IS IT A PUMPKIN OR JACK-O-LANTERN - Part I

IS IT A PUMPKIN OR JACK-O-LANTERN – Part I

One of the more challenging aspects of clearing a design mark in the United States is finding similar marks that have already been registered with the United States Patent and Trademark Office (“PTO”).  Unlike searching words or phrases, designs are given codes (“coded”) based on 29 Categories found in the PTO’s Design Search Code Manual. […]

Federal Circuit Rules ITC Can Exclude Goods Based on Inducement to Infringe Method

Federal Circuit Rules ITC Can Exclude Goods Based on Inducement to Infringe Method

Federal Circuit Rules ITC Can Exclude Goods Based on Inducement to Infringe Method Suprema, Inc. v. Int’l Trade Comm., the Federal Circuit upheld an ITC exclusion order preventing Suprema from importing certain goods that could be used to infringe a patented method.  The patent at issue related to a method for processing fingerprint images.  The […]

Federal Circuit Holds Third Party Performance of Method Steps Attributable to Single Actor

Federal Circuit Holds Third Party Performance of Method Steps Attributable to Single Actor

In Akamai Technologies, Inc. v. Limelight Networks, Inc., an en banc Federal Circuit unanimously overturned a decision that Limelight did not directly infringe Akamai’s patent covering a method for delivery of web content.  Limelight was found to perform all steps of the method, except a “tagging” step, which was performed by its customers.  The district […]

New Expedited Pilot Program to Handle Appeals

New Expedited Pilot Program to Handle Appeals

New Expedited Pilot Program to Handle Appeals. The USPTO has announced a new pilot program to expedite appeals pending before the Patent Trial and Appeal Board (PTAB). The goal of the Expedited Patent Appeal Pilot is to reduce the backlog of pending appeals, while also allowing applicants to prioritize their pending appeals. Many technology centers […]

The Federal Circuit Reverses Precedent on Functional Claiming Standard

The Federal Circuit Reverses Precedent on Functional Claiming Standard

The Federal Circuit Reverses Precedent on Functional Claiming Standard. In Williamson v. Citrix Online, LLC the Federal Circuit redefined functional claiming for US patent applications and issued patents. In Williamson, the Court reconsidered its prior holdings regarding when a claim recitation was to be construed as a means-plus-function limitation. A claim recitation that is construed […]

The Federal Circuit elaborated that Patent Eligibility is a Threshold Inquiry

The Federal Circuit elaborated that Patent Eligibility is a Threshold Inquiry

The Federal Circuit elaborated that Patent Eligibility is a Threshold Inquiry. In OIP v. Amazon the Federal Circuit upheld a District Court’s grant of a motion to dismiss because of patent invalidity. OIP alleged that Amazon was infringing its claimed computer implemented methods for optimizing the pricing of products for sale by gathering statistics, compiling […]

Supreme Court Rules Belief in Invalidity is Not a Defense to Induced Infringement

Supreme Court Rules Belief in Invalidity is Not a Defense to Induced Infringement

Supreme Court Rules Belief in Invalidity is Not a Defense to Induced Infringement. In Commil USA, LLC v. Cisco Systems, Inc., the U.S. Supreme Court held that a defendant may not assert a good-faith belief in a patent’s invalidity as a defense against liability for inducing infringement. Inducement requires not just knowledge of the patent-in-suit, […]

The Supreme Court Rules Patent Licensing Beyond Patent Term is Anti-Competitive

The Supreme Court Rules Patent Licensing Beyond Patent Term is Anti-Competitive

The Supreme Court Rules Patent Licensing Beyond Patent Term is Anti-Competitive. In, Kimble v. Marvel, The Supreme Court considered anti-competitive concerns to patent licensing contracts beyond the term of a patent. Stated another way the case is about post-expiration patent royalties. The US has had a longstanding ban on such royalties, as a result of […]

Grace Period Restoration Act seeks to Amend AIA

Grace Period Restoration Act seeks to Amend AIA

A new bill before the House and Senate seeks to amend the AIA to provide for a more forgiving one-year grace period in which an inventor may disclose their invention before filing a patent application. While the AIA has such a grace period, it is limited to disclosures of the claimed invention, and it is […]

Federal Circuit: Limited Power to Hear Appeals on Motions to Stay

Federal Circuit: Limited Power to Hear Appeals on Motions to Stay

In Intellectual Ventures v. JPMorgan, the Federal Circuit held that the mere filing of a petition for covered business method (CBM) patent review or post-grant review (PGR) under the AIA did not give it the jurisdiction to hear an appeal of a decision on a motion to stay trial court proceedings. In this case, Intellectual […]

Supreme Court Hears Oral Arguments in Two Important Patent Cases

Supreme Court Hears Oral Arguments in Two Important Patent Cases

The Supreme Court recently heard oral arguments in two major patent cases. The first, Kimble v. Marvel, is a case about post-expiration patent royalties, the first such case to make it before the Supreme Court in fifty years. The US has had a longstanding ban on such royalties, as a result of the holding in […]

US Senate Approves Michelle Lee as USPTO Director

US Senate Approves Michelle Lee as USPTO Director

The US Senate has approved Michelle Lee, the Deputy Director of the United States Patent & Trademark Office and former Deputy General Counsel at Google, as the new Director of the USPTO. In large part because of hostility between Republicans and Democrats in the Senate, the position of Director has been vacant since the resignation […]

Competing Patent Reform Bills In US Congress

Competing Patent Reform Bills In US Congress

Senate Democrats have introduced a patent reform bill in the US Senate that aims to reform the USPTO’s post-grant proceedings established by the America Invents Act. This bill, abbreviated the STRONG Act, aims to bring the practices of the USPTO’s Patent Trial and Appeal Board in line with those of district courts. Under the bill, […]

Novartis Wins Appeal for First Biosimilar to Go On Sale in US

Novartis Wins Appeal for First Biosimilar to Go On Sale in US

Novartis International has won FDA approval for a biosimilar of an existing drug. The drug, a copy of Amgen’s Neupogen, is designed to boost white blood cell counts in certain patients. An abbreviated FDA approval pathway for biologic medical products that share most of their properties with an existing, approved biologic product was created by […]

Important Trademark Decision May have Implications for Patent Law

Important Trademark Decision May have Implications for Patent Law

In B&B Hardware v. Hargis Industries, the U.S. Supreme Court held that a decision from the Trademark Trial and Appeal Board (TTAB) can prevent a district court from re-judging issues that have already been decided by the TTAB’s decision, if the “ordinary elements” of issue preclusion are met. This is despite the fact that the […]