Posts Tagged "patents"

Timing matters in inter partes review

Inter partes review (IPR) offers parties an expedited opportunity to challenge the validity of a patent outside of court. But, as one challenger recently learned the hard way, it’s critical that arguments against patentability be raised at the proper time.

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Back to the future

Federal Circuit rejects narrow approach to relation back doctrine The U.S. Court of Appeals for the Federal Circuit, the appellate court that hears all patent-related appeals, recently revived an infringement lawsuit based on the relation back doctrine. The court found the trial court’s application of the doctrine, which resulted in the case being dismissed because of the statute of limitations, “overly restrictive.”

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Beyond words: Federal Circuit faults PTAB’s written description analysis

The Patent Trial and Appeal Board (PTAB) doesn’t always get it right. This was demonstrated once again in a case where the U.S. Court of Appeals for the Federal Circuit found that the board had improperly failed to consider some vital factors when evaluating whether a patent application contained the requisite written description of the invention. A question of plasticity Global IP Holdings LLC owns a patent on carpeted automotive vehicle load floors that have sandwich-type composite panels with cellular cores. The patent describes the load floors as including thermoplastic materials. Global filed a reissue application seeking to broaden the patent’s coverage. In particular, it replaced the term “thermoplastic” with “plastic.” The U.S. Patent and Trademark Office’s rules for reissue applications require an inventor to provide an oath or declaration specifically identifying the error relied on as the basis for reissue. The load floor’s inventor filed a declaration explaining that, at the time of the
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IP due diligence in corporate transactions

The strength of a company’s intellectual property portfolio often drives the value of corporate transactions. Regardless of whether you are the acquisition target or the buyer in a transaction involving IP, the due diligence process should be designed to reveal the value of the intangible assets—patents, trademarks, copyrights, and trade secrets. IP due diligence should ideally be conducted at the onset of negotiations. This not only allows a more reasoned value of the IP to be determined, but also enables proactive corrective action if any legal concerns are identified that may otherwise affect its valuation.

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Limited protection: Inaccurate statement forfeits copyright infringement claim

Creative works are generally subject to copyright protection even without registration with the U.S. Copyright Office. But there are a number of important advantages to securing Copyright Registration — including the ability to file suit for copyright infringement. Normally, a registration certificate provides sufficient evidence of a valid registered copyright. However, inaccurate information in the certificate can invalidate the registration. In a recent case, the holder of one such certificate not only lost out on its ability to pursue an infringement claim, but also ended up on the hook for the would-be defendants’ attorneys’ fees and costs. The fact pattern Gold Value (doing business as Fiesta Fabric) creates textile designs and sells fabric to customers that use it to make clothing. Sanctuary Clothing, LLC, is a clothing manufacturer. Fiesta sued Sanctuary and several retailers, alleging they’d infringed a copyright it held for one textile design. Fiesta had registered the design as part of its Spring/Summer
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It’s official: Supreme Court says government isn’t a person – for patent purposes

Patentees welcomed a recent U.S. Supreme Court decision that significantly reduces the pool of potential challengers to the validity of existing patents. Thanks to the ruling, federal government agencies can’t take advantage of three patent review processes created less than a decade ago — because the federal government isn’t a “person” under patent law. Post office delivers a blow Return Mail, Inc., owns a patent for a method of processing undeliverable mail. After the U.S. Postal Service (USPS) introduced an enhanced address-change service to process undeliverable mail, Return Mail claimed the service infringed the patent and offered to license its invention to the USPS. In response, and prior to the America Invents Act of 2011 (AIA), the USPS sought a re-examination of the patent, but the U.S. Patent and Trademark Office (USPTO) confirmed the patent’s validity. Return Mail then sued the USPS, seeking compensation for the unauthorized use of its invention. While that lawsuit was
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Sink or swim: Precise patent language scuttles infringement lawsuit

Generally, using precise and careful language in a patent application is wise. But providing a precise numerical value can work against a patentee when it comes time to bring an infringement claim. A boat manufacturer learned this lesson the hard way when it sued a rival for infringement. Boat maker makes waves Cobalt Boats, LLC, owns a patent on a swim step — a small platform attached to the stern of a boat, with a retractable step that makes it easier to get in and out of the water. Brunswick Corporation sells boats with an optional swim step. Cobalt sued Brunswick, alleging patent infringement. A jury found that Brunswick had indeed infringed the patent and awarded a per-unit royalty of $2,500, equaling $2.69 million. The district court enhanced the jury’s award and awarded damages for postverdict sales, resulting in total damages of almost $5.4 million. It also granted a permanent injunction against Brunswick. Not surprisingly, Brunswick appealed
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Vehicle charging station patents short-circuit under Alice analysis

The U.S. Federal Circuit Court of Appeals, the court that hears all patent-related appeals, continues to wield the so-called Alice test to knock down patents for abstract ideas. As part of one such decision, the court explained that abstract ideas aren’t patent-eligible in the absence of an inventive concept that makes a claim “significantly more” than just the abstract idea — and the underlying abstract idea can’t provide that inventive concept.

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Obviousness doesn’t require motivation to combine prior art

When a party challenging a patent’s validity alleges that multiple prior references made the invention obvious, it may need to show that someone would have been motivated to combine those references into the invention. However, in a recent case, the U.S. Court of Appeals for the Federal Circuit found that no motivation to combine is required where a secondary reference is used only to explain the primary reference.

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Lens manufacturer loses the blame game

Circumstantial evidence seals induced patent infringement liability It may seem apparent to patentees when someone is inducing third parties to infringe their patents, but it’s not always easy to prove in a court of law. The U.S. Court of Appeals for the Federal Circuit, which hears all patent-related appeals, recently provided a welcome reminder that sometimes circumstantial evidence can go a long way. The court also weighed in on the proper calculation of lump-sum reasonable royalty damages.

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