Addressing a venue challenge, the US Court of Appeals for the Federal Circuit denied a petition for a writ of mandamus because the challenger did not demonstrate it had no adequate alternative means to obtain desired relief...more
The US Court of Appeals for the Federal Circuit affirmed a district court’s claim construction of the term “end plate” that required a flat external surface, and its construction of the term “protrusion extending outwardly...more
Affirming a jury verdict of infringement, the US Court of Appeals for the Federal Circuit concluded that the question of whether patent claims are essential to all implementations of an industry standard should be resolved by...more
Addressing a myriad of issues relating to copyright law, the US Court of Appeals for the Second Circuit found that the discovery rule applies for statute of limitations purposes in determining when copyright claims accrue,...more
In a split decision, the Supreme Court of the United States in Georgia v. Public.Resource.Org, Inc. affirmed a previous ruling by the US Court of Appeals for the 11th Circuit and held that annotations to the Official Code of...more
5/1/2020
/ Annotated Case Law ,
Appeals ,
Copyright ,
Copyright Infringement ,
Copyrightable Subject Matter ,
Georgia v. Public.Resource.Org Inc ,
Government Edicts Doctrine ,
Legislative Duties ,
Reaffirmation ,
Reversal ,
SCOTUS ,
Statutory Code ,
The Copyright Act
The US Court of Appeals for the Federal Circuit held that the Federal Reserve Banks of several cities are “persons” under the America Invents Act (AIA) and therefore may petition for post-issuance review under the AIA....more
The US Court of Appeals for the Federal Circuit affirmed a district court dismissal, finding that a patent license implicitly licensed all parents and continuations that disclosed the same invention as the explicitly licensed...more
The US Court of Appeals for the Federal Circuit has now held that a “place of business” for purposes of the patent venue statute requires an employee or agent of the defendant to be conducting business at that place. In light...more
On January 21 and 22, 2020, the 8th annual McDermott International Seminars took place in Osaka and Tokyo. These seminars focused on cross-border M&A, GDPR, intellectual property, global enforcement and other key topics....more
2/13/2020
/ 5G Network ,
Artificial Intelligence ,
Blockchain ,
Driverless Cars ,
Emerging Technologies ,
Intellectual Property Protection ,
Internet of Things ,
Patents ,
Personalized Medicine ,
Professional Conferences ,
Trade Secrets
On January 21 and 22, 2020, we will be hosting our 8th McDermott International Seminars in Osaka and Tokyo respectively. These seminars will focus on cross-border M&A, GDPR, intellectual property, global enforcements and...more
12/20/2019
/ Acquisitions ,
Cross-Border Transactions ,
Data Privacy ,
Data Security ,
Emerging Technology Companies ,
Enforcement Actions ,
Events ,
Foreign Corporations ,
Foreign Investment ,
General Data Protection Regulation (GDPR) ,
Intellectual Property Protection ,
Merger Controls ,
Mergers
The US Court of Appeals for the Federal Circuit reversed a district court’s summary judgment grant of non-infringement because it was improperly granted on a ground that was not asserted by the accused infringer. NeuroGrafix...more
The US Court of Appeals for the Federal Circuit reversed a district court decision that retained jurisdiction over a breach of contract action, finding that the action did not sufficiently implicate issues of patent law and...more
10/31/2019
/ Breach of Contract ,
Breach of Duty ,
Contract Disputes ,
Exclusive Licenses ,
IP License ,
Patent Infringement ,
Patent Litigation ,
Patent Royalties ,
Patents ,
Remand ,
State Law Claims ,
Subject Matter Jurisdiction ,
Unjust Enrichment ,
Vacated
In a precedential decision, the Patent Trial and Appeal Board (PTAB) dismissed a petition for inter partes review (IPR), finding that the one-year time limit for filing an IPR petition under 35 USC § 315(b) is triggered even...more
10/10/2019
/ § 315(b) ,
Article III ,
Bad Faith ,
Copyright Infringement ,
Counterclaims ,
Declaratory Judgments ,
Equitable Tolling ,
Inter Partes Review (IPR) Proceeding ,
Patent Infringement ,
Patents ,
Precedential Opinion ,
Standing ,
Time-Barred Claims ,
Trademark Infringement ,
Unfair Competition ,
USPTO
The Supreme Court of the United States granted Lucky Brand’s request to address whether claim preclusion principles bar a defendant from asserting a new defense in a case when the defense could have been raised over previous...more
8/14/2019
/ Amended Complaints ,
Appeals ,
Certiorari ,
Claim Preclusion ,
Res Judicata ,
SCOTUS ,
Settlement Agreements ,
Trademark Infringement ,
Trademark Litigation ,
Trademarks ,
Unfair Competition
The US Court of Appeals for the Federal Circuit affirmed a Patent Trial and Appeal Board (PTAB) non-obviousness determination because substantial evidence supported the PTAB’s finding that a person of skill in the art would...more
The Supreme Court of the United States granted the State of Georgia’s request to address whether it can claim copyright ownership over annotations made to its official legal code. State of Georgia, et al. v....more
7/16/2019
/ Annotated Case Law ,
Certiorari ,
Copyright ,
Copyrightable Subject Matter ,
Federal v State Law Application ,
Georgia v. Public.Resource.Org Inc ,
Petition for Writ of Certiorari ,
Public Domain ,
SCOTUS ,
Split of Authority ,
The Copyright Act
The US Court of Appeals for the Federal Circuit denied a petition for a writ of mandamus requesting transfer of a patent infringement case, finding that the “first-to-file” rule did not warrant transfer because, even though...more
In the first-ever final written decision in a post-American Invents Act (AIA) derivation proceeding, the Patent Trial and Appeal Board (PTAB) found that the petitioner had not shown that an inventor named in the respondent’s...more
The US Court of Appeals for the Federal Circuit elected not to decide en banc whether servers or similar equipment in third-party facilities constitute a regular and established place of business under the patent venue...more
3/28/2019
/ Computer Servers ,
Google ,
Intellectual Property Protection ,
Motion to Dismiss ,
Patent Litigation ,
Patents ,
Principal Place of Business ,
TC Heartland LLC v Kraft Foods ,
Technology Sector ,
Venue ,
Web Servers
Following remand from the Supreme Court of the United States, the US Court of Appeals for the Federal Circuit addressed the impact of an intervening invalidation of four of six patent claims in issue by the Patent Trial and...more
3/1/2019
/ 35 U.S.C. § 271(f)(2) ,
35 U.S.C. § 284 ,
Appeals ,
Damages ,
Domestic Injury ,
Extraterritoriality Rules ,
Foreign Sales ,
Lost Profits ,
Patent Act ,
Patent Infringement ,
Patent Royalties ,
Patents ,
Remand ,
SCOTUS ,
Vacated ,
WesternGeco LLC v Ion Geophysical Corporation
The Supreme Court of the United States granted the US Patent and Trademark Office’s (PTO’s) request that it address whether the prohibition of federal trademark protection for “immoral” or “scandalous” marks is invalid under...more
2/8/2019
/ Appeals ,
Certiorari ,
Constitutional Challenges ,
Disparagement ,
First Amendment ,
Free Speech ,
Iancu v. Brunetti ,
Lanham Act ,
Matal v Tam ,
Scandalous/Immoral Marks ,
SCOTUS ,
Trademark Registration ,
Trademarks ,
USPTO ,
Vulgar or Offensive Marks
The US Court of Appeals for the Federal Circuit concluded venue was improper under the patent venue statute as interpreted by the Supreme Court of the United States, finding that the accused infringer did not waive or forfeit...more
The Supreme Court of the United States granted Mission Product Holdings’ petition for certiorari to determine whether a debtor-licensor can terminate the rights of trademark licensees by rejecting its trademark licensing...more
The Supreme Court of the United States granted, in part, Return Mail’s petition for certiorari to address whether the federal government has standing to challenge patents using post-grant proceedings under the America Invents...more
The Supreme Court of the United States granted Rimini Street’s petition for certiorari to address the meaning of “full costs” as used in the Copyright Act. Rimini Street, Inc. v. Oracle USA Inc., Case No. 17-1625 (Supr. Ct....more