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Category Archives: Patent Law

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Make Sure You Follow the Patent Local Rules!

Posted in IP, Patent Law

An unpublished decision from the Northern District of California emphasizes how important it is for attorneys to follow patent local rules. Patent local rules are rules that many federal district courts have for patent infringement cases. These rules supplement the regular local rules for that court and the Federal Rules of Civil Procedure, and allow… Continue Reading

Irreparable Harm for Permanent Injunction Supported by Lost Profits Award

Posted in IP, Patent Law

In f’real Foods, LLC et al v. Hamilton Beach Brands, Inc. et al, 1-16-cv-00041 (DDE 2020-07-16, Order) (Colm F. Connolly), plaintiffs freal Foods, LLC and Rich Products Corporation sued defendants Hamilton Beach Brands, Inc. and Hershey Creamery Company for infringement of four patents on four accused products that are high performance blenders manufactured by Hamilton… Continue Reading

The PTAB Requires Settlement and Collateral Agreements to Terminate IPRs

Posted in IP, Patent Law

Following the America Invents Act, a petition for inter partes review (“IPR”) has become a common method for challenging the validity of a patent before the Patent Trial and Appeal Board (“PTAB”) at the United States Patent and Trademark Office (“USPTO”).  Such challenges are often brought by petitioners in response to a patent owner suing… Continue Reading

PTO Fast Tracks COVID-19 Patent and Trademark Applications

Posted in IP, Patent Law, Trademark Law

The United States Patent and Trademark Office has established a new program for prioritized examination for patent applications for inventions related to COVID-19 and for trademark applications for marks used for certain medical products and services used in connection with COVID-19. On May 7, 2020, the Director of the PTO announced the program for patent… Continue Reading

No, Machines Cannot Be Inventors!

Posted in IP, Patent Law

Eventually, it was bound to happen. A patent application was filed by a machine. Well, not exactly. A human being filed a patent application naming a machine as the inventor. The machine was an artificial intelligence machine described as a “creativity machine.” Its name was listed as “DABUS Invention Generated by Artificial Intelligence.” The invention… Continue Reading

Patent, Trademark, and Copyright Deadlines Extended Due to COVID-19

Posted in Copyright Law, IP, Patent Law, Trademark Law

On March 31, 2020, the U.S. Patent and Trademark Office announced that, pursuant to the Coronavirus Aid, Relief, and Economic Security Act, certain deadlines for patent and trademark applications would be extended. The CARES Act authorizes the PTO to toll, waive, or modify any patent or trademark deadline in effect during the COVID-19 emergency. The… Continue Reading

District Court Stays Discovery Deadlines Because of Coronavirus Threat but Keeps Markman Hearing on Calendar

Posted in IP, Patent Law

On March 6, 2020, a Central District Court in UPL NA Inc. f/k/a United Phosphorous, Inc. v. Tide International (USA), Inc. et al, 8-19-cv-01201 (CDCA 2020-03-06, Order) (Ronald S.W. Lew), issued an order that may become more common place across courts.  At the request of the parties, the Court issued a temporary stay of all… Continue Reading

Google’s Servers Do Not Constitute a Regular and Established Place of Business for Patent Venue

Posted in IP, Patent Law

It has become commonplace for companies such as Google to use local servers to provide faster service to customers.  This practice has raised the question as to whether those local servers constitute “a regular and established place of business” for the purposes of establishing venue in patent infringement suits in the districts where the servers… Continue Reading

Inequitable Conduct Can Render all Patents in a Patent Family Unenforceable through Infectious Unenforceability

Posted in Intellectual Property Litigation, Patent Law

In Guardant Health, Inc. v. Foundation Medicine, Inc., 1-17-cv-01616 (DDE 2020-01-07, Order), the Court rejected the Plaintiff’s argument that an inequitable conduct claim must be related only to the prosecution of the patent-at-issue in ruling on plaintiff’s motion to dismiss defendants’ infectious unenforceability counterclaims.  In the case, the Defendants’ theory as to the unenforceability of… Continue Reading

Is a Copyright Notice Sufficient Evidence a Textbook Is a Printed Publication for Institution of Inter Partes Review?

Posted in Copyright Law, IP, Patent Law

To use a textbook or other reference to challenge the validity of a patent in a petition for inter partes review (“IPR”), the textbook must have been “publicly accessible” prior to the date of the challenged patent to qualify as a printed publication. Is a copyright notice sufficient evidence that a textbook was publicly accessible?… Continue Reading

U.S. Supreme Court Strikes down USPTO’s Request for Attorney’s Fees

Posted in IP, Patent Law, Uncategorized

In a unanimous ruling, the U.S. Supreme Court in Peter v. NantKwest, case number 18-801, struck down the U.S. Patent and Trademark Office’s (USPTO) recent and often-criticized effort to recoup its legal fees – even in cases it loses – because it violates the so-called American Rule, which says U.S. litigants must typically pay for… Continue Reading

Patent Priority Dates Must Be a Priority!

Posted in IP, Patent Law

The priority date of a patent is an important aspect in protecting intellectual property. The priority date is the earliest possible filing date that a patent application is entitled to rely on; it is based on the filing dates of any related patent applications that were filed before the application (the priority chain).  This date… Continue Reading

Federal Circuit Holds Administrative Patent Judges Appointments Unconstitutional

Posted in IP, Patent Law

In Arthrex Inc. v. Smith & Nephew Inc. et al., case number 18-2140, the U.S. Court of Appeals for the Federal Circuit recently considered whether the appointment of the Board’s Administrative Patent Judges (“APJs”) by the Secretary of Commerce, as currently set forth in Title 35, violates the Appointments Clause of the U.S. Constitution.  The… Continue Reading

What Happens When the Intellectual Property Laws Clash with the Antitrust Laws?

Posted in Copyright Law, IP, Patent Law, Trademark Law

Should a company be required to license its patents to a competitor?  That’s one question that arises when intellectual property law and antitrust law intersect. The Sherman Act, section 1, prohibits concerted action (agreements, combinations, or conspiracies) that restrain trade.  Four types of conduct are per se unlawful; i.e., illegal regardless of the reason.  They… Continue Reading

PTAB Invalidates Data Privacy Risk Assessment Patent

Posted in IP, Patent Law, Privacy

Many resources are being devoted to preventing data breaches and protecting privacy.  In fact, patents have issued on various approaches.  But are those approaches really patentable?   In a recent challenge to OneTrust’s patent, which is related to data privacy risk, the Patent Trial and Appeal Board (“PTAB”) found the subject matter patent ineligible. OneTrust’s patent,… Continue Reading

Federal Circuit Holds That Claim Language Can Limit the Scope of a Design Patent

Posted in IP, Patent Law

In Curver Luxembourg SARL v. Home Expressions Inc., case number 18-2214, the U.S. Court of Appeals for the Federal Circuit recently held that the claim language of a design patent can limit its scope where the claim language supplies the only instance of an article of manufacture that appears nowhere in the figures. Plaintiff Curver… Continue Reading

Federal Circuit Holds IPR Proceedings on Pre-AIA Patents is Not an Unconstitutional Taking Under the Fifth Amendment

Posted in IP, Patent Law

In CELGENE CORPORATION v. PETER, the Federal Circuit recently affirmed the PTAB’s decisions finding appealed claims obvious. However, more importantly, the Federal Circuit also held that the retroactive application of IPR proceedings to pre-AIA patents is not an unconstitutional taking under the Fifth Amendment. Regarding the constitutional issue of whether the retroactive application of IPRs… Continue Reading