The US Court of Appeals for the Federal Circuit affirmed in part and dismissed in part a district court’s final judgment for lack of jurisdiction, concluding that the judgment below was final only as to one of multiple defendants. Iron
IP Update
Exploring the Latest in Intellectual Property Law
IP Update, published by McDermott Will & Emery, focuses on developments in intellectual property law including patent litigation, design patent eligibility, inter partes review procedures, and patent office regulations. The blog covers case law analysis, procedural guidance for patent trials, and updates on patent office policies such as priority restoration and fee waivers. It addresses issues like patent infringement disputes, functional versus ornamental design patentability, confidentiality in patent hearings, and disclosure requirements in settlement agreements. The content is aimed at legal professionals and stakeholders interested in patent law, patent office practice, and related intellectual property matters.
Where Claimed Points of Novelty Have Primarily Functional Purpose, They Fail “Ornamental Design” Patentability Requirement
The Patent Trial and Appeal Board (Board) designated as informative a decision on institution of a post-grant review (PGR), which set forth an analysis for determining whether a design patent’s claims are primarily functional and therefore not patentable under 35…
PTAB Sets Forth Procedure for Confidential Oral Hearings
By Amol Parikh
The Patent Trial and Appeal Board (PTAB) designated as informative a decision explaining the procedure for holding oral arguments where confidential information will be discussed. Curt G. Joa, Inc. v. Fameccanica.Data S.P.A., Case No. 2016IPR-00906 (PTAB June 20, 2017) (Chagnon,…
No Hiding from § 317(b): Collateral Agreements Referenced in IPR Termination Agreement Must Be Disclosed
The Patent Trial and Appeal Board (Board) designated as precedential a decision on a motion to terminate under § 317(a), finding that any collateral agreements referred in the parties’ agreement to terminate a pending inter partes review (IPR) must be filed…
PTO Extends Time to Petition for Restoration of Right of Priority or Benefit
The US Patent and Trademark Office (PTO) extended the time to petition for restoration of the right of priority or benefit to certain prior-filed applications. Pursuant to the Coronavirus Aid, Relief, and Economic Security Act and 37 CFR § 1.183,…
Second Circuit Avoids “Making Up” Copyright Ruling Finding Artist’s Claims Preempted
By Sarah Bro
In a non-precedential ruling, the US Court of Appeals for the Second Circuit affirmed the dismissal of a makeup artist’s lawsuit filed against a fashion photographer, finding the plaintiff’s state unjust enrichment and unfair competition/misappropriation claims were preempted by the…
Non-Infringement Need Not “Be Actually Litigated” to Invoke Kessler Doctrine
By Mandy H. Kim
Addressing the issue of claim preclusion, the US Court of Appeals for the Federal Circuit affirmed the district court’s holding that patent infringement customer lawsuits were precluded in view of a prior action against a website proprietor that was dismissed…
Too Early to Hang Up on Click-to-Call
In the wake of its six-week-old decision in Thryv, Inc. v. Click-to-Call Technologies, LP, the Supreme Court of the United States has now granted certiorari in an appeal of another case arising from a Federal Circuit appeal from a Patent…
Announcement: USPTO COVID-19 Prioritized Examination Program
The United States Patent and Trademark Office (USPTO) has announced a new prioritized examination program to expedite the examination of applications for marks used to identify qualifying COVID-19 medical products and services. Applications that qualify for the program will immediately…
Texas Appeals Court: Try Again, and This Time Get the Jury Instructions Right
By David Mlaver
A Texas Court of Appeals reversed a jury verdict for the plaintiff on claims of trade secret misappropriation under the Texas Uniform Trade Secrets Act (TUTSA) and fraud. The Court reversed the misappropriation verdict because the jury form commingled valid…