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Keep Calm and Party On: New Issue Prohibition Doesn’t Apply to Motions to Amend

The US Court of Appeals for the Federal Circuit affirmed a Patent Trial & Appeal Board obviousness determination, explaining that inter partes review (IPR) statutory provisions that prohibit an otherwise time-barred party...more

PTO Creates Separate Design Patent Bar

The US Patent & Trademark Office (PTO) published its final rule, creating a separate design patent bar where admitted design patent practitioners will practice in design patent proceedings only. (88 Fed. Reg. 78644 (Nov. 16,...more

Suite! Claim Splitting Privity Focuses on Party Relationship, Not Claim Relationship

The US Court of Appeals for the Fifth Circuit revived a hotel group’s federal trade secret suit against two former employees, finding that the district court did not have enough information to conclude that the hotel group...more

Rough Seas Ahead? Supreme Court to Reconsider Chevron Doctrine

The Supreme Court of the United States has agreed to reconsider the Chevron doctrine, which instructs courts to defer to a federal agency’s reasonable interpretation of an ambiguous statute that US Congress delegated to the...more

Seeking Harmony: Supreme Court to Consider Retrospective Relief for Timely Copyright Claims Under Discovery Rule

The Supreme Court of the United States agreed to consider whether a copyright plaintiff’s timely claim under the discovery rule is subject to retrospective relief for infringement occurring more than three years before the...more

Chilly Adventures: Design Patent Prior Art Comparison Applies to Article of Manufacture

Addressing a matter of first impression concerning the scope of prior art relevant to a design patent infringement analysis, the US Court of Appeals for the Federal Circuit concluded that “to qualify as comparison prior art,...more

Copyright Office Seeks Comments on Artificial Intelligence

The US Copyright Office (CO) issued a notice, seeking comments on copyright law and policy issues raised by artificial intelligence (AI) systems. Artificial Intelligence and Copyright, 88 Fed. Reg. 59942 (Aug. 30, 2023)....more

Tragic Ending: Award-Winning AI Artwork Refused Copyright Registration

The US Copyright Office (CO) Review Board rejected a request to register artwork partially generated by artificial intelligence (AI) because the work contains more than a de minimis amount of content generated by AI and the...more

Less Is More: IPR Claim Amendments May Not Enlarge Claim Scope

The US Court of Appeals for the Federal Circuit affirmed a decision from the Patent Trial & Appeal Board denying a motion to amend claims during an inter partes review (IPR) proceeding, explaining that a claim amendment is...more

Don’t Be So Stern: Copying Carries Significant Weight in Assessing Objective Evidence

The US Court of Appeals for the Federal Circuit vacated and remanded a Patent Trial & Appeal Board decision invalidating a patent, finding that the Board erred in assessing nexus and weight to be accorded to objective...more

Is the Top-Down FRAND Approach Officially Trending in Europe?

The High Court of Justice in London recently issued its third judgment on a fair, reasonable and non-discriminatory (FRAND) rate for a license to cellular standard-essential patents (SEPs). In the two prior UK FRAND...more

Well Runs Dry: Summary Judgment Denial Supports Non-Exceptional Case Finding

The US Court of Appeals for the Federal Circuit affirmed a district court’s denial of attorneys’ fees, explaining that when a district court denies summary judgment and allows a plaintiff’s case to proceed, the district court...more

Pending Appeal Does Not Divest Board of Statutory Authority to Institute IPRs

In a case involving sua sponte review, the Director of the US Patent & Trademark Office (PTO) vacated an inter partes review (IPR) decision denying institution, found that the Patent Trial & Appeal Board had statutory...more

Reaching New Lights: Inherent Upper Limit Enables Open-Ended Range

The US Court of Appeals for the Federal Circuit affirmed an International Trade Commission decision finding a § 337 violation. The Court concluded that the Commission correctly found that an open-ended claim was enabled since...more

First Look at the EU’s Draft Regulations on SEP Licensing

In late March, news broke that the European Commission was drafting sweeping regulations on the licensing of standard essential patents (SEPs). Commentators predict the draft will be released in late April. McDermott has had...more

It’s All in the Grammar: “A” Still Means “One or More,” but Single Component Must Perform All Claimed Functions

The US Court of Appeals for the Federal Circuit affirmed a jury’s noninfringement verdict, finding that the district court correctly interpreted the article “a” and antecedent “said” in the asserted claims to require that a...more

UK High Court Issues Landmark Global FRAND Rate Decision

The UK High Court of Justice issued its long-anticipated decision establishing a global Fair, Reasonable and Non-Discriminatory (FRAND) royalty rate for a patent portfolio essential to 3G, 4G and 5G cellular technologies....more

Charter Schools Aren’t Immune from Trademark Suits

The US Court of Appeals for the Fifth Circuit affirmed a district court’s dismissal of a trademark suit against a charter school operator and public school district in Texas but explained that the charter school was not...more

Little Weight Given to Expert Declaration That Repeats IPR Petition

The US Patent & Trademark Office Director affirmed and designated as precedential a Patent Trial & Appeal Board (Board) decision denying institution of an inter partes review (IPR) petition where the expert declaration...more

PTO Seeks Comments on Role of Artificial Intelligence in Inventorship

The US Patent & Trademark Office (PTO) published a Request for Comments Regarding Artificial Intelligence and Inventorship seeking input from stakeholders on inventorship issues that may arise as artificial intelligence (AI)...more

No First Place Trophy Here: Public Demo at Trade Show Found Invalidating

Addressing the public use bar of pre-America-Invents-Act (AIA) 35 U.S.C. § 102(b), the US Court of Appeals for the Federal Circuit affirmed a district court’s decision to invalidate a patent because the patent owner’s...more

2023 IP Outlook: The Latest in SEP Licensing

The uncertainty surrounding standard essential patent (SEP) licensing persisted in 2022 and shows little sign of clearing in 2023. SEPs must be licensed to technology implementers on fair, reasonable and nondiscriminatory...more

Litigation Funding Probe Continues to Make Waves

On remand from a decision allowing the US District Court for the District of Delaware to continue its probe into who was funding a patent owner’s infringement litigation, the district court denied the patent owner’s motion to...more

Full Speed Ahead: District Court Entitled to Explore Litigation Funding Arrangements

The US Court of Appeals for the Federal Circuit denied a patent owner’s mandamus petition, clearing the way for a district court to probe who is funding the patent owner’s infringement litigation. In re Nimitz Techs. LLC,...more

Court Uncorks New Way to Serve Trademark Complaints

The US Court of Appeals for the Ninth Circuit concluded that Section 1051(e) of the Lanham Act permits a plaintiff in a district court case to serve a complaint against a foreign defendant via the Director of the US Patent &...more

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