty for their ideas in their invention disclosure forms (IDFs), and as a result, it has been difficult to decide whether or not to move forward with their invention ideas. As my friend … Continue Reading
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
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
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
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
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
In its Aug. 17 decision in Valve Corporation v. Ironburg Inventions Ltd., the Federal Circuit appears to have cleared the way for district courts to take judicial notice of Wayback Machine captures as evidence of prior-art printed publications. As many readers of this blog will know, the Wayback Machine is an online digital archive of … Continue Reading
In the latest round of appellate hot potato, the U.S. Court of Appeals for the Federal Circuit transferred to the U.S. Court of Appeals for the Fifth Circuit an appeal from a decision by the U.S. District Court for the Northern District of Texas regarding antitrust claims associated with enforcement of a patent found unenforceable … Continue Reading
On June 21, 2021, the Supreme Court issued its long-awaited decision in United States v. Arthrex, 19-1434, 19-1452, 19-1458. The issue in Arthrex was “whether the authority of Administrative Patent Judges (APJs) to issue decisions on behalf of the Executive Branch is consistent with the Appointments Clause of the Constitution.” The Supreme Court held that … Continue Reading
In 2018, the U.S. Supreme Court held that a plaintiff was entitled to lost foreign profits under 35 U.S.C. § 284 based on direct acts of infringement in the United States under 35 U.S.C. § 271(f)(2). WesternGeco LLC v. ION Geophysical Corp., 138 S.Ct. 2129 (2018) (WesternGeco). The question is: Did WesternGeco effectively overrule the Federal Circuit’s … Continue Reading