Global IP & Technology Law Blog

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One of the most common responses to being sued for patent infringement is a petition to the USPTO’s Patent Trial and Appeal Board (PTAB) challenging the validity of the patent. To avoid duplication of effort, either the Board or the tribunal can defer to the other. According to a recent decision, the U.S. International Trade Commission (ITC) will not defer to the PTAB in such situations. In Certain Automated Storage and Retrieval Systems, Robots, and Components thereof (337-TA-1228), Judge Lord emphatically confirmed that in order to conclude its investigations “at the earliest practicable time,” the ITC should not stay a…
In 2020, the PTAB increasingly denied otherwise meritorious petitions for review under its discretionary authority, as my partner Steve Auvil and I recently discussed. Many such denials were made in view of co-pending litigation under the so-called Fintiv factors adopted last May. The reaction to the PTAB’s approach was vocal and divided, and the USPTO received a record number of responses to its request for comments on the subject, but no changes have been made. Rather, the PTAB has designated as precedential two decisions where review was instituted despite co-pending litigation — confirming more precisely how its decisions will…
The Patent Trial and Appeal Board (PTAB) is an administrative law body of the US Patent and Trademark Office (USTPO) that determines disputes over the issuance, reissuance, and cancellation of patent claims. The PTAB has become well known to patent litigants since the implementation in 2012 of new proceedings, including Inter Partes Review (IPR), for challenging the patentability of issued patent claims. The Design and Use of IPRs IPRs were designed to be an alternative to litigation and are initiated with an IPR petition, which must be filed with the PTAB within one year of service of a corresponding infringement…
We are delighted to announce the promotion of our IP & Technology colleague Christopher (Chris) Adams to the partnership of Squire Patton. Chris was educated as a scientist and then worked in the IT industry for 10 years before becoming a lawyer. His experience as an intellectual property attorney over the last 12 years runs the gamut from patent prosecution to IP licensing, diligence and enforcement, enabling him to provide counsel on a “thicket” of IP issues for technology and other companies. Chris recently spoke with Law.com about his path to partnership, emphasizing that “Partnership Is Not Merely a Promotion”…
Molly-Mae Hague, 21-year old reality TV star from Love Island show, has been found in serious breach of CAP Code with an £8,000 giveaway, which the regulator ruled was not administered fairly. In our previous blog, we discussed the ruling of the Advertising Standards Authority (ASA) in relation to influencers and the use of social media filters. This recent ASA ruling yet again brings the role of influencers on social media under scrutiny, this time with a focus on the rules around prize draws, which are subject to the ASA rules and advice on competitions and advertising more generally.…
Since the mid-2000s, mention Marshall, Tyler, Sherman, Beaumont or Texarkana to an experienced patent litigator and you would get knowing nods about this string of small Texas towns, tips on their favorite BBQ or Tex-Mex restaurants, and war stories about the big patent wars fought there. The Eastern District of Texas, along with the District of Delaware and the Northern and Central Districts of California, rose to prominence as the primary battlegrounds for major technology companies and their non-practicing distant cousins (“NPEs”) to determine the scope and monetary value of their innovations. Given the Supreme Court’s restatement of venue requirements…
The Paris Court of Appeal confirmed a previous decision that found Jeff Koons guilty of copyright infringement for one of his “Banality” sculptures. The Paris Court of Appeal even increased the amount of damages and costs that were initially awarded in the first instance. Beyond the fact that, fortunately, it is quite rare that a famous artist is found guilty of plagiarism, this case is also interesting because Jeff Koons used more or less every defense in the (French) book. At the end of 2014 and beginning of 2015, the Pompidou Modern Art Museum organized a retrospective of the work…
The phenomenon of ‘fake news’ and spread of misinformation is not a new one, but advancements in technology, in particular ‘deepfakes’, have highlighted the seriousness of the threat in a way that has not happened before. Deepfakes have evolved significantly in recent years and the tell-tale signs (odd hand or mouth movements or odd pronunciation for example) that once gave the technology away are becoming harder to detect. Further, deepfakes are now extremely easy to create. The time is now to introduce regulation in this area in order to prevent negative uses of the technology and create an environment…
Squire Patton’s own Steve Auvil has been elected president of the newly-created Kathleen M. O’Malley Inn of Court. The Inn was chartered in Northeast Ohio to promote civility, ethics, professionalism and mentorship within the local IP bar. It is named after the Honorable Kathleen M. O’Malley, who started her judicial career as a judge on the United States District Court for the Northern District of Ohio and now serves as a Circuit Judge on the United States Court of Appeals for the Federal Circuit. The Honorable James S. Gwin of the United States District Court for the Northern District…
On March 11, 2021, the Federal Circuit issued a precedential decision in In re PTAB of Trustees of the Leland Stanford Junior University affirming a decision by the Patent Trial and Appeal Board (PTAB) to maintain the examiner’s rejection of claims involving analysis of genetic data to determine inheritance. The Federal Circuit found that the claims at issue were indeed directed to patent ineligible subject matter. This case demonstrates the difficulties of obtaining medical diagnostic claims, but also highlights that a potential path forward may have been possible with disclosure of specific treatment regimens in the specification. The Application at…
Although America Invents Act (AIA) patent practice is entering its 8th year, many pre-AIA patent applications remain pending. This requires practitioners to stay attentive as to whether examination is being conducted under pre-AIA practice, and to ensure that the pre-AIA rules are correctly applied. In this regard, to avoid unnecessarily ceding claim scope to disqualified prior art, it is imperative for practitioners to verify whether U.S. Patent and Trademark Office (USPTO) Examiners are properly applying pre-AIA 35 U.S.C. § 103 rejections. This can be challenging since the priority chain for a prior art reference can become quite complex, especially when…
A bipartisan group of Senators, including the Chair and ranking minority member of the Subcommittee on Intellectual Property, has proposed legislation that would allow the US Patent & Trademark Office to collect demographic data on patent applicants. The bill, known as the Inventor Diversity for Economic Advancement Act of 2021 or, more simply, the “IDEA Act,” comes as a response to increasing public concerns about the lack of diversity among inventors named on patents, and the inability of the USPTO to provide data to reliably assess the situation. The “idea” hearkens to a primary maxim of business…
We are delighted to share a recent journal article by our China IP expert, Paolo Beconcini, as published in the Review of Intellectual Property Law (RIPL). In this article, Dr. Beconcini provides a thorough and well-documented review of recent changes in China’s regulations on trade secret protection and enforcement. Many of these changes were made in response to the U.S. WTO lawsuit of 2018 and the U.S.-China Trade Wars, including shifting the burden of proof and lowering thresholds for criminal enforcement. The article assesses the implementation of promised changes, and provides suggestions for further changes as well as guidance to practitioners…
We are delighted to share an interesting article by our colleagues in France, Catherine Muyl and Marion Cavalier, about whether and how a common word in a regional dialect can qualify as a trademark in France. They describe a case where a company named Krampouz that makes plates for cooking crepes registered the marks “KRAMPOUZ” and “KRAMPOUZ BILLIG.” The word “krampouz” means crêpe in Breton, and “billig” indicates the cast iron plate on which crêpes are traditionally cooked. As they explain, such trademarking of local language terms that would be generic if translated can be successful under French law. As…
Back in July and December 2020, we wrote about the seeming rise in allegations of infringement allegations under the doctrine of equivalents (DOE) in life sciences cases. We noted that in those recent cases the Federal Circuit provided in-depth analyses of the application of DOE, prosecution history estoppel, and the various other limits on the DOE, and suggested that potential infringers needed to keep an eye on the substantive evolution of the doctrine. But a recent decision in Arendi S.A.R.L. v. Motorola Mobility LLC, Civ. Action No. 1-12-cv-01601 (D. Del.) (docket entry 250), reminds practitioners that before addressing the substantive…
In the last of his recent series of blogs on IP in China, Dr. Paolo Beconcini discusses amendments expanding the scope of design protection in China and predicts a new flood of “junk” design applications. He discusses the basis and requirements for Chinese design patents, including issues relating to functionality. He also discusses some structural issues that have contributed low-quality filings, including the lack of required substantive examination. The blog can be found here. The post Understanding IP in China: Design Patents appeared first on Global IP & Technology Law Blog.…