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Attorney Fees Denied by Federal Circuit Where Case Was Voluntarily Dismissed Without Prejudice

April 16, 2020 | Blog | By Daniel Weinger, Vincent Ferraro, Meena Seralathan

In an April 13, 2020, decision, the Federal Circuit held that neither a voluntary dismissal under Federal Rule of Civil Procedure 41(a)(1)(A)(i), nor a stay of a patent lawsuit pending the results of a patent reexamination, constitute a final judicial decision for the purposes of recovery of legal fees under 35 U.S.C. § 285. 
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The Federal Circuit recently held in a precedential ruling that a “color mark” comprising a multiple-color pattern is capable of being inherently distinctive and of registration on the Principal Register, so long as it appears on product packaging rather than on a product itself.
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The Precedential Opinion Panel (“POP”) of the U.S. Patent Trial and Appeal Board (“Board”) recently rejected a rehearing request from a petitioner where institution was denied because of the likelihood that a district court trial would occur prior to a final written decision. 
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On Thursday, the Federal Circuit ruled that the Patent Trial and Appeal Board (“PTAB”) must give the parties proper notice if considering a sua sponte theory of unpatentability in relation to a motion to amend.
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Celgene v. Sun Pharma Global: Satisfying Subject Matter Jurisdiction Under § 271(e)(2)

April 13, 2020 | Blog | By Adam Samansky, Peter Cuomo, Joe Rutkowski

On April 6, 2020, the U.S. District Court for the District of New Jersey, in Celgene Corp. v. Sun Pharma Global FZE, No. 19-cv-10099, denied Sun’s motion to dismiss Celgene’s claims that Sun’s generic Revlimid® (lenalidomide) Abbreviated New Drug Application (ANDA) product infringes three patents not listed in the Orange Book for Revlimid® and for which Sun did not make any Paragraph IV certifications.
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Trademark due diligence is the process of analyzing information concerning a company's trademark portfolio and assessing the risks, exposures, and benefits associated with a proposed transaction. In an acquisition, both the buyer and the seller need to ensure that they each are fully informed as to the status of the trademarks at issue.
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How to Maintain Your Trademark Rights When Your Business is Closed

April 8, 2020 | Blog | By Susan Neuberger Weller

Trademark rights in the US are based on use of a mark not on registration. Failure to use your mark on a product or to offer a service to the public can result in an abandonment of your trademark rights and an inability to maintain an existing registration.
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Adding Initials to a Surname Does Not Necessarily Create a Protected Trademark

March 26, 2020 | Blog | By Susan Neuberger Weller, Harold Laidlaw

In a recent precedential decision, the TTAB held that the addition of one initial —or possibly even more than one initial—in front of a surname does not necessarily create the impression of a personal name. Rather, the Board held that a surname plus one or more initials may remain “primarily a surname” and, as such, cannot be registered on the Principal Register without proof of acquired distinctiveness.
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Adding another layer of complexity to sensitively marketing in the COVID-19 environment, YouTube announced on March 11 that it will permit certain creators to monetize (i.e., enable ads on) content relating to coronavirus.  Companies and brands should review their approach in this pandemic, including refining YouTube content exclusion parameters and policing their ad environments, if they do not wish to risk association with potentially undesirable videos. 
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On Tuesday, March 24, 2020, the Patent Trial and Appeal Board (“PTAB”) designated two inter partes review (“IPR”) decisions as precedential and one as informative. These decisions concern PTAB’s discretion to deny institution of an IPR under 35 U.S.C. § 325(d) and 314(a). 
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2nd Circuit Affirms 5Pointz Whitewashing Violated Visual Artists Rights Act

March 25, 2020 | Blog | By Susan Neuberger Weller, Harold Laidlaw

The Second Circuit recently affirmed that a developer’s whitewashing of street art painted at the “5Pointz” warehouse complex in Long Island City was a violation of the Visual Artists Rights Act (“VARA,” codified at 17 U.S.C. § 106A).
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Federal Circuit Denies En Banc Rehearing of Panel Decision in Arthrex, Which Held PTAB Appointments Were Unconstitutional

March 25, 2020 | Blog | By Daniel Weinger, Michael Newman, Vincent Ferraro, Matthew Galica

This week the en banc Federal Circuit declined to revisit a panel ruling that found the appointment of Administrative Patent Judges (“APJs”) of the Patent Trial and Appeal Board (“PTAB”) violates the Appointments Clause of the Constitution.  This decision is notable for at least two reasons. First, it declined to review or disturb the panel’s conclusion and its remedy—vacatur and remand of PTAB decisions made by unconstitutionally appointed APJs. Second, four of the Federal Circuit judges dissented, disagreeing with the panel’s finding and saying that its corresponding remedy improperly rewrites the statute contrary to Congressional intent.
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Earlier this month, a Northern District of Illinois jury returned a verdict in favor of Motorola for over $700 million after a trial in which Motorola alleged that Hytera hired three engineers away from Motorola’s Malaysian office, and that those engineers stole and brought with them thousands of Motorola’s trade secret technical documents that Hytera used to develop a state-of-the-art digital radio that was functionally indistinguishable from Motorola’s.
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The Masters’ Green Jacket is Now a Registered Trademark

March 10, 2020 | Blog | By Susan Neuberger Weller

Since 1949, a green jacket has been awarded to the winner of the Masters Tournament, one of golf’s four major championships.
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The Court of Appeals for the Federal Circuit ruled in February that the Patent Trial and Appeal Board (PTAB) cannot cancel claims for indefiniteness in an inter partes review (IPR) proceeding. The case is Samsung Electronics America, Inc., v. Prisua Engineering Corp., case number 19-1169, in the U.S. Court of Appeals for the Federal Circuit.
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In a February 19, 2020 decision the Federal Circuit held that a patentee does not escape 35 U.S.C. § 287’s marking requirement merely by ceasing sales of the practicing product.  Instead, the Federal Circuit held that once a patentee (or its licensees) sell articles that practice the patent, the obligation to mark in order to obtain pre-suit damages continues regardless of whether sales of the product in question cease. 
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Infringement Contentions: Fair Notice?

February 18, 2020 | Blog | By Michael Renaud, Adam Rizk, Catherine Xu

Some respondents at the ITC have taken advantage of using infringement contentions as a procedural tool to deny patent owners from getting their day in court.  In some investigations, respondents have gone so far as to delay their own production of discovery until after the infringement contention deadline, then claim lack of fair notice when the patent owner uses the late discovery in its expert report.
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An Informative PTAB Decision on Patent Eligibility under 35 U.S.C. § 101

January 30, 2020 | Blog | By Christina Sperry, Justin J. Leisey

The U.S. Patent Trial and Appeal Board (“PTAB”) recently designated its decision in Ex Parte HANNUN (Appeal 2018-003323) (“HANNUN”) as being informative regarding the application of the latest 2019 revised guidance on patent-eligible subject matter. 
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In our first blog in this multi-part series, we explored key considerations for protecting artificial intelligence (“AI”) inventions in biotech and synthetic biology. In this part 2 of the series, we will examine some key considerations and hurdles in patenting machine learning-based biotech or synthetic biology inventions.
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Update on Federal Register Notice on Artificial Intelligence (AI) Patent Issues

January 21, 2020 | Blog | By Michael Renaud, Marc Morley, Paul Brockland

As noted in our previous post, the U.S. Patent and Trademark Office (USPTO) published a request for comments for a list of questions regarding Artificial Intelligence (AI) Patent Issues in the Federal Register on August 21, 2019. While the comment period has closed, a few developments regarding AI patent issues have occurred that are particularly relevant.
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