U.S. Supreme Court to Review Copyrightability of Privately-Produced Annotated State Statutory Compilations
June 28, 2019 | Blog | By Susan Neuberger Weller, Harold Laidlaw
Earlier this week, the Supreme Court granted the State of Georgia’s petition to review the Eleventh Circuit’s decision in Code Revision Comm'n v. Public.Resource.Org, Inc., 906 F.3d 1229 (11th Cir. 2018). In that case, the Eleventh Circuit held that the privately-compiled but officially-sanctioned and adopted Official Code of Georgia Annotated (OCGA) was not protected by copyright under the “government edicts” doctrine.
FUCT? You Heard That Right: Refusing to Register “Scandalous” and “Immoral” Trademarks is Unconstitutional
June 27, 2019 | Blog | By Susan Neuberger Weller
The U.S. Supreme Court, in a split decision, held that the federal ban on registering “scandalous” and “immoral” trademarks is an unconstitutional violation of free speech under the First Amendment of the US Constitution. The trademark FUCT is what was at issue in Iancu v. Brunetti, case number 18-302 (June 24, 2019). Although the mark had been in use on clothing for many years, it was never accepted for registration by the US Trademark Office on grounds that it violated the ban on registration of “scandalous” and “immoral” marks under Section 1052(a) of the Lanham Act.
June 27, 2019 | Blog | By Kathleen Carr, Joe Rutkowski
On June 17, 2019, the United States District Court for the District of Delaware, in Novartis Pharmaceuticals Corp. v. Accord Healthcare Inc., et al., No. 18-cv-01043, held that venue was not proper in Delaware over Mylan Pharmaceuticals Inc. (“MPI”) in connection with Novartis’s Hatch-Waxman patent infringement claim arising from MPI’s submission of an Abbreviated New Drug Application (“ANDA”) seeking approval to market a generic version of the drug, Gilenya® (fingolimod).
Supreme Court Declines to Address the Question of Article III Standing to Appeal a Final Written Decision from the PTAB
June 20, 2019 | Blog | By Daniel Weinger, Tiffany Knapp
This week, the Supreme Court left open the question of Article III standing with regards to appealing a final written decision from the Patent Trial and Appeals Board (“PTAB”) that is favorable to the patent owner. On Monday, the Supreme Court denied two petitions for certiorari that sought to appeal final written decisions (“FWD”) adverse to the petitioner in an inter partes review proceeding, in that the PTAB declines to cancel all claims under review.
Criminal Statute for Organized Crime Now Available to Combat Trade Secret Theft – But What is an Act of Trade Secret Theft under Civil RICO?
June 18, 2019 | Blog | By Michael Renaud, Nicholas Armington
The DTSA standing alone provides significant recourse for trade secret owners who have fallen victim to trade secret theft. Apart from the protection provided by the DTSA itself, however, the statute also allows trade secret owners to leverage the Racketeer Influence and Corrupt Organizations Act (RICO), a statute passed to address organized crime, to combat trade secret misappropriation. The DTSA does this by making trade secret theft qualify as a predicate act sufficient to show racketeering activity under RICO. This fairly new tool gives trade secret owners another potent option when confronting trade secret theft.
Understanding the USPTO’s Interpretation of 35 U.S.C. § 112 for Computer-Implemented Functional Claim Limitations
June 12, 2019 | Blog | By Christina Sperry, Paul Brockland
Patent practitioners, inventors, in-house counsel, and patent examiners alike have been clamoring for more guidance on computer-implemented functional claim limitations invoking § 112(f) since the Federal Circuit’s en banc Williamson v. Citrix decision in 2015. To help answer some of those pleas, the U.S. Patent and Trademark Office (USPTO) published a Federal Register notice on January 7, 2019 to address issues under 35 USC § 112.
Navigating the Legalization of Hemp under the 2018 Farm Bill Involves Changes to the Issuance of Federal Trademarks in the Cannabis Industry
June 11, 2019 | Blog | By Susan Neuberger Weller, Kathryn Lafferty Ignash
Legalizing “hemp” under the Agricultural Improvement Act of 2018 (2018 Farm Bill) has triggered an important change for the examination of federal trademark applications concerning cannabis and cannabis-derived goods and services. In response to the Bill’s enactment on December 20, 2018, the United States Patent and Trademark Office (USPTO) issued a new examination guide to clarify its examination procedures involving hemp goods and services. For businesses in the cannabis industry, the examination guide (recently issued on May 2, 2019) will impact the viability of federal trademark applications filed on or after December 20, 2018 that were once previously barred.
June 10, 2019 | Blog | By Michael Renaud, Asa Kling, Marguerite McConihe, Derek Constantine
The intersection of artificial intelligence (AI) and intellectual property invokes fascinating theoretical questions. With these questions, however, come significant practical issues that businesses, legal practitioners, and governments need to address proactively. Israel is embracing the challenge.
Score This One in Favor of Standard-Essential Patent Owners: Recent Decision Makes Satisfying FRAND Obligations Easier
June 5, 2019 | Blog | By Michael Renaud, James Wodarski, Aarti Shah, Matthew Galica
A recent decision in the Eastern District of Texas should provide standard-essential patent (“SEP”) owners with more clarity and optimism when negotiating SEP licenses. Coming on the heels of Judge Koh’s decision in the FTC’s dispute with Qualcomm, Judge Gilstrap found Ericsson to have satisfied its fair, reasonable and non-discriminatory (“FRAND”) obligations when negotiating with HTC due in large part to a finding that it had negotiated in good faith.
June 3, 2019 | Blog | By Aarti Shah, Kara E. Grogan
On April 26, 2019, Administrative Law Judge (“ALJ”) Lord clearly stated in Certain Intraoral Scanner and Related Hardware and Software that the International Trade Commission’s (“ITC”) jurisdictional authority extends to accused infringers whose activities have “some nexus” to an element of section 337. ALJ Lord found that involvement in training and supporting resellers, distributors and end users in the infringing goods in the United States was sufficient to put that respondent under the broad reach of section 337, even if they did not import or directly sell the products.
May 30, 2019 | Blog | By Aarti Shah, Rithika Kulathila
In Amarin Pharma, Inc. v. Int’l Trade Comm’n (18-1247), the Federal Circuit affirmed the International Trade Commission’s (“ITC”) finding that Amarin’s false advertising claim under § 43(a) of the Lanham Act was precluded by the Federal Food, Drug, and Cosmetic Act (“FDCA”) because these claims require the FDA’s guidance on whether possible non-compliance of the provision is a violation of the FDCA. The court also found that the Commission may decline to institute an investigation where there is no cognizable claim under § 337.
Claim Construction of “Customary and Ordinary” Meaning Does Not Justify Amendment of Noninfringement and Invalidity Contentions
May 29, 2019 | Blog | By Andrew DeVoogd, Courtney Herndon
Recently, in a patent infringement action pending in the Eastern District of Michigan, Webasto Thermo & Comfort N. Am., Inc. v. BesTop, Inc., No. 2:16-cv-13456, Order No. 209 (E.D. Mich. May 20, 2019) (Borman, J.), the court overruled defendant BesTop’s objections to the Special Master’s recommendation to grant plaintiff, Webasto’s, motion to strike BesTop’s second amended noninfringement and invalidity contentions.
May 24, 2019 | Blog | By Daniel Weinger, Will Perkins, Kristina Cary, Serge Subach
Services play a large role in today’s economy, and it is important to be mindful of how certain pitfalls that apply to product-based intellectual property rights also apply to method or process-based intellectual property (“IP”) rights. For example, the “on-sale bar” invalidates a patent on a product where a sale or offer to sell the product occurred more than a year prior to filing for a patent.
May 24, 2019 | Blog | By Michael Renaud, Bruce Sokler, Rich Gervase, Harold Laidlaw
Just when observers thought Qualcomm could celebrate its successful litigation with Apple another decision has come down which could have major implications for Qualcomm’s business going forward.
May 21, 2019 | Blog | By Aarti Shah, Kara E. Grogan
In her April 16, 2019 Public Interest Findings, Administrative Law Judge (“ALJ”) McNamara decisively stated that antitrust issues disguised as competitive conditions arguments are not a factor in the International Trade Commission (“ITC”) proceeding between Apple and Qualcomm. See Mobile Electronic Devices II, Inv. No. 337-TA-1093, Analysis and Findings with Respect to the Public Interest, and Recommendation on Remedy and Bond, at 4 (April 16, 2019).
May 20, 2019 | Blog | By Marc Morley, Melissa Brayman
Andrei Iancu, the Under Secretary of Commerce for Intellectual Property and Director of the USPTO, believes that the U.S. needs a strong patent system in order to excel and thrive in the global economy. He has made strengthening the U.S. patent system a core part of his mission responsibilities. Director Iancu has been travelling across the country and speaking with various patent stakeholders. As part of this effort, he met with BIOCOM’s Board of Directors and Intellectual Property Committee in San Diego on April 18, 2019.
May 15, 2019 | Blog | By Ken Jenkins, Jeff Giering
We previously reported here on a Patent Trial and Appeal Board (PTAB) decision involving a case in which a patent eligibility rejection was overcome by replacing a “comparing” step with a recitation that the sample is from a particular patient population. However, because the eligibility rejection was dropped by the examiner before appeal, the PTAB did not revisit the issue.
District Court of Delaware awards an ongoing royalty that applies not just to adjudicated products but also to non-adjudicated products that are “not colorably different.”
May 13, 2019 | Blog | By Michael Renaud, Sandra Badin, Rithika Kulathila
Recently, in Godo Kaisha IP Bridge 1 v. TCL Commc’n Tech. Holdings Ltd., the Delaware District Court awarded the prevailing plaintiff in a patent infringement suit an ongoing royalty that covers not only the products adjudicated to infringe but also non-adjudicated products that were “not colorably different” from the adjudicated products. The court noted that the patent claims asserted by the plaintiff, IP Bridge, were found to be essential to the LTE standard because LTE phones do not operate on the LTE network without infringing the asserted claims.
May 7, 2019 | Blog | By Andrew DeVoogd, Rithika Kulathila
On April 25, 2019, in Int’l Designs Corp., LLC, et. al. v. Hair Art Int’l, Inc., Judge George H. Wu in the Central District of California denied Hair Art’s motion for attorneys’ fees under 35 U.S.C. § 285. Judge Wu concluded that, based on an analysis of the totality of the circumstances, “[t]his case was certainly ‘exceptional,’ but it was exceptional in that both parties made litigation choices leading to a significant waste of party and judicial resources.” (Emphasis added.)
Dueling Declaratory Judgment Suits Result in a Dismissal and Boomerang Transfer Back to the First-filed Forum Under TC Heartland
April 24, 2019 | Blog | By Adam Samansky, Peter Cuomo, Joe Rutkowski
On April 17, 2019, Judge Gilstrap of the United States District Court for the Eastern District of Texas, in Apicore v. Beloteca, No. 19-cv-00077, held that while the court could exercise personal jurisdiction over a generic drug manufacturer in connection with the patentee’s action seeking a declaratory judgment of noninfringement, venue was not appropriate in the Eastern District of Texas under the applicable patent venue statute, 28 U.S.C. § 1400(b).
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