Sales That Do Not Publicly Disclose Invention Details May Still Bar Patentability Under the AIA

Summary:  Details of an invention under a commercial sale, or offer to sell, need not be publicly disclosed to trigger the “on sale” bar under 35 U.S.C. § 102(a) of the Leahy-Smith America Invents Act (AIA). The Supreme Court of the United States upheld a decision from the Court of Appeals for the Federal Circuit …

Obtaining an Opinion of Counsel May Mitigate the Risk of a Finding of Willful Infringement

Summary: To defend against a claim of willful patent infringement, a timely and competent opinion of counsel may be utilized to establish a good faith belief of non-infringement or invalidity of an asserted patent. The United States District Court for the Eastern District of Texas concluded that a reasonable jury could find a defendant willfully …

Associated Press Fumbles Handoff of Copyright License From Photographers to the NFL

Summary: A recent decision from the Second Circuit elucidates two notable points regarding copyright licenses.  First, a licensee of a copyright cannot create a license or sublicense that would extinguish an accrued right, such as a right to sue for copyright infringement, of the licensor.  Second, in at least some cases, a claim for violation …

IPR Petitioners with Significant Research and Commercial Activities May Possess Standing for an Appeal

Summary:  Inter partes review (“IPR”) provides an avenue to challenge the validity of a patent before there is a specific threat of infringement litigation by a patent owner.  While a petitioner dissatisfied with the outcome of an IPR proceeding may appeal to the Federal Circuit, the petitioner must demonstrate an injury-in-fact sufficient to confer Article …

For Venue Purposes in Patent Lawsuits, Unincorporated Entities May Reside in Their State of Organization

Summary: For purposes of the patent venue statute, district courts are likely to find an unincorporated entity resides in the state under whose laws the entity is organized, with the entity’s principal place of business establishing the particular judicial district in which the entity resides if the state has more than one judicial district.  Parties …

IPR Petitioners without Concrete Plans for Potentially Infringing Activity May Lack Standing for an Appeal to the Federal Circuit

Summary:  PGR and IPR proceedings may offer a cost effective pathway to preemptively challenge the validity of a patent.  While a party dissatisfied with the outcome of such a proceeding may appeal to the Federal Circuit, a party not currently engaging in infringing activity but instead relying on potential infringement liability may lack Article III …

A Determination of a Trademark’s or Service Mark’s Genericness and Descriptiveness Must be Made Before Determining Whether the Mark has Acquired Distinctiveness

The United States Court of Appeals for the Federal Circuit (“the Fed. Cir.”) recently held that, before determining whether a descriptive mark has acquired distinctiveness under the Lanham Act, the Trademark Trial and Appeal Board (“the Board”) must first determine (a) the mark’s status as generic vs. non-generic, and (b) the extent of descriptiveness of …

Patent Owners May Recover Lost Foreign Profits When Exporting Components from the U.S.

In WesternGeco LLC v. ION Geophysical Corp., No. 16-1011 (U.S. Jun. 22, 2018), the Supreme Court of the United States (“the Supreme Court”) ruled that a patent owner is entitled to seek lost foreign profits as part of damages relief under 35 U.S.C. § 284 (2011) when its patent is infringed under 35 U.S.C. § …

Lack of Early, Focused, and Supported Notice of Belief of Exceptional Litigation Behavior May Thwart Motion for Attorneys’ Fees Under 35 U.S.C. § 285

In Stone Basket Innovations, LLC v. Cook Medical LLC, No. 2017-2330, 2018 U.S. App. LEXIS 15670 (Fed. Cir. June 11, 2018), the United States Court of Appeals for the Federal Circuit affirmed the District Court’s order denying attorneys’ fees pursuant to 35 U.S.C. § 285 (2012). The District Court was found to have properly concluded …

Prior Art Status of Conference Handouts Depends on Multiple Factors, Including Expectations of Confidentiality

Takeaway: Determining whether materials distributed at a conference or meeting qualify as prior art “printed publications” under 35 U.S.C. § 102(b) requires evaluating all relevant factors, such as the expectations of confidentiality between the distributor and the conference attendees. The Federal Circuit recently clarified how to analyze the prior art status of materials distributed to …