I recently received a call from a friend who expressed that his company is struggling with helping inventors identify a point of novelty for their ideas in their invention disclosure forms (IDFs), and as a result, it has been difficult
IP Intelligence
Insight on Intellectual Property
The IP Intelligence blog, published by Baker & Hostetler LLP, focuses on intellectual property law developments including patent eligibility, trademark enforcement, and regulatory investigations related to emerging technologies. It covers legal issues such as method of treatment claims in patents, extraterritorial application of trademark laws, and legislative efforts to clarify patent eligibility standards. The blog also addresses enforcement challenges in online marketplaces, the impact of federal investigations on AI technologies, and nuances in trademark rights involving common law users. Its content is aimed at providing updates and analysis on IP litigation, regulatory scrutiny, and legislative changes affecting intellectual property rights and enforcement strategies.
Latest from IP Intelligence - Page 7
Federal Circuit Requires Prior Art Be Analogous for Anticipation of Design Patents
Design patents offer valuable protection in a patent portfolio, including conferring different strategic advantages compared to those of utility patents. For example, design patents allow for recovery of “total profits” — not just lost profits or reasonable royalties as provided…
Federal Circuit Hints at Easier Service of Process on Foreign Defendants
By Cory Barnes
In a recent decision, In re: OnePlus Technology (Shenzhen) Co., Ltd., Case. No. 21-165, Dkt. 20, the Federal Circuit denied China-based smartphone maker OnePlus’ petition for mandamus seeking to direct a Western District of Texas court (Judge Alan Albright)…
Courts Rule That AI Inventorship Can Rust in Peace
On Sept. 2, 2021, the U.S. District Court for the Eastern District of Virginia addressed what it called a “core issue”—whether an artificial intelligence (AI) machine can be an “inventor” under the Patent Act. It ruled that the “clear answer”…
Circuit Courts Continue To Limit Preclusive Effect of TTAB Decisions
On Sept. 17, 2021, the Third Circuit Court of Appeals became the latest Circuit Court to limit the preclusive effect of Trademark Trial & Appeal Board (“TTAB”) decisions. In 2015, the Supreme Court, in B&B Hardware,[1] decided in a…
No Wrong Notes: Federal Circuit’s Piano Factory Decision Holds TTAB in Tune with Arthrex
By Scott Skiles
This blog previously reported[1] that on June 21, 2021, the Supreme Court issued its landmark decision in United States v. Arthrex, Inc., holding – in Chief Justice Roberts’ 5-4 opinion – that “the unreviewable authority wielded by [administrative patent…
Federal Circuit Takes Judicial Notice of Wayback Machine Evidence of Prior Art
In its Aug. 17 decision in Valve Corporation v. Ironburg Inventions Ltd., the Federal Circuit appears to have cleared the way for district courts to take judicial notice of Wayback Machine captures as evidence of prior-art printed publications.
As many…
SY Custom, Inc. v. The Tailory, LLC: How To Fail Proving a Genericness Case Before the TTAB
Recently, the Trademark Trial and Appeal Board (TTAB) decided against a petitioner seeking to cancel a registration on the Supplemental Register in SY Custom, Inc. v. The Tailory, LLC, Cancellation No. 92070568 (TTAB Aug. 12, 2021) (not precedential). The mark…
Lost Profits or Disgorgement?
In trademark infringement cases involving competitors, the plaintiff typically seeks damages in the form of lost profits once infringement has been proven. The purpose of “lost profits” is to compensate the plaintiff for its losses. In contrast, disgorgement requires a…
“Teaching Away” – A Change To This Historically Inconsistent Doctrine
Teaching away is an important concept when considering the obviousness of a patent claim. The Federal Circuit’s recent decision in Chemours v. Daikin[1] makes it easier to find that a reference teaches away from an invention, potentially increasing the…