Federal Circuit Clarifies the Estoppel Provision Under 37 C.F.R. § 42.73(d)(3)(i)
In SoftView v. Apple, the U.S. Court of Appeals for the Federal Circuit (CAFC or Federal Circuit) has recently clarified an important aspect of collateral estoppel. The case concerns the U.S. Patent and Trademark Office's (USPTO or Office) authority related to the estoppel provision applicable to inter partes reexamination, 37 C.F.R. § 42.73(d)(3)(i), and whether it may be properly applied by the Office to issued patent claims as well as amended claims pending during the reexamination proceeding.
Sale or Fail? Federal Circuit Decision on "Publicly Disclosed"
Introduction In a recent appellate decision, the United States Court of Appeals for the Federal Circuit (CAFC or Federal Circuit) affirmed a ruling by the Patent Trial and Appeal Board (PTAB), finding all challenged claims of U.S. Patent No. 10,572,429 ("the ‘429 patent") unpatentable as obvious. The case, Sanho Corp. v. Kaijet Tech. Int'l Ltd., centers around the interpretation of the phrase "publicly disclosed" within the statutory exception to prior art under AIA 35 U.S.C. § 102(b)(2)(B). This ruling has significant implications for how prior art is determined and how inventors may protect their innovations under the America Invents Act (AIA).
Representative Patent Claims in Alice/Mayo Subject Matter Eligibility Analysis
A recent decision by the United States Court of Appeals for the Federal Circuit (CAFC or Federal Circuit) in Mobile Acuity Ltd. v. Blippar Entities highlights important questions regarding the use of a representative patent claim when analyzing 35 U.S.C. § 101 subject matter eligibility under the U.S. Supreme Court's familiar Alice/Mayo framework. The opinion outlines the critical role that representative claims play in litigation and reaffirms the district court's discretion to compel a patent owner to present substantive argument against the classification of claims as representative at the earliest pleading stage of the case.
Forging Ahead: Intellectual Property Frameworks in Qatar and Bahrain Driving Innovation and Efficiency
The modifications in the IP framework in Qatar and Bahrain have brought significant shifts to the IP workflow in respective jurisdictions. In Qatar, the major changes are applied to the patent annuity payments, power of attorney requirements for IP works, fee structure for IP services, and Madrid protocol designations and renewals. Whereas in Bahrain, the patent prosecution highway program has been established to speed up the patent examination process.
CAFC Finds Multiple Beteiro, LLC Patents Ineligible under 35 U.S.C. §101
A recent decision of the U.S. Court of Appeals for the Federal Circuit (CAFC) illustrates the CAFC's limits of patent eligible subject matter under 35 U.S.C. § 101. Beteiro, LLC vs DraftKings, Inc. The present case also reminds applicants and practitioners of the importance of ensuring that the claims satisfy the Alice/Mayo test of subject matter eligibility when disclosing and claiming technologies incorporating abstract ideas to comply with requirements therein without relying on inadequately supported recitations in the claims that relate to mere physicality. It is also important to be mindful of a very wide degree of variability in applying the test that still prevails.
Does the Lanham Act's Names Clause Violate a Trademark Owner's Freedom of Speech?
The Supreme Court recently rejected federal trademark protection for the mark "TRUMP TOO SMALL" based on the Lanham Act's Names Clause under Trademark Act Section 2(c), 15 U.S.C. §1052(c).
Attorney-Client Privilege in UPC Litigation Proceedings
Attorney-client privilege in the patent context protects confidentiality of certain communications between a client and his/her patent attorney or any advisor enjoying the status of a patent attorney from compelled disclosure, provided the privileged material is not circulated to third parties, in which case the privilege is lost.
Minority Share of Trademark Ownership Insufficient to Support Right to Seek Cancellation of Challenged Marks
In Luca McDermott Catena Gift Trust v. Fructuoso-Hobbs SL ("Luca McDermott"), the Court of Appeals for the Federal Circuit ("CAFC" or "Federal Circuit") held that a minority limited partner of a limited partnership, Paul Hobbs Winery, LP ("Hobbs Winery"), could not satisfy the statutory-standing requirement and therefore was not entitled to a statutory cause of action. Specifically, the minority limited partner could not meet the zone-of-interests requirement and the proximate-causation requirement for seeking cancellation of two other wineries' marks.
Court Decision Corrects Time Window For Copyright Damages Accrual
In Warner Chappell Music, Inc. v. Nealy, the U.S. Supreme Court recently affirmed an Eleventh Circuit Court of Appeals ruling that allows plaintiffs to recover full damages for copyright infringement if discovery of the infringement occurred within three years of suit, regardless of when the infringement occurred. This decision corrects a contrary view by the Court of Appeals for the Second Circuit that had resulted in a split of authority with the allowed damages period depending on the particular judicial circuit in which the infringement suit was filed. The Supreme Court resolved the circuit split in favor of the expanded potential scope of recoverable damages.
Federal Circuit Clarifies Printed Matter Doctrine in Claim Interpretation of Electronic Communications
In IOEngine, LLC v. Ingenico Inc.[1], the U.S. Court of Appeals for the Federal Circuit (CAFC) reversed in part the U.S. Patent Trial and Appeal Board's (PTAB) Final Written Decisions in several Inter Partes Reviews (IPR) finding anticipation under 35 U.S.C. § 102 of various claims of U.S. patents relating to a tunneling client access point (TCAP) that is a "highly secure, portable, power efficient storage and data processing device." The CAFC concluded that the PTAB erred as a matter of law by incorrectly applying the printed matter doctrine to accord no patentable weight to certain limitations reciting "encrypted communications" and "program code." In correcting the PTAB's legal error, the CAFC made clear that "[p]rinted matter encompasses what is communicated—the content or information being communicated—rather than the act of a communication itself."
