Addressing the propriety of the trial court’s jury instruction regarding willful infringement, the US Court of Appeals for the Federal Circuit found that descriptors such as “egregious behavior” and whether an infringer is “worthy of punishment” are inappropriate for a
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.
Latest from IP Update - Page 13
Prior Covenant Insulates Party from Suit Despite Later Agreement
In a divided panel decision, the US Court of Appeals for the Federal Circuit concluded that a merger clause in the parties’ settlement agreement did not extinguish a prior covenant not to sue. Molon Motor & Coil Corp. v. Nidec…
Making the Most of Markush
The US Court of Appeals for the Federal Circuit expanded the Markush doctrine, determining that the claim language “comprising . . . [at least] . . . a group consisting of . . .” absent some basis or extrinsic evidence…
PTAB Final Written Decisions Are, After Appeal, Actually Final
The US Court of Appeals for the Federal Circuit affirmed a district court judgment that the owner of a patent with claims declared unpatentable by the Patent Trial and Appeal Board (PTAB) in an inter partes review (IPR) may not…
Room Temp Prior Art Has Chilling Effect on Broadening Claim Language
In a case involving a patented method for purifying antibodies, the US Court of Appeals for the Federal Circuit determined that the process of chilling a composition to below room temperature could be found both obvious and anticipated by a…
IPR Institution Requires Reasonable Likelihood that Reference Is Printed Publication
By David Mlaver
In a precedential opinion, the Patent Trial and Appeal Board (PTAB) held that, for institution of an inter partes review (IPR) based on a printed publication, the petitioner must establish a reasonable likelihood that the reference is a printed publication.…
Copycat Fight: Office Depot Isn’t ‘Licensee’ of Materials Copied for Customers
The US Court of Appeals for the Ninth Circuit affirmed a district court dismissal of a lawsuit brought by a nonprofit licensor of copyrighted math materials against a commercial duplicating company that copied the materials for licensee school districts for…
A Mixed Bag on New Rules – Juggling Copyright Preclusion and Patent Infringement
Addressing issues of copyright and patent infringement, the US Court of Appeals for the Federal Circuit found that the Federal Insecticide, Fungicide, and Rodenticide Act did not preempt copyright protection and that patent infringement under 35 U.S.C. § 271(g) does…
Determination of ‘Exceptional’ Under § 285 Must Be Made at the ‘Case’ Level
Addressing the proper test for shifting fees under 35 U.S.C. § 285, the US Court of Appeals for the Federal Circuit held that a district court erred when it shifted fees to the accused infringer because the district court found that…
Practicing Product Must Be Essentially Claimed Invention to Link Secondary Considerations to Patent Claims
Raising the hurdle for proving secondary considerations, the US Court of Appeals for the Federal Circuit found that the “coextensiveness” requirement for purposes of nexus requires that the practicing product be “essentially the claimed invention.” FOX Factory, Inc. v. SRAM,…