Case Law Updates

SCOTUS Confirms That Salaries of USPTO Legal Staff Are Not “Expenses” That An Applicant/Plaintiff Must Pay In a Civil Action Under 35 U.S.C. § 145.

Written by: Shayne D. Rasay In Peter v. NantKwest, Inc., the Supreme Court established a bright-line rule that the United States Patent and Trademark Office (PTO) may not recover legal personnel fees as “expenses” under 35 U.S.C. § 145. The language referencing “expenses” in § 145 states that “[a]ll the expenses of the proceedings shall […]

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Alice Meets Automotive: Damping Propshaft Latest Automotive Innovation Deemed Ineligible by Federal Circuit

Written by: Andrew J. Koopman With its latest application of Alice precedent, the Federal Circuit affirmed the invalidation of claims covering methods for manufacturing propshafts in American Axle & Manufacturing, Inc. v. Neapco Holdings LLC.  The Court’s ruling is the latest in a line of recent cases upholding judicial exceptions to subject matter eligibility in the face […]

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A Temporary (?) Open Season on Four Letter Words at the PTO; Supreme Court Overturns the Lanham Act’s Bar on Registration of Immoral and Scandalous Trademarks

Written by: Rex. A Donnelly Following on its decision two terms ago that the Lanham Act’s bar on the registration of “disparaging” trademarks violated the First Amendment (Matal v. Tam, 582 U. S. ___ (2017)), the Supreme Court has now struck the related bar on registration of “immoral or scandalous” trademarks.  Both bars infringe the […]

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Supreme Court Holds Trademark Licensees Can Continue Using Marks after Termination by Bankrupt Licensors, but Leaves Goodwill Exposed

Written by. Rex A. Donnelly The Supreme Court’s May 20 decision in Mission Product Holdings, Inc. v. Tempnology, LLC resolved a dispute among the circuits and may have had some trademark licensees breathing a sigh of relief – no longer will a debtor-in-possession-licensor’s rejection of a license agreement terminate all rights of the licensee to […]

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Discretionary Denials Gain Momentum at the Patent Trial and Appeal Board

Written by: Benjamin E. Leace & Christopher H. Blaszkowski On May 7, 2019, Patent Trial and Appeal Board (PTAB) designated multiple decisions as precedential and informative.  Each of the newly designated decisions described below relate to the PTAB’s inherent authority under 35 U.S.C. § 325(d) and 35 U.S.C. § 314(a) to deny institution even where […]

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Alice Meets Automotive: Electric Vehicle Charging Patents Found Abstract at Federal Circuit

Written by: Andrew J. Koopman In ChargePoint, Inc. v. SemaConnect, Inc., the Federal Circuit has affirmed a ruling of patent ineligible subject matter for four patents covering electric vehicle charging technology.  The Court’s ruling, which affirmed the District of Maryland’s grant of a motion to dismiss under 35 U.S.C. § 101, sheds doubt on the vitality […]

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IPR Appeal? Not Without Standing (and not if Moot), According to the Federal Circuit.

Written by: James Matthew Gould There is now a clear line between the statutory right of any party (other than the patent owner) to file a petition for inter partes review (IPR), and the additional Article III requirements to appeal an adverse final written decision resulting from that proceeding.  Relying on this new distinction yesterday, […]

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Under AIA, A Sale is A Sale (and Invalidating), Even If Confidential

Written by: Christopher H. Blaszkowski Today, the Supreme Court applied long-standing case law to the America Invents Act (2012) (“AIA”) in holding that a commercial sale, even if kept confidential, is invalidating as it places the invention “on sale” under 35 U.S.C. §102(a)(1).  Helsinn Healthcase S.A. (“Helsinn”) is a pharmaceutical company that developed and produced […]

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Post Grant Proceedings to Apply Phillips Claim Construction Standard to All Petitions Filed On or After November 13, 2018

Written by: Christopher H. Blaszkowski On October 10, 2018, the U.S. Patent and Trademark Office issued a final rule changing the claim construction standard applied during inter partes review, post-grant review, and covered business method proceedings (collectively, “AIA proceedings”).  The final rule revises the claim construction standard in AIA proceedings from the previously applied broadest […]

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USPTO Proposes Rulemaking to Require the PTAB to Construe Claims According to Phillips in AIA Trials

Written by: Christopher H. Blaszkowski & Alyssa R.M. Pugh The USPTO has issued a notice of proposed rulemaking concerning its intention to replace the current “broadest reasonable interpretation” (BRI) claim construction standard in AIA trials with the “ordinary and customary meaning” standard set forth in Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. […]

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