Addressing the scope of the Patent Trial and Appeal Board’s (“Board”) discretion under 35 U.S.C. § 325(d) to deny institution, the Board designated three opinions as precedential or informative.
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 9
Ninth Circuit Gleefully Rejects Copyright Claims against California High School
By Sarah Bro
Affirming a district court’s summary judgment in favor of various defendants, including the vocal music director and parent volunteers at Burbank High School (whose competitive show choirs reportedly inspired the television series “Glee”), the US Court of Appeals for the…
No Trade Dress Protection for Functional Shape and Color Scheme
By Kyra Batté
Addressing the scope of trade dress protection, the US Court of Appeals for the Fourth Circuit found that the shape and color scheme of a product was functional and therefore only eligible for patent law’s protection of utilitarian inventions. CTB,…
“Method of Preparation” Claims Found Patent-Eligible Under §101
By Mandy H. Kim
Addressing the issue of patent eligibility under §101, the US Court of Appeals for the Federal Circuit reversed a district court, explaining that the method of preparation claims at issue are not directed to a patent-ineligible natural phenomenon. Illumina, Inc.…
SCOTUS Sinks the CRCA, Confirms States are Immune from Copyright Suits
By Sarah Bro
The Supreme Court of the United States issued a unanimous decision invalidating the Copyright Remedy Clarification Act (CRCA), a 1990 statute intended to provide copyright owners with the power to sue a US state government for infringement, and held that…
“Lightly Sketched” Characters Not Copyrightable
By Cecilia Choy
The US Court of Appeals for the Ninth Circuit affirmed that “lightly sketched anthropomorphized characters representing human emotions” were not copyrightable. Daniels v. Walt Disney Co., Case No. 18-55635 (9th Cir. Mar. 16, 2020) (McKeown, J.).
Denise Daniels created The…
No Disclaimer, No Problem – Terms Limited by Consistent Statements
In an appeal from the Patent Trial and Appeal Board (PTAB), the US Court of Appeals for the Federal Circuit found claim construction error and reversed the PTAB’s finding that all instituted claims were unpatentable. Personalized Media Commc’ns, LLC v.…
Nefarious Motives Could Mean No Declaratory Judgment for You
By Jodi Benassi
The US Court of Appeals for the Federal Circuit affirmed a district court’s decision to dismiss a first-filed declaratory judgment complaint, finding that equitable considerations warranted departure from the first-to-file rule. Communications Test Design, Inc. v. Contec, LLC, Case No.…
Rock Dust Dust-Up: Failure to Preserve Issues, Present Evidence at Trial Dooms Appeal
By David Mlaver
The US Court of Appeals for the Federal Circuit affirmed a jury verdict of infringement of a design patent on grounds that purported appellate issues had not been properly presented to the trial court. Hafco Foundry and Machine Co., Inc.…
Administrative Patent Judges – You’re Fired (At Will and Without Cause)
The en banc US Court of Appeals for the Federal Circuit declined to review its October 2019 panel decision holding the appointment of administrative patent judges (APJs) at the US Patent and Trademark Office (PTO) unconstitutional because APJs are appointed…