ARCHIVES

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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Federal Circuit Declines to Follow USPTO Guidance and Holds Cleveland Clinic Patents Invalid
April 6, 2019

For the second time in two years, the Federal Circuit has held claims in Cleveland Clinic’s patents invalid for claiming ineligible subject matter. The patents at issue in Cleveland Clinic Found. v. True Health Diagnostics LLC, 2019 U.S. App. LEXIS 9451 (Fed. Cir. Apr. 1, 2019) (“Cleveland Clinic II”), were linked to the same natural law as the three patents at issue in Cleveland Clinic Found. v. True Health Diagnostics LLC, 859 F.3d 1352 (Fed. Cir. 2017) (“Cleveland Clinic I”): the correlation between cardiovascular disease and levels of the heme protein myeloperoxidase (“MPO”) in a subject’s blood.

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Federal Circuit Splits on Patent for Detecting Suspicious Activity
March 25, 2019

Another week….another split Federal Circuit decision on 35 U.S.C. Section 101. This time, in SRI Int’l, Inc. v. Cisco Sys., 2019 U.S. App. LEXIS 8249 (Fed. Cir. March 20, 2019), a divided panel held a network security patent eligible under Alice Step 1. This case highlights the difficulties in resolving one of the major threads in the post-Alice caselaw: the level of specificity that Section 101 requires.

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Supreme Court Issues Two Important Copyright Decisions
March 5, 2019

On March 4, 2019, the Supreme Court issued two unanimous decisions of interest to copyright practitioners. In both cases, the Court resolved a split among the Circuit courts and repudiated Ninth Circuit positions.

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