Case Law Update
2017-03-21  Supreme Court Eliminates Laches Defense in Patent Cases
The U.S. Supreme Court issued a decisive ruling today in SCA Hygiene Products Aktiebolag v. First Quality Baby Products, LLC (No. 15-927), eliminating the defense of laches in patent cases. This ruling continues the Supreme Court’s recent trend of overturning Federal Circuit precedent.

2016-06-21  Supreme Court: 1) Upholds Use of Broadest Reasonable Interpretation during Inter Partes Review; and 2) Affirms that Inter Partes Review Institution Decisions are Not Appealable
On June 20, 2016, the Supreme Court issued a long awaited opinion in Cuozzo Speed Technologies, LLC v. Lee, 579 U. S. ____ (2016). In its opinion, the Supreme Court squarely sided with the United States Patent and Trademark Office, approving of the Patent Trial and Appeal Board’s (“PTAB”) use of the broadest reasonable interpretation to interpret patent claims during inter partes reviews (“IPR”) The Supreme Court also affirmed that the PTAB’s decision to institute an IPR is not appealable, even where the PTAB considers prior art or arguments outside of the original IPR petition in deciding to institute an IPR. The Supreme Court unanimously decided the broadest reasonable interpretation issue, while a 6-2 vote supported the appealability issue.

2016-06-21  Supreme Court Overrules Federal Circuit’s Seagate Test for Enhanced Damages
In a combined opinion for two cases, Halo Electronics, Inc. v. Pulse Electronics, Inc. (No. 14–1513) and Stryker Corp. v. Zimmer, Inc.(No. 14–1520), a unanimous Supreme Court rejected the two-part test for awarding enhanced damages under 35 U.S.C. § 284. The Federal Circuit had pronounced this test nearly a decade ago in In re Seagate Technology, LLC, 497 F. 3d 1360 (Fed. Cir. 2007) (en banc). Finding the Seagate test inconsistent with the statute, the Supreme Court broadly endorsed the free exercise of discretion by district courts in deciding whether an enhanced damages award is appropriate.

2015-05-29  An Unintended Consequence of Transferring All Substantial Rights in a Patent:
In a recent decision, Azure Networks LLC v. CSR PLC (hereafter “Azure Networks”), the Federal Circuit held that the title owner of a patent may not be joined as a co-plaintiff in a patent infringement suit for purposes of standing if the title owner has transferred all substantial rights in the patent. 771 F.3d 1336 (Fed. Cir. 2014).

2015-01-21  Supreme Court Issues First Trademark Ruling In Ten Years, Holding That Trademark Tacking Is A Factual Determination
The U.S. Supreme Court ruled on a substantive trademark matter for the first time in ten years, holding in Hana Financial, Inc. v. Hana Bank (No. 13-1211) that trademark tacking is a factual determination properly reserved for the jury (the fact finder). This ruling resolved a split in the Circuits regarding who properly decides trademark tacking, the judge or jury.

2015-01-20  Supreme Court Mandates Deference to District Court Factual Findings When Reviewing Claim Construction
The U.S. Supreme Court issued a landmark decision today in Teva Pharmaceuticals USA, Inc. v. Sandoz, Inc. (No. 13-854), altering the standard used by the Federal Circuit since 1998 to review claim construction determinations on appeal. This ruling is the latest in a series of recent Supreme Court decisions reversing practices previously established by the Federal Circuit.

2014-06-19  Supreme Court's Alice Decision Strikes a Blow Against Patent Trolls in Confirming that Adding the Words “Apply It With A Computer” Does Not Make an Abstract Idea Patentable
A unanimous Supreme Court today ruled that software patents based on abstract ideas that merely require generic computer implementation are ineligible for patent protection, affirming the U.S. Court of Appeals for the Federal Circuit’s recent en banc decision in Alice Corp. v. CLS Bank Int’l. This ruling does not render all software-related inventions ineligible for patent protection, but does call into question the validity of countless number of patents asserted by so called patent “trolls” against U.S. and foreign businesses.

2014-06-02  Unanimous Supreme Court Reverses The Federal Circuit on Patent Definiteness Standard
The U.S. Supreme Court issued a unanimous decision today in Nautilus, Inc. v. Biosig Instruments, Inc. (No. 13-369), a closely watched case involving the statutory requirement of distinct patent claiming. This is the latest in a series of recent cases in which the Supreme Court has overruled the Federal Circuit on critical patent issues.

2014-06-02  Liability for Induced Infringement Requires a Direct Infringer
Today, a unanimous Supreme Court reversed the Federal Circuit and held that induced infringement of a method claim cannot be found in the absence of direct infringement by a single party under §271(a). Limelight Networks, Inc. v. Akamai Technologies, Inc., 572 U.S. ___ (June 2, 2014).

2014-05-07  Pre-empting the Supreme Court? The Federal Circuit Approves a Test for Indefiniteness at the USPTO
Indefiniteness is evaluated under a different standard for an issued patent claim than for a pre-issuance claim. On May 6, the Federal Circuit issued its opinion in In re Packard.

2014-04-30  Supreme Court Takes A Stand Against Bad-Faith Litigants
As the public dialogue about how to deal with patent trolls occupies both the White House and Congress, the Supreme Court today took the initiative in addressing the issue.

2014-01-17  Federal Circuit Makes Important Change in Patent Term Adjustment Determinations
In an opinion issued on January 15, 2014 in Novartis AG v. Lee (Fed. Cir., 2014), the Federal Circuit changed how patent term adjustment (PTA) determinations are to be calculated. Several months of additional PTA may now be added to a patent term if a Request for Continued Examination (RCE) was filed during prosecution. Specifically, the time from allowance to issuance is now awarded to the patentee as part of a PTA. Patent holders with affected patents may wish to consider pursuing additional PTA in a Request for Reconsideration filed with the USPTO, or in a district court proceeding, if the deadline for pursuing such an action has not passed.

2013-05-13  Supreme Court Rules in Favor of Monsanto
Today’s unanimous ruling by the Supreme Court sends a message to would be copiers of self-replicating products, such as Monsanto’s genetically modified, Roundup Ready soybean seeds – and that message is -- tread carefully.

2013-05-02  Determining Jurisdiction for Patent Law Malpractice Cases
As an intellectual property attorney, the federal jurisdiction of patent-related cases always seemed clear to me. 28 U.S.C. 1338 provides that: "The district courts shall have original jurisdiction of any civil action arising under any act of Congress relating to patents."

2013-04-03  Supreme Court Holds Copyright "First Sale" Rules Cover Sales Made in Foreign Countries
On March 19, 2013, the U.S. Supreme Court issued a 6-3 decision holding that the "first sale" doctrine applies to copies of a copyrighted work lawfully made abroad. As a result of this decision, it is possible to purchase a copyrighted work, such as a book, in another country and resell that book in the U.S. without infringing the copyright.

2013-01-19  Playing With Fire: Bad Things Happen When Patent Applications Are Not Filed Correctly
When things go “bad” in the world of patent applications, they can go really, REALLY bad. Landmark Screens, LLC, v. Morgan, Lewis & Bockius, LLP and Thomas D. Kohler is a chilling example of what happens when a U.S. patent application is not filed correctly.

2012-09-13  Direct Infringement of Method Claims by Single Entity No Longer Necessary for Inducement Liability
On August 31, 2012, the Court of Appeals for the Federal Circuit issued an en banc decision that inducement to infringe a method claim no longer requires proof that a “single entity” is liable for direct infringement.

2012-07-12  Computer-implemented Business Method Found Patentable By Federal Circuit
In CLS Bank International v. Alice Corporation Pty., decided on July 9, 2012, a split federal circuit panel addressed patent eligibility under 35 U.S.C. § 101, and in particular what is an “abstract idea,” as it relates to computer-implemented inventions.

2012-03-29  The MAYO Test: Impact on Diagnosis, Personalized Medicine and Beyond
With a unanimous decision issued on March 20, 2012 in Mayo v. Prometheus Laboratories, the U.S. Supreme Court invalidated the process claims of Prometheus’ two patents as not patent eligible based on the finding that the steps in the claimed processes apart from the natural law inherent in the definition of the invention “involve [only] well-understood, routine, conventional activity previously engaged in by researchers in the field.”

2012-01-30  Supreme Court Upholds “Restored” Copyrights for Non-U.S.-Originated Works
The U.S. Supreme Court’s 6-2 decision in Golan v. Holder on January 18, 2012, confirmed that owners of certain copyrighted works authored outside of the United States can continue to enjoy restored protection under U.S. Copyright law, despite such works having been in the public domain prior to 1994.

2012-01-11  New Jersey Enacts Trade Secret Act
On Monday, January 9, New Jersey joined the 46 other states that have adopted some form of the Uniform Trade Secrets Act.

2011-09-23  Federal Circuit: A Patent License is Presumed to Include Continuations of the Licensed Patent
On July 8, 2011, the Federal Circuit in General Protecht Group v. Leviton Mfg. held that a patent license will be presumed to include an implied license under any patent granted on an application which is a continuation of a patent expressly included in the license agreement. This presumption can, however, be overcome by including in the license agreement a “clear indication of mutual intent to the contrary.”

2011-09-21  Brand Owner Alert! Only a Limited Time Remains to Prevent Others from Registering [Your-Brand].xxx
The Sunrise period for registration of .XXX domain names is open now through October 28, 2011. Brand owners who wish to prevent a sexually-explicit adult entertainment provider from registering [YOUR_BRAND].xxx, should take steps now to secure a blocking registration during the Sunrise period. The Sunrise Period has two tracks: Sunrise A and Sunrise B.

2011-09-06  Enactment of America Invents Act Results in Significant Changes to Post-Grant Patent Reconsideration Options
One of the biggest impacts of the America Invents Act, which is expected to be passed in the near future following the favorable cloture vote in the Senate on September 6th, will result from new or modified procedures for submitting patent validity questions back to the United States Patent and Trademark Office (PTO) after the PTO has granted the patent. Although much of the effect of these new procedures will generally not be felt for at least 12 months from enactment (i.e., one year from when the President signs the bill into law, which is expected by the end of September), certain changes will immediately result.

2011-08-15  International Trade Commission Clarifies Section 337's Domestic Industry Requirement for Patent Licensing Activities.
The availability of an injunctive remedy as a matter of right to a prevailing complainant in a Section 337 action has made the International Trademark Commission ("ITC") an extremely desirable venue in the wake of eBay v. MercExchange

2011-08-01  Isolated DNA Remains Patentable Subject Matter (For Now)
Much has been on the line for the biotechnology industry ever since the highly publicized "Myriad case" in 2010 when New York District Court Judge Robert W. Sweet held that isolated DNA was not patentable subject matter.

2011-06-27  Supreme Court to Review Prometheus’s Diagnostic Method Patent
With its recent grant of Certiorari in Prometheus Laboratories v. Mayo Collaborative Services, the Supreme Court has again agreed to consider the patent eligibility of diagnostic methods.

The Supreme Court unanimously affirmed the Federal Circuit’s judgment by upholding a clear and convincing standard for proving a patent invalid under 35 U.S.C. § 282, whether or not the evidence had been considered by the patent examiner.

In an 8-1 decision, the Supreme Court affirmed the Federal Circuit's judgment in Global-Tech v. SEB, holding that induced infringement under §271(b) requires knowledge that the induced acts constitute patent infringement, and that knowledge element can be met by a showing of "willful blindness." The Court's opinions are attached. Only the majority opinion, which is the holding of the Court, is summarized below.

2011-05-27  THERASENSE v. BECTON
The Federal Circuit has changed the rules governing the patent infringement defense of inequitable conduct, or as it is sometimes called “fraud on the patent office.” Most importantly, it has elevated the standards, so that it will be more difficult to prove both the intent and the materiality required for this defense or claim to succeed. The main points of the court’s holding are outlined below. Because this area of the law is so contentious and so important, it is likely that the Supreme Court will be asked to review this case.

2011-03-14  Supreme Court of Pennsylvania Expands Attorney-Client Privilege to Protect both Client-to-Attorney Communications and Attorney-to-Client Communications
On February 23, the Supreme Court of Pennsylvania, held in a landmark 5-2 decision that Pennsylvania’s attorney-client privilege operates in a two-way fashion, protecting confidential client-to-attorney and attorney-to-client communications made for the purpose of obtaining or providing professional legal advice rather than continuing with protections that required courts to review attorney-to-client communications for possible information provided by the client.

2011-02-15  U.S. Courts Can Provide Discovery To Foreign Proceedings,
Two recent decision by U.S. appellate courts have significantly expanded the availability of U.S. judicial assistance in aid of international proceedings.

2010-12-15  Federal Circuit Props Open Door for Computer Related Inventions and Business Methods in Wake of Supreme Court Bilski Decision
In Research Corp. Technologies ("RCT") v. Microsoft Corp. (Fed. Cir. 2010), the Federal Circuit provides guidance for determining whether a process is eligible for patent protection under 35 U.S.C. §101.

2010-08-02  Bilski: Where do we go from here?
On Tuesday, July 27, the USPTO published its Interim Guidance for Determining Subject Matter Eligibility for Process Claims in view of Bilski v. Kappos 130 S. Ct. 3218 (2010).

2010-07-29  Bimbo Bakeries USA, Inc. v. Botticella
Third Circuit Clarifies Pennsylvania Trade Secret Law for Departing Executive

2010-06-28  Supreme Court Rules On Patent Eligibility Of Processes; Business Method Patents Survive Review - But Bilski Decision Affirmed
The Supreme Court's long-awaited decision on the patentability of processes, generally, and business methods, more particularly, issued on June 28, 2010.

2010-05-11  Avoid the Land Rush: Trademark Owners Have Priority for .CO Domain Name Registration Through June 10
The .CO top level domain-name (TLD) is currently in its "Sunrise Period" through June 10.

2010-03-23  The Federal Circuit confirms in the precedential decision Ariad Pharmaceuticals Inc. v. Eli Lilly and Company, that the written description requirement of 35 U.S.C. § 112, first paragraph is here to stay.
On March 22, 2010, the Federal Circuit, en banc, decided that 35 U.S.C. § 112, first paragraph, contains separate written description and enablement requirements; the first to describe the invention and the second to describe the manner and process of making and using the invention.

2010-02-26  The Forest Group, Inc. v. Bon Tool Company
The High Stakes of False Patent Marking

2010-01-28  Recent Changes to the Calculation of Patent Term Adjustment and the General Hospital Cliffhanger
In Wyeth v. Kappos, the Court of Appeals for the Federal Circuit confirmed that the U.S. Patent and Trademark Office (USPTO) misconstrued the patent term statute 35 U.S.C. § 154(b)(2)(A) since at least 2004, and, as a result, denied countless patentees a portion of the patent term entitled to them.

2010-01-07  Federal Circuit Clarifies the Standard for Determining Design Patent Validity in International Seaway
On December 17, 2009, the Federal Circuit clarified the standard for determining the validity of design patents.

2009-12-21  In re Nintendo Co., Ltd and Nintendo of America, Inc.
Federal Circuit to Eastern District of Texas: Grant Motions to Transfer

2009-09-16  Prometheus Labs, Inc. v. Mayo Collaborative Services
Victory For Personalized Medicine From The Federal Circuit

2009-08-31  The Federal Circuit Overturns Relaxed Standard For Fraud Established By The TTAB In Medinol
On August 31, 2009, the United States Court of Appeals for the Federal Circuit reversed a finding of the Trademark Trial and Appeal Board (TTAB) and held that “a trademark is obtained fraudulently under the Lanham Act only if the applicant or registrant knowingly made a false, material representation with the intent to deceive the PTO.”

2009-08-21  Cardiac Pacemakers, Inc. v. St. Jude Medical, Inc.
Federal Circuit Limits Extraterritorial Effect of Method Patents

2009-05-20  Abbott Labs. v. Sandoz, Inc. (Also deciding Lupin Ltd. V. Abbott Labs.)
Scripps Overruled: Infringement of Product-By-Process Claim Requires Practicing The Process

2009-04-09  Trademark Update
Before May 1 Is The Best Time To Apply For A European Community Trade Mark Registration

2009-04-06  In Re Kubin
The Federal Circuit Strikes a Blow to the Pharmaceutical and Biotechnology Industries

2009-03-31  The PTO Rules - For Now
Court of Appeals Finds USPTO Rules Procedural And Remands To District Court

2009-03-06  Patent Reform Legislation
Congress Again Seems Poised to Attempt a Major Revision of U.S. Patent Law

2008-11-25  Trademark Owners Alert
Sunrise Period Approaching for .tel

2008-11-12  In Re Bilski
How to Protect Information Age Inventions?

2008-10-20  Broadcom Corp. v. Qualcomm Inc.
Further Reason to Obtain Opinions-of-Counsel

2008-10-16  Symbian Ltd. v. Comptroller General of Patents
UK Court of Appeals Eases Restrictions Against Software Patents in the UK

2008-09-25  In Re Swanson
Reinvigorating Reexaminations

2008-06-11  Quanta Computer v. LG Electronics
A New and Exhausting Dilemma for Patent Owners

2008-03-27  Hall Street v. Mattel
Supreme Court Maintains Arbitration’s Essential Virtue - Speed.

2007-09-14  In Re Seagate Technology
Are Patent Infringement Opinions Really Necessary After Seagate?

2007-05-04  KSR v. Teleflex
In KSR International Co. v. Teleflex, Inc., the U.S. Supreme Court held that the test for obviousness used by the U.S. Court of Appeals for the Federal Circuit was inconsistent with the Patent Statute and Supreme Court precedent.

2007-05-03  Ortho-McNeil v. Caraco
The Federal Circuit affirmed the District Court\'s construction of the term \"about 1:5\" to mean a range of ratios of no greater than 1:3.6 to 1:7.1. Thus, in considering the intrinsic and extrinsic evidence, a ratio of no less than 1:7.5 did not infringe either literally or under the doctrine of equivalents. To conclude so would have eviscerated the claim limitation under the doctrine of claim vitiation.

2007-04-10  SanDisk v. STMicroelectronics
The CAFC Interprets Medimmune and Patentees Face New Problems in Patent Licensing Negotiations.

2007-01-18  Medimmune, Inc. v. Genentech, Inc.
US Supreme Court Unleashes Patent Licensees.

2006-10-10  Trademark Law Update
Trademark Dilution Revision Act Signed Into Law.

2006-02-28  Laboratory Corp v. Metabolite Labs
The Supreme Court granted certiorari to consider the following question: Whether a method patent setting forth an indefinite, undescribed, and non-enabling step directing a party simply to \"correlate\" results can validly claim a monopoly over a basic scientific relationship used in medical treatment such that any doctor necessarily infringes the patent merely by thinking about the relationship after looking at a test result.

2006-01-11  Norian Corporation v. Stryker Corporation
Plaintiff's patent is directed to kits for preparing calcium phosphate compositions to be used as "bone cements." The District Court concluded that the claim term "a solution consisting of water and a sodium phosphate" required that the sodium phosphate solution be made from only a single sodium phosphate. Defendant's competing kit was based on a solution prepared from more than one sodium phosphate. The Federal Circuit agreed with the District Court and held that the reference to "a sodium phosphate" in the context of the claim was most naturally understood as a reference to one of the different sodium phosphates. The word "a" was best interpreted in its singular sense because it had been used in conjunction with the closed transitional phrase "consisting of." Moreover, this interpretation was consistent with the prosecution history.

2005-11-21  Union Carbide Chemicals v. Shell Oil Company
Section 271(f) applies to process claims. Section 271(f) imposes liability for patent infringement against a company which exports from the United States \"any component of a patented invention\" that is especially made for use in an invention claimed by a U.S. patent. The reference to a \"component\" had led some courts to conclude that this provision does not apply to process claims, but this Court concludes it does.

2005-11-14  Valu Eng'g, Inc. v. Rexnord Corp
The Federal Circuit affirmed the Trademark Trial & Appeal Board's ("Board") decision sustaining Rexnord's opposition of three of Valu's trademark applications for conveyor guide rail configuration designs. The Federal Circuit affirmed that Valu's designs are de jure functional and concluded that the Board's decision to confine its functionality analysis to a single competitively significant application was not legally erroneous.

2005-10-24  Ex Parte Ludgren
The invention is a method for determining executive compensation which does not require the use of a computer. The US Patent and Trademark Office (USPTO) had rejected the claim as not reciting statutory subject matter under 35 U.S.C. § 101 because it is not within \"the technological arts.\" The Board of Patent Appeals and Interferences (BPAI) reversed the rejection stating that 35 U.S.C. § 101 does not include a requirement that the invention be within the technological arts.

2005-09-21  PrimaTek II v. Polypap.
Patent claims were found anticipated by a prior art reference where limitations not expressly found in the reference were inherent from the drawings of the reference.

2005-09-21  Phillips v. AWH Corp.
Intrinsic evidence is the most reliable evidence for construing claim terms, whereas extrinsic evidence is less reliable and should be used for limited purposes.

2005-09-13  Salazar v. Procter & Gamble Co.
Patentee declined to comment on the Examiner\\\'s Statement of Reasons for Allowance. Court held that patentee\\\'s silence on the Statement is not an acquiescence of any patent rights.

2005-08-10  Clontech v. Invitrogen
A patentee who falsely marks its products with a patent number is not automatically liable for the statutory fine imposed by 35 U.S.C. § 292. Proof of intent to deceive the public, by a preponderance of the evidence, is required.

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