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First Amendment May Protect Use of Trademarks As Artistic Expression

May 27, 2020 | Blog | By Susan Neuberger Weller, Harold Laidlaw

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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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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The United States Supreme Court unanimously held this week that Lucky Brand was not precluded from mounting a new defense in its litigation with Marcel Fashions Group — despite having chosen not to bring up the same defense in a prior litigation.  This ruling clarifies the circumstances under which a defense can be precluded from a lawsuit.
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COVID-19: Prioritized Patent Application Examination and Patents 4 Partnerships

May 15, 2020 | Blog | By Peter Corless, Carolina Säve, Rui Jacques

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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Federal Circuit Upholds Application of Dedication-Disclosure Doctrine at the Pleading Stage

May 15, 2020 | Blog | By Thomas Wintner, Adam Samansky, Nana Liu

On May 8, 2020, the Court of Appeals for the Federal Circuit affirmed the District of Delaware’s application of the disclosure-dedication doctrine in granting a motion for judgment on the pleadings in Eagle Pharmaceuticals Inc. v. Slayback Pharma LLC, No. 19-1924. 
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Federal Circuit Narrows Availability for IPR Appeals Under Arthrex

May 14, 2020 | Blog | By Marc Morley, Jeff Giering

By recognizing a constitutional deficiency in the appointment of Patent Trial and Appeal Board (“PTAB”) judges, the Federal Circuit in Arthrex, Inc. v. Smith & Nephew, Inc., 941 F.3d 1320 (Fed. Cir. 2019) set the stage for numerous appeals by parties unhappy with a PTAB decision and seeking a do-over with a new panel. 
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After its recent ruling in Sisvel’s favor, Germany’s highest court on patent matters is expected to issue a highly favorable and detailed decision for standard-essential patent (SEP) owners seeking to prevent patent “hold-out” by unwilling licensees. 
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PTAB Presses Pause On All Arthrex Remands

May 12, 2020 | Blog | By William Meunier, Daniel Weinger, Vincent Ferraro, Matthew Galica

On Friday, May 1, 2020, Chief Administrative Patent Judge Scott R. Boalick of the Patent Trial and Appeal Board (“PTAB”) paused all activity in the significant number of PTAB cases remanded to it from the Federal Circuit under Arthrex (discussed here). 
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On May 5, 2020, the Patent Trial and Appeal Board (“PTAB”) designated one decision as precedential and removed the precedential designation on another. The newly-designated precedential opinion lays out factors that the PTAB considers when asked to exercise its discretion to deny institution in light of an imminent trial.
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Supreme Court Holds that States Cannot Copyright Annotated Versions of Their Statutes

April 29, 2020 | Blog | By Michael Graif, Meena Seralathan

On April 27, 2020, the Supreme Court held that annotations to legislative text, even if created by a private contracted party, are not copyrightable materials under 17 U.S.C. §101. Invoking the government edicts doctrine, the Court made explicit the notion that all members of government involved in lawmaking, including state legislators, are barred from being “authors” for purposes of copyright protection.
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Last week, the US Patent and Trademark Office (“USPTO”) released a report detailing its findings on how the U.S. Supreme Court decision in Alice Corp. v. CLS Bank International, as well as subsequent USPTO guidance on 35 U.S.C. § 101 rejections, has affected rates of, and variability between, office action rejections.
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Last week, the Federal Circuit, in a precedential decision, reinforced that an accused infringer can be a “prevailing party” for the purposes of seeking attorneys’ fees under 35 U.S.C. § 285 when it successfully invalidates the asserted patent at the Patent Trial and Appeal Board (“PTAB”). 
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Strategic Considerations for Obtaining a Foreign Filing License in China

April 27, 2020 | Blog | By Christina Sperry, Mark Hammond

As more U.S. businesses employ inventors abroad, the need for foreign filing licenses increases, especially if patent rights are first sought domestically.  Obtaining foreign filing licenses may present financial and linguistic obstacles, potentially jeopardizing the priority date of your application or patent rights within the foreign country. 
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Federal Circuit Finds IPRs Can Circumvent Assignor Estoppel

April 27, 2020 | Blog | By Daniel Weinger, Vincent Ferraro, Kara E. Grogan

On Wednesday, the Federal Circuit held that while assignor estoppel is applicable in district court proceedings, petitions for inter partes review continue to not be subject to the equitable remedy.  Assignor estoppel is an equitable doctrine based on the principle of fair dealing that prevents a party who divests a patent from later challenging the validity of that patent.
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How the CARES Act Affects Patent Related Deadlines

April 27, 2020 | Blog | By Lisa Adams, Nicholas Eadie

In accordance with the CARES (Coronavirus Aid, Relief, and Economic Security) Act, the USPTO has extended some patent-related deadlines.
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SCOTUS holds that PTAB Time-Bar Determinations are Not Reviewable on Appeal

April 22, 2020 | Blog | By Michael Newman, Serge Subach, Rithika Kulathila

On Monday, in Thryv, Inc. v. Click-to-Cal Technologies, the Supreme Court held that § 315(b) time-bar determinations are not subject to judicial review. In this 7-2 decision penned by Justice Ginsburg, with Justices Gorsuch and Sotomayor dissenting, the Court determined that time-bar determinations are unreviewable because they are “closely tied” to the Director’s decision to institute an inter partes review (IPR).
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Last week, the Patent Trial and Appeal Board (“PTAB”) designated a January 24, 2020 decision, finding objective indicia of nonobviousness, such as evidence of long-felt need and industry praise, saved a patent owner’s amended claims from invalidation, as precedential.
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Informative Whirlpool Decision Reaffirms Importance of Secondary Considerations

April 21, 2020 | Blog | By Brad M Scheller, Courtney Herndon

Recently on April 14, 2020, the Patent Trial and Appeal Board (“Board”) designated Ex parte Whirlpool Corp., Appeal 2013-008232 (Oct. 30, 2013) “Informative”.  In Whirlpool, the Board reversed the Examiner’s obviousness rejection of claims 1, 4, 6, and 8 of U.S. Patent No. 6,082,130 (“the ’130 patent”), finding that the Patent Owner, Whirlpool Corporation, established a nexus between its objective evidence of non-obviousness and the claimed invention. 
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The coronavirus pandemic has created profound changes to how many Americans do their work, with an outsized number now working from home. This arrangement, while necessary given social distancing requirements and the stay-at-home advisories in many states, has created a marked increase to the threat of trade secret misappropriation.
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