Patent Exhaustion May Not Protect Parties Upstream of an Initial Authorized Sale of a Patented Product

SUMMARY: Patent exhaustion can protect parties downstream of an initial authorized sale of a patented product in the chain of commerce but may not protect parties upstream of the sale.  In this respect, when a retailer is granted a license from a patent holder to sell an otherwise infringing product, any upstream parties, such as …

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 …

Allison Richmond and Seth Jones Elected Principals

Dority & Manning is proud to announce the election of Allison L. Richmond and Seth E. Jones as Principals of the firm. Allison and Seth have been practicing intellectual property law with Dority & Manning since 2011. Seth specializes in strategic patent portfolio management and has extensive experience in drafting and prosecuting both U.S. and …

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 …