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 …

Patent Owners May Recover Lost Foreign Profits When Exporting Components from the U.S.

In WesternGeco LLC v. ION Geophysical Corp., No. 16-1011 (U.S. Jun. 22, 2018), the Supreme Court of the United States (“the Supreme Court”) ruled that a patent owner is entitled to seek lost foreign profits as part of damages relief under 35 U.S.C. § 284 (2011) when its patent is infringed under 35 U.S.C. § …

Lack of Early, Focused, and Supported Notice of Belief of Exceptional Litigation Behavior May Thwart Motion for Attorneys’ Fees Under 35 U.S.C. § 285

In Stone Basket Innovations, LLC v. Cook Medical LLC, No. 2017-2330, 2018 U.S. App. LEXIS 15670 (Fed. Cir. June 11, 2018), the United States Court of Appeals for the Federal Circuit affirmed the District Court’s order denying attorneys’ fees pursuant to 35 U.S.C. § 285 (2012). The District Court was found to have properly concluded …

Prior Art Status of Conference Handouts Depends on Multiple Factors, Including Expectations of Confidentiality

Takeaway: Determining whether materials distributed at a conference or meeting qualify as prior art “printed publications” under 35 U.S.C. § 102(b) requires evaluating all relevant factors, such as the expectations of confidentiality between the distributor and the conference attendees. The Federal Circuit recently clarified how to analyze the prior art status of materials distributed to …

When an Inter Partes Review is Instituted the USPTO is Required to Decide the Patentability of All Claims Challenged By Petitioner

In SAS Institute Inc. v. Iancu, No. 16-969 (Apr. 24, 2018), the Supreme Court of the United States ruled that when the Patent Trial and Appeal Board (“PTAB”) of the United States Patent and Trademark Office (“USPTO”) institutes an inter partes review, 35 U.S.C. § 318(a) (2011) requires the PTAB to decide the patentability of …

Defense of Equitable Estoppel Held Not to Apply to Claims Substantively Amended During Reexamination

The U.S. Court of Appeals for the Federal Circuit recently held that the U.S. District Court for the Eastern District of Arkansas abused its discretion in applying the defense of equitable estoppel based on activities that occurred prior to the issuance of the reexamination certificate where the asserted claims were substantively amended during ex parte …

Forum-Selection Clause in Patent License May Thwart Licensee’s Efforts to Seek PTAB Review of Licensed Patents

In Dodocase VR, Inc. v. MerchSource, LLC, No. 17-cv-07088, 2018 U.S. Dist. LEXIS 48654 (N.D. Cal. Mar. 23, 2018), the U.S. District Court for the Northern District of California recently ordered a licensee withdraw petitions filed with the Patent Trial and Appeal Board (PTAB) of the U.S. Patent and Trademark Office (PTO) to challenge the …

Attorney-Client Privilege Remains Intact When Inadvertently Produced Invention Records Are Promptly Clawed Back

The United States District Court for the Central District of California recently held attorney-client privilege applies to a company’s invention record reviewed by a committee including persons other than lawyers when the primary purpose is to obtain legal advice. Cal. Inst. of Tech. v. Broadcom Ltd., CV 16-3714-GW, slip op. at 5 (C.D. Cal. Mar. …

Takedown Requests Directed to Non-Parties may not be Sufficient to Establish Personal Jurisdiction in Declaratory Judgment Actions

The United States District Court for the Central District of California recently held that personal jurisdiction for a declaratory judgment action does not exist when, in addition to sending a cease-and-desist letter, the defendant sends a takedown request that is directed to a non-party. Jobar Int’l Inc. v. Juka Innovations Corp., No. LA CV17-07441 JAK …