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IT TAKES TWO TO TANGO: The German Federal Supreme Court Acknowledges That Infringer Hold-Out is a Real Problem
July 16, 2020 | Blog | By Michael Renaud, James Wodarski, Matthew Galica
Germany’s highest court has clearly and emphatically placed SEP implementers on notice that hold-out will not be tolerated, and that implementers must proactively share the burden and obligation to timely achieve a FRAND license. An infringer’s conduct during FRAND negotiations is decisively important, and an infringer’s failure to undertake its burden and satisfy its obligations will preclude it from claiming that the patentee acted anti-competitively, or abused a dominant market position.
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The Trade Secret Seesaw: After the Economy Goes Down, Cases Go Up
July 15, 2020 | Blog | By Adam Samansky, Nicholas Armington
An economic downturn usually leads to a rise in trade secret theft and litigation, and the current slump is likely to generate a major surge in cases due in part to the prevalence of remote work.
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The Standard May Rule Them All: Federal Circuit Panel Appears Prepared to Find Standard Is Sufficient to Prove Infringement for SEP Compliant Products
July 9, 2020 | Blog | By Michael Renaud, James Wodarski, Daniel Weinger
Recent oral arguments at the Fed Circuit suggest that the U.S. may be taking steps which would enhance its attractiveness for SEP patent holders looking to resolve licensing disputes. The Federal Circuit heard oral argument on Monday, July 6th, in Godo Kaisha IP Bridge I v. TCL Commc’n Tech. Holdings Ltd., No. 19-2215, that may pave an easier path for owners of standard essential patents (“SEPs”) to prove literal infringement of products that comply with that standard.
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SCOTUS Rules “Generic.com” Marks Are Eligible For Federal Trademark Protection
July 7, 2020 | Blog | By Susan Neuberger Weller
In a landmark decision, United States Patent and Trademark Office v. Booking.com B.V., the Supreme Court of the United States, by an 8-1 vote, affirmed the lower court’s determination that Booking.com could register BOOKING.COM as a trademark.
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Judge Albright to Apple: Yes, You Can Be Sued Outside Northern California
July 6, 2020 | Blog | By Daniel Weinger
Judge Albright of the Western District of Texas (“WDTX”) recently rejected yet another attempt by Apple to transfer a patent case to the Northern District of California (“NDCA”). Judge Albright’s June 19, 2020 order describes how Apple—not plaintiff Uniloc—was attempting to forum shop by seeking to move essentially all of its cases filed in Texas to NDCA.
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Filling the Hole with Common Sense: When Evidentiary Support is Adequate
July 6, 2020 | Blog | By Peter Cuomo, Serge Subach
The Federal Circuit recently reaffirmed a case where common sense was used to supply a missing element in a § 103 obviousness analysis. On June 26, 2020, the Federal Circuit issued a decision in B/E Aerospace, Inc. v. C&D Zodiac, Inc., Nos. 2019-1935, 2019-1936 (Fed. Cir. Jun. 26, 2020) (“B/E Aerospace”) affirming a Patent Trial and Appeal Board (“PTAB”) final written decision finding patent claims invalid in view of a combination of prior art and common sense.
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Motion to add willful infringement charge based entirely on post-suit activity is granted…because it is Unopposed
July 2, 2020 | Blog | By Adam Samansky, Peter Cuomo, Joe Rutkowski
On June 26, 2020, the U.S. District Court for the District of Delaware, in VLSI Tech. LLC. v. Intel Corp, No. 18-0966-CFC, denied VLSI’s motion for leave to amend to add claims for willful infringement of U.S. Patent Nos. 6,212,633 (the “’633 patent”) and 7,523,331 (“the ’331 Patent”) based on pre-suit activity but granted it as to alleged post-suit infringement (which Intel did not oppose).
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Shifting “Sands”: New Facts on the Ground Justify Institution of a Previously-Denied IPR
June 25, 2020 | Blog | By Michael Renaud, Adam Rizk, Daniel Weinger, Serge Subach
In a rare reversal, the Patent Trial and Appeal Board (“PTAB”) reassessed the Fintiv factors in a decision on a petition for rehearing of a previous decision denying institution of an inter partes review (“IPR”).
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The Federal Circuit Broadens Application of the Kessler Doctrine
June 23, 2020 | Blog | By Matthew Hurley
Last week, the Federal Circuit invoked the Kessler doctrine in ruling that a district court’s dismissal of the plaintiff’s patent infringement suit against Amazon barred the plaintiff’s subsequent lawsuits against Amazon and its customers in In Re PersonalWeb Technologies, Inc.
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USPTO Releases Final Rules on PTA Calculations in view of Supernus
June 23, 2020 | Blog | By Peter Corless
On June 16, 2020, the U.S. Patent and Trademark Office (USPTO) released final rules (the “Rules”) implementing changes to how Patent Term Adjustment (PTA) is calculated in certain circumstances in view of Supernus Pharms., Inc. v. Iancu, 913 F.3d 1351 (Fed. Cir. 2019).
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Are Design Patents Missing From Your IP Portfolio?
June 23, 2020 | Blog | By Michael Van Loy, Joshua Berk
A design patent protects the visual ornamental characteristics of an article, including consumer and industrial products, medical devices and related tools, sports equipment, jewelry, product packaging, and even web-based and mobile graphical user interfaces and icons.
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Second Circuit Declines to Decide if Human Skin Can Be a Tangible Medium of Expression under Copyright Law and Affirms Dismissal of Makeup Artist’s Lawsuit
June 22, 2020 | Blog | By Susan Neuberger Weller
In a recent decision from the Second Circuit, Judges Parker, Chin, and Carney side-stepped a novel question: whether human skin can be the kind of "tangible medium of expression" required for copyright protection. Instead, the court held that a photograph of a makeup artist’s application of a makeup design to a human “fixed” the design for purposes of copyright law and affirmed the district court’s dismissal of the appellant Mourabit’s unjust enrichment and unfair competition/misappropriation claims as preempted by the Copyright Act.
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AbbVie’s Enforcement of its ‘Patent Thicket’ For Humira Under the BPCIA Does Not Provide Cognizable Basis for an Antitrust Violation
June 18, 2020 | Blog | By Rich Gervase, Joseph Miller , Tinny Song
In a recent decision in In Re Humira (Adalimumab) Antitrust Litigation), No. 19-cv-1873, Judge Shah of the Northern District of Illinois dismissed a consolidated class action complaint filed by U.S. purchasers of AbbVie Inc.’s blockbuster biologic drug Humira alleging that AbbVie had prevented manufacturers of competing biosimilar drugs (“biosimilars”) from entering the U.S. market in violation of federal and state antitrust laws.
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PTAB Designates As Informative a Decision Instituting Post-Grant Review for a Design Patent Lacking Ornamentality
June 16, 2020 | Blog | By Brad M Scheller , Meena Seralathan
On June 11, 2020, the Patent Trial and Appeal Board (“PTAB”) designated as informative a July 26, 2019 institution decision granting post-grant review of a design patent for lacking ornamentality. In this ruling, the PTAB provides insight into how it analyzes the unpatentability of a design patent due to lack of ornamentality in post-grant proceedings at the institution stage.
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Arbitration of IP Disputes in a Post-COVID-19 World
June 2, 2020 | Blog | By Matthew Hurley, Michael Renaud, Nicholas Armington
The COVID-19 pandemic has caused individuals and companies alike to face the reality of a rapid economic downturn followed by a potentially slow recovery characterized by continued economic challenges.
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First Amendment May Protect Use of Trademarks As Artistic Expression
May 27, 2020 | Blog | By Susan Neuberger Weller
In a recent decision from the Southern District of New York, Judge George B. Daniels held that the strong First Amendment interests in protecting free artistic expression warranted summary judgment that Activision Blizzard’s use of Humvee vehicle models in the blockbuster Call of Duty videogames was not a violation of the Lanham Act.
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Federal Circuit Appeals Continue as Scheduled Without In-Person Arguments
May 19, 2020 | Blog | By Brad M Scheller , Jessica Perry
Yesterday the United States Court of Appeals for the Federal Circuit released modifications to court procedures, indicating that all in-person oral arguments are suspended until further notice.
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Better Early Than Never: PTAB Confirms Willingness to Deny Institution In Light of Advanced State of Parallel Litigation
May 18, 2020 | Blog | By Michael Renaud, Daniel Weinger, Serge Subach
The Patent Trial and Appeal Board (“PTAB”) recently sent a warning to alleged infringers not to wait for the one year deadline to file IPR petitions, or risk discretionary denial. On May 13, 2020, the PTAB exercised its discretion to deny institution of an inter partes review (“IPR”) petition filed by Apple due to the advanced state of a parallel district court litigation in the Western District of Texas.
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COVID-19: Prioritized Patent Application Examination and Patents 4 Partnerships
May 15, 2020 | Blog | By Peter Corless
The United States Patent and Trademark Office (USPTO) has recently launched two new initiatives to support COVID-19 innovations: 1) a COVID-19 Prioritized Examination Pilot Program, and 2) Patents 4 Partnerships that provides a searchable forum to list COVID-19 related published applications and patents available for licensing.
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