Our monthly Intellectual Property Update sheds light on important IP events and decisions from the preceding weeks.
Index to Our Newsletter
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IP Update, August 2018
- Those who would claim rights to inventions funded by federal grants should take note of changes to the Bayh-Dole Act. More . . .
- With new legislation, Massachusetts curtails the ability of employers to impose non-competition agreements. More . . .
- The Commonwealth has joined the rest of the nation in adopting the Uniform Trade Secrets Act, expanding some remedies for misappropriation. More . . .
- The Supreme Court says the Patent Act, which generally extends only to conduct occurring within the U.S., allows for enforcement of a U.S. patent against one specific overseas activity—the supplying of U.S.-made components to be assembled overseas in an infringing device. More. . .
- A PTO memorandum, relying on a recent Federal Circuit decision, provides the life sciences industry with guidance on how to qualify method-of-treatment claims as patent-eligible subject matter. More. . .
- The recently signed Right to Try Act enables terminally ill patients to try experimental drugs that have completed Phase I testing but have not been approved by the FDA. It adds but little to existing “compassionate use” programs. More. . .
- A new study correlates companies’ pursuit of trademark registrations with the growth of their businesses. More. . .
- California’s new data privacy law requires many of the same protections that recently took effect in the EU. More. . .
- Litigation between two titans concludes with a holding that Sun’s application programming interfaces (APIs) are protectable by copyright and that Google’s copying them in order to clone the Java platform for purposes of its Android operating system was not fair use. More. . .
- Recent Federal Circuit decisions point to patent-drafting techniques that can redeem biopharma inventions from eligibility challenges. More. . .
- Courts have grappled with whether federal warrants that target, for example, a Microsoft customer’s e-mail account, extend to digital information stored outside the US. New legislation will gladden law enforcement investigators. More. . .
- Owners of software inventions get yet another lift from the Federal Circuit, which says factual issues may thwart early challenges to patent eligibility. More. . .
- The Federal Circuit has lightened the load for patent owners trying to prove that multiple parties share liability for infringement. More. . .
- Make sure each inventor has made an ironclad assignment of her rights, or the ability to enforce the patent will be lost. More. . .
- Can a trademark licensee continue to enjoy his rights if the licensor goes bankrupt? Federal courts are now split on the issue. More. . .
- Internet service providers can forfeit their immunity from copyright infringement if they ignore repeated notices of their customers’ wrongdoing. More. . .
- Our firm is represented on the committee drafting new rules to streamline patent litigation in the District of Massachusetts. A key goal is to make that court a more appealing venue for patent owners seeking to enforce their rights. More. . .
- Recent Federal Circuit decisions dispel the gloom that owners of software inventions felt after the Supreme Court’s decision in Alice (2014). Increasingly, software patents are surviving the requisite eligibility analysis. More. . .
- Congressional tax legislation directly affects the eligibility of patents for favorable treatment as capital assets. More. . .
- Take proceedings before the Trademark Trial and Appeal Board seriously. You might be precluded from relitigating in court any issues decided by that tribunal. More. . .
- Through artful interpretation of the Supreme Court’s rigid guidelines in Alice (2014) for determining patent-eligibility, the Federal Circuit has recently offered patent protection to once seemingly endangered inventions. More. . .
- Amending a patent claim in the midst of an inter partes review (IPR) is still hard for a patent owner, but the Federal Circuit has just made it a bit easier. More. . .
- Get your IPR arguments right the first time: The patent office sees objectionable unfairness in second-bite challenges to a patent’s validity. More. . .
- The Eastern District of Texas has embraced its longtime status as a patent owner’s favorite trial court. The Federal Circuit has now cautioned that court to take seriously last summer’s Supreme Court decision restricting where corporations can be sued. More. . .
- An arbitration clause in a patent license cannot be avoided even when the licensee calls the patent’s validity into question. More. . .
- Read our roundup of IP cases on this season’s Supreme Court docket. More. . .
IP Update, June 2017
- Patentees have long had their choice of courts in which to file infringement lawsuits, often seeking advantage in the Eastern District of Texas. The Supreme Court has now drastically curtailed where an allegedly infringing corporation can be sued. More. . .
- The patent office had taken a sweeping view of which business-method patents in the financial industry were subject to validity challenges under the America Invents Act. This expansiveness oversteps legal bounds, declares the Federal Circuit. More. . .
- A license negotiated to settle a patent infringement lawsuit can be used to quantify “reasonable royalty” damages in a later patent suit. The Federal Circuit provides guidelines. More. . .
- Patentees with global aspirations should file in China given the country’s economic might and its enhanced protections for intellectual property. More. . .
- The on-sale bar continues to be a strict obstacle to the patentability of inventions that have experienced certain commercial activity, despite some seemingly softer language in the America Invents Act. More. . .
- Cybersecurity is of deep concern to state law enforcement, as illustrated by a consent judgment that imposes strict measures on Target Corp. to improve customer-data protection. More. . .
- Once a patent owner sells a patented product anywhere in the world, it can no longer exert patent rights to control the use or resale of that product, the Supreme Court says. More. . .
IP Update, April 2017
- It used to be risky for a patent owner to lie in wait for several years before suing a suspected infringer. That risk is gone, now that the Supreme Court has struck down the laches defense to infringement suits. More. . .
- The designs on cheerleader uniforms are not high art, but they have enough pictorial quality independent of the uniforms to qualify for copyright protection. The Supreme Court’s decision brings cheer to the fashion industry. More. . .
- It’s easy for an accused infringer to say the asserted patent is an obvious combination of existing innovations. It’s much less easy, however, to prove that a motivation to combine existed, which is critical to an obviousness defense. More. . .
IP Update, February 2017
- Parody protected: Louis Vuitton not only loses a trademark infringement suit against a canvas-tote maker that poked fun at the pricey bags but is faulted for lacking a sense of humor. More. . .
- No standing: A non-infringer who initiates an IPR may not be able to show sufficient stake in the outcome to appeal an adverse decision of the PTAB. More. . .
- Eleventh Amendment to the rescue: Sovereign immunity is ruled to protect state universities from having their patents challenged in the patent office. More. . .
- Supreme Court cheat sheet: Here’s a rundown of IP cases to be decided this term. More. . .
- Sometimes, it takes a village to infringe a patent. The combination of doctors advising patients to take vitamins before chemotherapy and patients following that advice is held to infringe a method of administering a drug. More. . .
IP Update, November 2016
- Our litigation victory for Iatric Systems contributes to recent jurisprudence on the dividing line between software inventions that are eligible for patent protection and those that aren’t. More. . .
- Challenging the validity of your competitor’s patent before the patent office is an attractive strategy. It can also, however, leave you more vulnerable in a subsequent infringement lawsuit. More. . .
IP Update, June 2016
- Software inventions that improve computer functionality stand a better chance of passing the Supreme Court’s patent-eligibility test than software that merely implements well-known business practices. More. . .
- Due to the broad reach of assignor estoppel, a company that sells a patent will often be barred from challenging its validity if the company is later sued for infringing that patent. More. . .
- The Supreme Court has changed the calculus for litigants, making it easier for patentees who win at trial to recover enhanced damages, up to triple the amount awarded for infringement. More. . .
- In inter partes reviews (IPRs), the parties must be given the chance to argue the validity of a challenged patent claim in the wake of any new claim construction that the Patent Trial and Appeal Board develops during the course of the proceeding. More. . .
- Google copied 170 lines of Oracle’s code to enable the operability of Android apps on the popular Java platform. A jury has decided this was fair use under copyright laws. More. . .
- The First Circuit has adapted a VCR-era statute to protect the privacy of mobile phone subscribers. More. . .
- A trial court decision casts doubt on the value to retailers of “comprehensive” cybersecurity insurance policies. Some expensive consequences of a security breach may not be covered. More. . .
IP Update, April 2016
- How much control can a patent owner retain over the use or resale of a product covered by his patent? The Federal Circuit’s answer raises shades of the first-sale doctrine under copyright law. More. . .
- Will patent holders ever catch a break in defending against validity challenges in the patent office? Apparently not: Recent decisions give challengers a second bite at the apple–in federal court. More. . .
- The patent office and the federal courts interpret patent claims according to different standards. The Federal Circuit harmonizes the disparity, but the Supreme Court may soon take a different view. More. . .
- These are the high points of the new trademark regulations that the European Union has just put into effect. More. . .
- Any U.S. company that receives personal data from EU businesses should know about the demanding new Privacy Shield rules. More. . .
IP Update, February 2016
- US companies doing business in Europe must navigate between the EU’s reverence for data privacy and the US’s emphasis on law enforcement. The regulatory situation is now chaotic. More. . .
Patent owners often ask the International Trade Commission to bar the importation of infringing goods. Recent court decisions both expand and contract the ITC’s jurisdiction. More. . .
The Google Books project continues to push the boundaries of fair use. The Second Circuit is the latest court to examine the elasticity of that doctrine. More. . .