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February 2015 News

In Ericsson, Inc., et al v. D-Link Systems Inc., et al, No. 2013-1625, -1631, -1632, 1633, a case relating to Wi-fi technology, the Texas federal judge upheld a 2013 jury verdict that found that D-Link Systems, Netgear Inc., and five other companies infringed three Ericsson patents and rejected defendants’ request for a new trial. More specifically, the Federal Circuit held that for “standard essential patents” (“SEPs”), which are patents that cover specific technology that a certain industry standard requires such that complaint devices necessarily infringe certain claims in the patent, many of the standard Georgia-Pacific factors, which are factors used to determine reasonable royalties, do not apply to cases involving SEPs. We also reflect on the Alice Corporation Pty. Ltd. v. CLS Bank International, et al., 134 S. Ct. 2347 (2014) decision, which has now confirmed that what used to be a much laxer § 101 subject matter gatekeeper has transformed into a relentless business method patent-barring nightmare for many. The Supreme Court held that transforming a long-known method of reducing risk in financial trading to be implemented by a computer does not overcome a §101 subject matter rejection. Although the ruling provided some guidance in terms of how computerrelated patents should be written to avoid an Alice rejection, most practitioners and industry experts are unsatisfied with the “we’ll know it when we see it” attitude that seems to be spreading throughout the lower court holdings. Additionally, we discuss a recent case from the U.S. Court of Appeals for the Federal Circuit, e.Digital Corp v. Futurewei Techs., Inc., et al, No. 3:13-cv00783,No. 2014-1019, -1242, -1243 (Fed. Cir. Nov. 19,...

October 2014 News

Elon Musk’s Space Exploration Technologies, Corp. (SpaceX) is challenging a patent on which Jeffrey Bezos, CEO of Amazon.com, is a named inventor. SpaceX has initiated an inter partes review stating that the patent belonging to Blue Origins is invalid for obviousness. The documents SpaceX cites in its petition address similar systems and technologies that relate very closely to the technology covered by the invention. We also reflect on the past Supreme Court term, during which the Supreme Court decided an unprecedented amount of intellectual property cases. This not only demonstrates the increasing importance of intellectual property to the nation’s economy, but also the importance of evolving the law to meet our changing technological landscape. Additionally, we discuss the USPTO’s release of a new examination guide, “Service Mark Specimens.” In the article, we explain what specimens are, the different types of specimens, and what kind of trademark applications require them. In addition, we explain how the new USPTO guide should help to clear up confusion regarding service mark specimens and help applicants avoid delays and overcome specimen refusal in use-based trademark applications. Finally, we discuss how USPTO Post-Grant Proceedings work and their potential to change how patents are challenged. These administrative proceedings, created by the America Invents Act in 2011, are cheaper and more expeditious alternatives to litigation which theoretically make it easier for patentees to strengthen their patents and competitors to challenge them. Elon Musk v. Jeff Bezos: SpaceX Challenges Reusable Rocket Patent Elon Musk’s SpaceX is challenging a patent on which Jeffrey Bezos, CEO of Amazon.com, is a named inventor. SpaceX has initiated an inter partes review stating...

August 2014 News

In Limelight v. Akamai, the Supreme Court unanimously overturned the Federal Circuit’s rule on induced patent infringement. The Court reaffirmed the requirement that induced infringement cannot occur without direct infringement. In the case of method patents, there is no direct infringement unless all the steps of the patent are carried out by a single actor. While the Court did not address the merits of the Federal Circuit’s single-actor rule, the Federal Circuit will have the opportunity to revisit it on remand. We also discuss the Supreme Court’s new standard for indefiniteness articulated in Nautilus v. Biosig. In this case, the Court reversed the Federal Circuit’s “insolubly ambiguous” standard and held that a patent is invalid for indefiniteness if its claims, viewed in light of the patent’s specification and prosecution history, fail to inform those skilled in the art of the scope of the invention with reasonable certainty. Additionally, we discuss how to record federally registered trademarks at the U.S. Customs & Border Protection (CBP). When a trademark is recorded, the CBP is able to prevent the importation of goods that infringe on that trademark. The CBP also can impose fines and request the U.S. Attorney’s Office to criminally prosecute counterfeiters. As a result, the CBP can be an important ally in protecting federally registered trademarks. Finally, we discuss an emerging national trademark dispute regarding the chant used to cheer the U.S. Men’s Soccer Team during the FIFA World Cup. With at least four entities asserting ownership rights, it is unclear who will reap the benefits of this popular chant. Supreme Court Overrules Federal Circuit in Limelight v. Akamai On...

July 2014 News

In Alice Corp. v. CLS Bank the Supreme Court addressed the patent eligibility of computer-related patents under 35 U.S.C. § 101. The Court adopted a two-part test from Mayo Collaborative Services v. Prometheus Laboratories to determine whether patent claims fall under the abstract idea exception. This holding will have a significant impact on software patents, particularly on how they are drafted. We also discuss the recent TTAB ruling to cancel six of the Washington Redskins trademark registrations. This marks the second time the board has ruled that the Redskins trademarks were disparaging to Native Americans at the time they were registered. If the ruling stands, the Redskins would still be able to use their trademarks but will lose the benefits of federal registration. However, the registration will not be canceled until the Redskins exhaust all of their appeals. Additionally, we discuss Tesla’s move to “release” all of its patents. With its announcement on June 12, 2014, Tesla hopes to become the first open source car company. Tesla’s patent “release” is an invitation to cross license with car companies and other innovators in the electric vehicle market. This could lead to a more competitive market for electric cars and the expansion of the electric vehicle network and infrastructure. While Tesla gives the impression that it is disclaiming its patent rights, it is really showing ways of using patents effectively. Alice Corp. v. CLS Bank: Supreme Court Decision On June 19, 2014, the Supreme Court of the United States unanimously affirmed the Federal Circuit holding that Alice Corp.’s patents were ineligible subject matter under 35 U.S.C. §101. The Court adopted the...

April 2014 news

In Lexmark v. Static Control, the Supreme Court resolved a three-way split in the Federal Circuit courts regarding the standing requirements to bring a suit for false advertising under the Lanham Act. After considering the three tests used in the Federal Circuit courts, the Supreme Court found none of them to be appropriate and instituted a new “zone of interests” test. To have standing in a false advertising claim under the Lanham Act, a claimant must allege an injury to a commercial interest in reputation or sales, and the injury must have been proximately caused by the violation of the statute. We also discuss the enforceability of patents for space-based technologies. As a general matter, patents are territorial and unenforceable beyond the nation in which they are issued. In the case of space-based technology, a patent attaches to a country if it is made or launched there, or is otherwise under the jurisdiction or control of that country. However, there are several loopholes that could allow infringing users to render a patent unenforceable. We discuss these loopholes and how to avoid them. Additionally, we discuss the new pilot program launched by the USPTO, the Glossary Pilot Program to promote patent claim clarity. The USPTO will accept 200 petitions under the pilot program. Participation is completely optional, but incurs the benefit of accelerated examination. Lexmark v. Static Control: Supreme Court Resolves Lanham Act Standing Split In Lexmark Int’l, Inc. v. Static Control Components, Inc., the Supreme Court resolved an inter-circuit split regarding who may bring a suit for false advertising under the Lanham Act. Declining to adopt any of the...