Recently Formed “Precedential Opinion Panel” of the USPTO Issues First Decision, Addresses Joinder Rules and the One Year Time Bar for Petitioning for Inter Partes Review

The U.S. Patent and Trademark Office (“USPTO”) recently created a Precedential Opinion Panel (“Panel”) to establish “binding agency authority” for “issues of exceptional importance.” United States Patent and Trademark Office, Patent Trial and Appeal Board, Standard Operating Procedure 2 (Revision 10) (Sept. 20, 2018), available at https://www.uspto.gov/sites/default/files/documents/SOP2%20R10%20FINAL.pdf, at 1-3 (last viewed March 19, 2019).  These …

Supreme Court Resolves Circuit Split Holding That Registration by the Copyright Office is a Prerequisite to a Civil Action for Infringement

The United States Supreme Court recently clarified a significant issue of copyright law in Fourth Estate Public Benefit Corp. v. Wall-Street.com, LLC, No. 17-571 (Mar. 4, 2019), settling any dispute concerning when copyright owners may sue for infringement.  Copyright protection exists “in original works of authorship fixed in any tangible medium of expression.” 17 U.S.C. …

Questions of Inventorship and Pre-AIA Pitfalls: A Patent-Holder’s Earlier-Filed Patent May Anticipate A Later-Filed Patent Application When the Inventors Differ

Summary: A patent-holder’s own pre-AIA patent may be anticipatory prior art, which invalidates a patent that issued from a later-filed patent application, under pre-AIA 35 U.S.C. § 102(e) if the inventors are not the same in both patents. When an invention is developed by a team, apportioning credit can be difficult.  Nonetheless, the inventors, applicants, or …

Sales That Do Not Publicly Disclose Invention Details May Still Bar Patentability Under the AIA

Summary:  Details of an invention under a commercial sale, or offer to sell, need not be publicly disclosed to trigger the “on sale” bar under 35 U.S.C. § 102(a) of the Leahy-Smith America Invents Act (AIA). The Supreme Court of the United States upheld a decision from the Court of Appeals for the Federal Circuit …

Obtaining an Opinion of Counsel May Mitigate the Risk of a Finding of Willful Infringement

Summary: To defend against a claim of willful patent infringement, a timely and competent opinion of counsel may be utilized to establish a good faith belief of non-infringement or invalidity of an asserted patent. The United States District Court for the Eastern District of Texas concluded that a reasonable jury could find a defendant willfully …

Associated Press Fumbles Handoff of Copyright License From Photographers to the NFL

Summary: A recent decision from the Second Circuit elucidates two notable points regarding copyright licenses.  First, a licensee of a copyright cannot create a license or sublicense that would extinguish an accrued right, such as a right to sue for copyright infringement, of the licensor.  Second, in at least some cases, a claim for violation …

IPR Petitioners with Significant Research and Commercial Activities May Possess Standing for an Appeal

Summary:  Inter partes review (“IPR”) provides an avenue to challenge the validity of a patent before there is a specific threat of infringement litigation by a patent owner.  While a petitioner dissatisfied with the outcome of an IPR proceeding may appeal to the Federal Circuit, the petitioner must demonstrate an injury-in-fact sufficient to confer Article …

For Venue Purposes in Patent Lawsuits, Unincorporated Entities May Reside in Their State of Organization

Summary: For purposes of the patent venue statute, district courts are likely to find an unincorporated entity resides in the state under whose laws the entity is organized, with the entity’s principal place of business establishing the particular judicial district in which the entity resides if the state has more than one judicial district.  Parties …

IPR Petitioners without Concrete Plans for Potentially Infringing Activity May Lack Standing for an Appeal to the Federal Circuit

Summary:  PGR and IPR proceedings may offer a cost effective pathway to preemptively challenge the validity of a patent.  While a party dissatisfied with the outcome of such a proceeding may appeal to the Federal Circuit, a party not currently engaging in infringing activity but instead relying on potential infringement liability may lack Article III …

A Determination of a Trademark’s or Service Mark’s Genericness and Descriptiveness Must be Made Before Determining Whether the Mark has Acquired Distinctiveness

The United States Court of Appeals for the Federal Circuit (“the Fed. Cir.”) recently held that, before determining whether a descriptive mark has acquired distinctiveness under the Lanham Act, the Trademark Trial and Appeal Board (“the Board”) must first determine (a) the mark’s status as generic vs. non-generic, and (b) the extent of descriptiveness of …