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 […]
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 […]
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 […]
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 […]
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 […]
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 […]
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, […]
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 […]
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 […]
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. […]
