Kerry S. Taylor and Nathanael R. Luman
On May 27, 2020 the U.S. Patent and Trademark Office (USPTO) proposed rule changes to govern inter partes review (IPR), post-grant review (PGR), and covered business method (CBM) review proceedings at the PTAB. This article provides a summary of each proposed rule change and its potential impact on PTAB practice.
Jeff Ginsberg and Zhiqiang Liu
Federal Circuit Finds Preamble Not Limiting and Claims Reciting Means-Plus-Function Limitations Without Disclosure of Corresponding Structures Cannot Be Determined Unpatentable as Indefinite in an IPR Proceeding
Federal Circuit Finds That District Court Correctly Applied the Disclosure-Dedication Doctrine In Granting a Motion for Judgment of Non-Infringement on the Pleadings
Rudy Kim and Chris Han
Holding that the parties’ executed agreement mooted the issues in the case, the Federal Circuit recently reversed a district court’s decision to grant summary judgment of non-infringement despite the parties’ agreement. The decision builds upon prior Federal Circuit case law giving effect to settlement agreements.
Howard Shire and Shaleen Patel
Article III Inter Partes Review Decision Precluded By Congress, SCOTUS Rules
SDNY: Video Game Makers Not Violating Copyright with NBA Player Tattoos
While AI is rising as a key commercial player at the global scale with an expected market size of almost $400 billion by 2025, are patent laws around the world equipped to incentivize this revolution?
Jeff Ginsberg and Matthew Weiss
Federal Circuit: Method of Preparation Claim is Patentable
Federal Circuit: Same Party Cannot Join IPR Petitions under 35 U.S.C. §315(c)
Rudy Y. Kim
With fewer restraints after Octane, district courts now have broader discretion to grant motions for attorney’s fees. But understanding the circumstances under which exceptionality has been found is critical. Recent decisions by the Federal Circuit post-Octane provide some important guidance on when attorney’s fees may be available under Section 285.
The foundational requirement that a trademark function as a trademark has received little attention in the case law. More recently, however, there has been an apparent uptick in scrutiny of trademark use by the USPTO and TTAB, as well as fresh academic attention paid to the issue.
Northern District of Texas: Even Post-Berkheimer, Patent Claims Continue to be Ineligible for Patenting as a Matter of Law When They Are Not Drawn to Particular Technical Solutions or Advances Described in the Specification
Federal Circuit: The PTAB Cannot Institute Inter Partes Review on Obviousness Grounds Not Included in the IPR Petition, But Can Consider Evidence of “General Knowledge” in the Art
In 2013, the PTO adopted a new policy under which any party commencing a de novo proceeding challenging a PTO decision would be responsible to pay a pro rata share of the salaries of the government attorneys working on the matter. On Dec. 11, 2019, the U.S. Supreme Court rejected the PTO’s new interpretation of the Patent Act and held that the American Rule, a centuries-old principle under which each party bears its own attorneys’ fees, does apply to this statute.