The Supreme Court of the United States agreed to consider how much a patent must disclose in order to meet the enablement requirement under 35 U.S.C. § 112. Amgen Inc., et al. v. Sanofi, et al., Case No. 21-757 (Supr. Ct....more
The US Court of Appeals for the Federal Circuit reversed a district court’s claim construction, explaining that the use of a restrictive term in a definition in an earlier application does not reinstate that term in a later...more
In a precedential decision, the Trademark Trial & Appeal Board (Board) dismissed an opposition, finding that the trademark applicant’s long period of nonuse due to government sanctions was excusable nonuse and not...more
In one of the first decisions to construe the Trademark Modernization Act of 2020 (TMA), the US Court of Appeals for the Third Circuit found that a district court properly applied the TMA’s rebuttal presumption of irreparable...more
The US Court of Appeals for the Federal Circuit found that an artificial intelligence (AI) software system cannot be listed as an inventor on a patent application because the Patent Act requires an “inventor” to be a natural...more
In response to a petition for panel rehearing, the US Court of Appeals for the Fifth Circuit withdrew its prior decision finding that an automotive parts supplier did not have constitutional standing to pursue an antitrust...more
The US Court of Appeals for the Fifth Circuit affirmed a district court’s dismissal of a trademark suit that was essentially identical to a previous lawsuit that was dismissed based on a finding of lack of confusion....more
The US Court of Appeals for the Federal Circuit ordered a district court to transfer a patent infringement case from Texas to California because the district court had wrongly assessed facts relating to the convenience of...more
The Supreme Court of the United States agreed to consider the application of the fair use doctrine as it relates to transformative works. The Andy Warhol Foundation v. Goldsmith, Case No. 21-869 (Supr. Ct. Mar. 28, 2022)...more
The US Court of Appeals for the Fifth Circuit determined that an automotive parts supplier did not have constitutional standing to pursue an antitrust lawsuit against standard essential patent (SEP) owners that refused to...more
KEY TAKEAWAYS AND OUTLOOK FOR 2022 -
Tracking with this era’s continuation and uncertainty trends―global supply chain disruption, innovation outpacing legislation, the unstoppable internet of [all the] things (IoT)―2022 is...more
2/18/2022
/ Administrative Procedure Act ,
America Invents Act ,
Appeals ,
Corporate Counsel ,
Department of Justice (DOJ) ,
EU ,
Final Written Decisions ,
FRAND ,
Inter Partes Review (IPR) Proceeding ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patent-Eligible Subject Matter ,
Patents ,
Section 101 ,
Standard Essential Patents ,
USPTO ,
Venue
The US Court of Appeals for the Federal Circuit reversed a district court’s summary judgment ruling based on a claim construction error because nothing in the claims or specification of the asserted patent supported the...more
The US Court of Appeals for the Second Circuit transferred an appeal of a preliminary injunction enjoining alleged copyright and trademark infringement to the US Court of Appeals for the Federal Circuit because the operative...more
The US Copyright Office announced a public study to evaluate the merits of providing an option to defer examination of copyright registration materials until a later request by the applicant. Deferred Registration Examination...more
A judge from the US Court of Appeals for the Third Circuit sitting by designation in the US District Court for the District of Delaware denied a motion to dismiss claims of misappropriation of trade secrets, tortious...more
The Supreme Court of the United States agreed to review whether a district court is required to request that the Register of Copyrights advise whether inaccurate information, if known, would have caused the Register to refuse...more
The Supreme Court of the United States upheld the validity of doctrine of assignor estoppel but concluded that the US Court of Appeals for the Federal Circuit failed to recognize the boundaries of the doctrine. Minerva...more
The US Court of Appeals for the Federal Circuit concluded that while it did not have jurisdiction to consider the direct appeal of a Patent Trial & Appeal Board decision denying institution, it could review the decision under...more
In 2020, the US Supreme Court and Court of Appeals for the Federal Circuit continued to refine key aspects of intellectual property law on issues that will have an impact on litigation, patent prosecution and business...more
1/28/2021
/ Appeals ,
En Banc Review ,
Hatch-Waxman ,
Life Sciences ,
Medical Devices ,
Patent Litigation ,
Patent-Eligible Subject Matter ,
Patents ,
SCOTUS ,
Section 101 ,
Technology Sector ,
United States v Arthrex Inc ,
Venue
The Supreme Court of the United States agreed to review assignor estoppel in patent cases. Minerva Surgical, Inc. v. Hologic, Inc., et al., Case No. 20-440 (Supr. Ct. Jan. 8, 2021) (certiorari granted). The question presented...more
In light of the COVID-19 pandemic, our 9th McDermott International Seminar Series will be held as a virtual series, with eight sessions taking place between January 21 – February 4, 2021. Though we cannot see you in person,...more
1/7/2021
/ Acquisitions ,
Biden Administration ,
Compliance ,
Coronavirus/COVID-19 ,
Cross-Border Transactions ,
Cybersecurity ,
Data Privacy ,
Enforcement Actions ,
FRAND ,
Global Market ,
Intellectual Property Protection ,
International Data Transfers ,
Investors ,
Japan ,
Mergers ,
Patent Portfolios ,
US Trade Policies ,
Webinars ,
White Collar Crimes
The US Court of Appeals for the Federal Circuit granted an accused infringer’s mandamus petition to transfer a case from the Western District of Texas to the Northern District of California, concluding that the district court...more
The US Court of Appeals for the Federal Circuit found that in cases brought under the Hatch-Waxman Act, for purposes of determining venue, infringement occurs only in districts where actions related to the submission of an...more
11/12/2020
/ Abbreviated New Drug Application (ANDA) ,
Generic Drugs ,
Hatch-Waxman ,
Mylan Pharmaceuticals ,
Patent Infringement ,
Patent Litigation ,
Patents ,
Pharmaceutical Industry ,
Pharmaceutical Patents ,
Prescription Drugs ,
Venue
Vacating and remanding a district court’s decision not to transfer a case, the US Court of Appeals for the Federal Circuit granted a petition for a writ of mandamus because the district court did not consider whether the...more
The Supreme Court of the United States agreed to consider whether Patent Trial and Appeal Board (PTAB) judges are unconstitutionally appointed. The United States of America v. Arthrex, Inc., Case Nos. 19-1452, -1458, -1459...more
10/22/2020
/ 5 U.S.C. § 7513(a) ,
Administrative Patent Judges ,
Appointments Clause ,
Arthrex Inc v Smith & Nephew Inc ,
Constitutional Challenges ,
Director of the USPTO ,
Inferior Officers ,
Inter Partes Review (IPR) Proceeding ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Polaris Innovations Ltd v Kingston Technology Co ,
Principle Officers ,
SCOTUS ,
Severability Doctrine ,
Tenure ,
United States v Arthrex Inc