The Patent Trial and Appeal Board (Board), in a decision designated as precedential, found that a Patent Owner’s substitute claims were patentable in view of evidence of secondary considerations even though the prior art weighed in favor of obviousness. Lectronics,
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 7
Ricky Martin’s “Vida” Lives On, but Plaintiff Will Get Another Shot at It
Addressing whether a copyright infringement claim should be dismissed with prejudice where the plaintiff failed to register his copyright prior to filing the lawsuit, the US Court of Appeals for the First Circuit held that dismissal is too harsh, remanding…
11th Circuit Tells Guitar Maker to Take a [Pantera] Walk on Delayed Copyright Claims
By Sarah Bro
Affirming a summary judgment in favor of defendant, the US Court of Appeals for the Eleventh Circuit determined that a copyright infringement lawsuit pertaining to the graphic design on a guitar made famous by a late heavy metal guitarist, was…
No Summary Judgment Where Primary Reference Might Not Be “Basically the Same” as Asserted Design Patent
The US Court of Appeals for the Federal Circuit found that the district court improperly resolved a genuine dispute of material fact with respect to summary judgment of invalidity for design patent obviousness because a reasonable fact finder could have…
No Disgorgement When Injunction is Sufficient Remedy
By Jodi Benassi
Addressing issues related to the disgorgement of profits and attorneys’ fees in a trademark infringement lawsuit, the US Court of Appeals for the Eighth Circuit affirmed a denial of such fees and profits. Safeway Transit LLC and Aleksey Silenko v.…
Claims Need Only Inform a Skilled Artisan of the Metes and Bounds with Reasonable Certainty
In a case involving claims with functional language and means-plus-function limitations, the US Court of Appeals for the Federal Circuit found that the district court erred in its determination that three claim terms were indefinite, but agreed with the district…
Prima Facie Obviousness Established Where Claimed pH Range Overlaps with Prior Art Range for Similar Compounds
By Mandy H. Kim
The US Court of Appeals for the Federal Circuit reversed a district court’s summary judgment that found a patent was not obvious because the claimed pH range would not have been obvious-to-try despite overlapping ranges between the claimed pH range…
Claimed Process Not Anticipated by Third-Party’s Prior Secret Use
Declining to extend the public-use bar to third-party commercial uses of secret processes, the US Court of Appeals for the Federal Circuit reversed a summary judgment ruling that found a patent invalid under the “known or used by others,” “on-sale”…
Federal Banks are “Persons” Under the AIA
By Amol Parikh
The US Court of Appeals for the Federal Circuit held that the Federal Reserve Banks of several cities are “persons” under the America Invents Act (AIA) and therefore may petition for post-issuance review under the AIA. Bozeman Financial LLC v.…
Lights Turned Out on Validity Finding
By Yoshiko Ito
Finding that the Patent Trial and Appeal Board’s (PTAB) anticipation and obviousness decisions resulted from an erroneous interpretation of the claim language and a misunderstanding of case law, the US Court of Appeals for the Federal Circuit vacated the PTAB’s…