ARCHIVES

One-Year Bar for Filing IPR Triggered by Suit in Which Party Claiming Infringement Lacked Standing
October 15, 2019

35 U.S.C. § 315(b) states that “[a]n inter partes review may not be instituted if the petition requesting the proceeding is filed more than 1 year after the date on which the petitioner … is served with a complaint alleging infringement of the patent.” In a recent precedential decision, GoPro, Inc. v. 360Heros, Inc., No. IPR2018-01754 (P.T.A.B. Aug. 23, 2019), the Patent Trial and Appeal Board (“PTAB”) held that § 315(b)’s one-year time bar is triggered by the service of process of a claim for infringement even if the party alleging infringement had no standing to bring such a claim.

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U.S. Patent Office Seeks Public Comments on Patenting Artificial Intelligence Inventions
October 11, 2019

The US Patent and Trademark Office (“USPTO”), on August 27th, 2019, issued a Request for Comments on Patenting Artificial Intelligence Inventions (“Request”) and recently extended the deadline for submitting comments to November 8th, 2019. 

The Request’s issuance highlights that artificial intelligence (“AI”) is an increasingly important area for patent protection and that the question of AI’s patentability presents unique challenges.  These challenges will no doubt need to be addressed over time in future federal cases and in evolving USPTO patentability policies.  In the Request, the USPTO enumerates a dozen different areas in which it seeks comments.  Topics include inventorship, ownership, appropriate forms of protection, and the applicability of existing patentability rules in areas such as enablement and eligibility.

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An “Equivalent Disclosure” Can Sometimes Satisfy the “Written Description” Requirement
October 10, 2019

35 U.S.C. Section 112 requires that patent claims have adequate written support. As a general matter, the requirement of adequate written description may not be satisfied by a so-called “equivalent disclosure.” A recent Federal Circuit opinion demonstrates that there are exceptions to this general rule.

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Disclaiming Claims to Moot an Infringement Litigation
September 12, 2019

Article III of the Constitution empowers federal courts to adjudicate only “Cases” and “Controversies.” The controversy must not only be real and substantial, it must also be extant at all stages of review. The Federal Circuit’s recent decision in Sanofi-Aventis U.S., LLC v. Dr. Reddy’s Labs., Inc., 933 F.3d 1367 (Fed. Cir. 2019), illustrates one of the scenarios in which this doctrine can come into play.

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U.S. Supreme Court to Resolve Circuit Split Over Arbitration by Non-Signatories Under New York Convention
August 15, 2019

The Supreme Court recently granted certiorari in the case entitled Outokumpu Stainless USA, LLC v. Converteam SAS, 902 F.3d 1316 (11th Cir. 2018), cert. granted, GE Energy Power Conversion France SAS Corp. v. Outokumpu Stainless USA, LLC (June 28, 2019). The case will resolve a circuit split regarding the ability of non-signatories to participate in arbitration under the Convention on the Recognition and Enforcement of Arbitral Awards (“New York Convention”).

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“Aesthetic Appeal” of a Design Is Protectable by a U.S. Design Patent
July 30, 2019

In a case that discusses both some of the differences and similarities between design patents and utility patents, the Federal Circuit rejected a patent challenger’s argument that the aesthetic appeal of a patented design – as opposed to a mechanical or utilitarian aspect of the design – is functional. Automotive Body Parts Association v. Ford Global Technologies LLC (Fed. Cir. July 23, 2019).

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Limiting the Number of Asserted Claims in Patent Cases
July 20, 2019

Patent infringement cases can be complex, technical, and time-consuming for both parties and the courts that must resolve them. Many districts have special rules that attempt to impose order on what can be unruly cases, by specifying the timing and sequence of infringement and invalidity contentions, and claim construction procedures, among others.

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Sovereign Immunity Does Not Insulate a State’s Patent from an IPR Attack
July 15, 2019

The Federal Circuit ruled in Regents of the University of Minnesota v. LSI Corp., 2019 U.S. App. LEXIS 17887 (Fed. Cir. June 14, 2019), that state sovereign immunity does not bar an IPR proceeding against patents owned by a state university.

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Autonomous Driving Patent War Warms Up with LiDAR Patent Surviving the PTAB
July 1, 2019

A “Laser Imaging Detection and Ranging” (LiDAR) device is a critical sensor for many autonomous driving solutions.   In Quanergy v. Velodyne, IPR2018-00255 (PTAB, May 23, 2019), one of Velodyne’s LiDAR patents survived the invalidity challenge mounted by its rival Quanergy.  The IPR petition in this matter was filed prior to the USPTO’s recent implementation of the Phillips claim interpretation standard for IPRs.  Nevertheless, even under the “broadest reasonable interpretation” standard, the PTAB found that the intrinsic evidence sufficiently limited the scope of the term “LiDAR” to allow the patentee to effectively distinguish the prior art.

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Supreme Court Rules on Scandalous or Immoral Marks
June 25, 2019

On June 24, 2019, the Supreme Court held in Iancu v. Brunetti that the Lanham Act’s prohibition on registering immoral or scandalous marks (15 U.S.C. §1052(a)) violates the First Amendment.

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