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5Pointz Revisited: Castillo v. G&M Realty LP
March 26, 2020

Headlines emphasized the $6.75 million dollar damages award in the Second Circuit’s recent decision in Castillo v. G&M Realty LP.  However, the primary significance of the case is that it establishes a test that is highly deferential to experts for when a work of visual art has achieved “recognized stature” — and thus merits protection from destruction under the Visual Artists Rights Act (“VARA,” 17 U.S.C. § 106A).  

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Supreme Court Holds States Are Immune From Copyright Suits
March 24, 2020

In a unanimous decision issued on March 23, 2020, the Supreme Court held that Congress’ attempt to strip states of their sovereign immunity from copyright infringement suits “lacked a valid constitutional basis.”  (Slip Op. at 1.)  Justice Kagan’s opinion in Allen v. Cooper, 589 U.S. ___ (2020), follows closely the Court’s prior decision in Florida Prepaid Postsecondary Ed. Expense Bd. V. College Savings Bank, 527 U.S. 627 (1999).  That case held that Congress’ parallel attempt to abrogate sovereign immunity in the patent context was also unconstitutional.

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Browsewrap Agreements — Ninth Circuit Requires Mobile App Terms of Service to Be Conspicuously Displayed
March 23, 2020

A “browsewrap” agreement is one in which assent to the terms of use of an Internet service is inferred from the user’s continued use of the service in question.  Browsewrap agreements can be distinguished from “clickwrap” agreements, in which the user is required to click a link or check a box affirming agreement to the terms before using the service.

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American Axle: Another Section 101 Decision Divides the Federal Circuit
February 15, 2020

In American Axle & Manufacturing, Inc., v. Neapco Holdings, LLC (Fed. Cir. Oct. 3, 2019), a split Federal Circuit panel affirmed the district court’s grant of summary judgment holding claims from plaintiff’s patent ineligible under § 101.  Even among the many post-Alice Federal Circuit decisions that have fractured the court, American Axle stands out for several reasons.  Some background on the technology at issue helps to illustrate why. 

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Words Matter – Even in Design Patents
January 15, 2020

In Curver Luxembourg, SARL v. Home Expressions, Inc. (Fed. Cir. September 12, 2019), the Federal Circuit held that claim language can limit the scope of a design patent to a specific article of manufacture even where the patent’s drawing figures never depict that article.  In doing so, the court rejected the patentee Curver’s argument that patent coverage should be defined solely by the patent drawing figures, which showed an ornamental surface design disembodied from any article of manufacture.  After limiting the design patent’s scope to the article of manufacture mentioned in the claim, the Federal Circuit affirmed the grant of a Rule 12(b)(6) motion that dismissed Curver’s infringement claim. 

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WIPO 2019 Report Illuminates AI Patenting Trends
December 31, 2019

Earlier this year, the World Intellectual Property Organization (WIPO) initiated a new series of reports, WIPO Technology Trends.  The first report in the series, entitled Artificial Intelligence, looks at artificial intelligence (AI) patenting trends and issues across industries and around the world.

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Recovering IPR fees in Exceptional Cases Under 35 U.S.C. § 285
December 18, 2019

Since the Supreme Court decided Octane Fitness, LLC v. ICON Health & Fitness, Inc., 572 U.S. 545 (2014), motions for attorneys’ fees under 35 U.S.C. § 285 have become increasingly common under the new more relaxed standard for demonstrating an “exceptional case.”  In roughly this same time period, post-issuance challenges such as IPRs have also became a key strategy for many patent infringement defendants.

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Split Federal Circuit Vacates Section 101 Decision So District Court Can Resolve Claim Construction Dispute
December 9, 2019

In MyMail, Ltd. v. OoVoo, LLC, IAC Search & Media, Inc., 934 F.3d 1373 (Fed. Cir. August 16, 2019), a split Federal Circuit panel held that the district court erred by declining to resolve the parties’ claim construction dispute before deciding patent subject matter eligibility under Section 101

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Reissue Claims Must Have Support From the Face of the Original Patent’s Specification
November 2, 2019

35 U.S.C. § 251 governs claims that are broadened through a reissue.  Specifically, Section 251(a) provides:

Whenever any patent is, through error, deemed wholly or partly inoperative or invalid … by reason of the patentee claiming more or less than he had a right to claim in the patent, … the Director shall … reissue the patent for the invention disclosed in the original patent …

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Significant Developments Regarding 17 U.S.C. § 1782
October 24, 2019

Two Circuit Courts of Appeal have recently released significant decisions regarding the scope and application of 17 U.S.C. § 1782. Section 1782 provides that a federal district court may, upon application by any interested person, provide for discovery for use in a proceeding before a foreign or international tribunal.

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