Archives: Rules and Regulations

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Planning to Request Discovery for a European Patent Office Proceeding? Not So Fast, Rules the District of Massachusetts

The Hon. F. Dennis Saylor, IV of the U.S. District Court for the District of Massachusetts recently denied a petitioner’s request under 28 USC § 1782 to take discovery related to patent inventorship in connection with an Opposition proceeding pending before the European Patent Office (EPO). The court, in exercising its discretion under the U.S. … Continue Reading

TC Heartland v. Kraft: The Supreme Court Asks Tough Questions, Doesn’t Tip Its Hand After Oral Argument

Blue folder with the label Patent LawOn March 27, 2017, the U.S. Supreme Court heard oral argument in TC Heartland v. Kraft, a case that centers on where patent infringement lawsuits can be filed. Key Takeaways If the Supreme Court sides with TC Heartland, patent infringement hotbeds like the Eastern District of Texas would likely see a drastic reduction in filings … Continue Reading

The Supreme Court Strikes Down Laches as a Defense to Patent Infringement

Today the U.S. Supreme Court issued an opinion, SCA Hygiene Products Aktiebolag v. First Quality Baby Products, LLC, in which it held that laches cannot be used as a defense to a claim of patent infringement. The opinion had been anticipated ever since the Court’s decision in Petrella v. Metro-Goldwyn-Mayer, Inc., 572 U.S. ___ (2014) … Continue Reading

Will the Supreme Court Reform Patent Venue Law in TC Heartland v. Kraft?

United States Supreme Court in Washington D.C.Q: Why is the technology industry following TC Heartland v. Kraft so closely? Paul Cronin: The Supreme Court recently agreed to take up TC Heartland, a case that will address the issue of where patent infringement lawsuits can be filed. The tech industry wants the Supreme Court to end the practice of “forum shopping,” or … Continue Reading

Phigenix v. ImmunoGen: IPR Challenger May Lack Standing to Appeal to Federal Circuit

The America Invents Act (AIA) established a number of procedures for challenging a granted patent at the Patent Trial and Appeal Board (PTAB). While virtually anyone can challenge a patent using these procedures, not everyone has standing to appeal if the challenge does not go their way. This issue was highlighted recently in a precedential … Continue Reading

SCOTUS UPSETS THE APPLE CART?: The High Court Answers Key Question on Design Patent Damages, But Leaves Many Unanswered

The United States Supreme Court today overturned a $400 million verdict in a highly-publicized and long-waged patent battle between Apple and Samsung. Samsung Elcs. Co., Ltd. v. Apple Inc., 580 U.S. __ (Dec. 6, 2016). In doing so, it addressed design patents for the first time in 130 years and held that damages in design patent … Continue Reading

The District of Massachusetts Sheds Light on Halo’s New Standard for Willfulness and Enhanced Damages in Trustees of Boston University v. Everlight Electronics Co., Ltd.

Since the Supreme Court decision in Halo Electronics v. Pulse Electronics came down earlier this year (as previously discussed here), district courts across the country have been grappling with the high court’s new standard for determining willful infringement and awarding enhanced damages in patent cases. In the District of Massachusetts, only one case to date has … Continue Reading

Amdocs v. Openet: Federal Circuit Finds Network Patents Eligible Under § 101

The Federal Circuit this month issued another decision finding claims to a computer-implemented invention to be patent-eligible under 35 U.S.C. § 101. In Amdocs (Israel) Ltd. v. Openet Telecom, Inc. (Fed. Cir. Nov. 1, 2016), the Federal Circuit held that claims directed to a distributed architecture for collecting and processing computer network data close to … Continue Reading

USPTO Provides Guidance to Examiners on Recent Federal Circuit Decisions Relating to Patent Eligibility of Software Claims

Binary code backgroundOver the past six years, the U.S. Supreme Court has issued a series of decisions—Bilski, Mayo, Myriad, and Alice—that have significantly impacted patent eligibility law, particularly in the areas of software and biotechnology. On November 2, 2016, the United States Patent and Trademark Office (USPTO) published a memorandum to patent examiners, discussing two recently-issued Federal … Continue Reading

Federal Circuit Clarifies Pleading Requirements for Joint Infringement

Earlier this year, we discussed the potential ramifications of the December 2015 amendments to the Federal Rules of Civil Procedure on the pleading standard of infringement following the decision in Rembrandt Patent Innovations LLC v. Apple Inc. In Rembrandt, the U.S. District Court in the Northern District of California applied the Twombly/Iqbal standard of pleading to … Continue Reading

TTAB Rules Changes Confirmed – Effective January 14, 2017

The public comments have been considered and the Trademark Trial and Appeal Board rule changes proposed in April 2016 and summarized in this blog post have been confirmed with only minor exceptions. The new rules will be effective on January 14, 2017, and will apply to all opposition and cancellation proceedings active on that date … Continue Reading

McRO v. Bandai: Latest Federal Circuit § 101 Decision Breathes New Life into Software Patents

The Federal Circuit last week handed down the latest in a series of decisions finding computer-implemented inventions to be patent-eligible under 35 U.S.C. § 101. In McRO, Inc. v. Bandai Namco Games America, Inc. et al. (Fed. Cir. Sept. 13, 2016), the Federal Circuit held that claims directed to software for automatically animating lip synchronization … Continue Reading

Time Is Now to Assess E.U. TM Registration Goods Wording in Advance of September Deadline

There is a September 23, 2016 deadline for clarifying product or service specification wording within European trademark registrations in certain situations where that is necessary. Trademark registration products and services are categorized by almost all commercially relevant national trademark registries around the world, including the U.S. and the E.U., into 45 International Classes (Classes). These … Continue Reading

USPTO Offers a Fast Track to Cancer Immunotherapy Patents

The United States Patent Office (USPTO) is implementing a new program that provides prioritized examination of patent applications relating to cancer immunotherapy (Cancer Immunotherapy Pilot Program or Program). The new patent examination program, which will run June 29, 2016-2017, reinforces the White House’s $1 billion “National Cancer Moonshot” initiative and follows on the heels of … Continue Reading

New USPTO P3 Program for After Final Office Actions Is Useful Hybrid of Pre-Appeal and AFCP Programs

The Post-Prosecution Pilot Program, dubbed “P3” by the United States Patent and Trademark Office (USPTO), offers applicants a new, and arguably improved, path through the after-final landscape. P3 provides applicants the opportunity to orally present proposed amendments or arguments to a panel of examiners after a final rejection has been issued but before filing a … Continue Reading

Supreme Court Ruling Loosens Standard for Awarding Enhanced Damages

Yesterday, the U.S. Supreme Court issued a decision in the case of Halo Electronics, Inc. v. Pulse Electronics, Inc., once again changing patent law by loosening the standard by which district courts may award enhanced damages under 35 U.S.C. § 284. In so doing, the Court discarded the two-part test set forth by the Court … Continue Reading

U.S. Patent Office Updates Subject Matter Eligibility Guidance, Including Life Science Examples

In view of the U.S. Supreme Court’s decisions in Alice, Myriad, and Mayo, the United States Patent and Trademark Office (USPTO) has issued a series of guidance documents on patent subject matter eligibility under 35 U.S.C. § 101. These documents are collected on the Subject Matter Eligibility page of the USPTO website. The USPTO’s “May 2016 … Continue Reading

It’s Never Too Late to File an Inventorship Dispute

Earlier this month, the Federal Circuit revisited the issue of inventorship disputes and iterated in a nonprecedential opinion that proving nonjoinder of inventors in an issued patent is a difficult threshold for a challenger to meet. In doing so, the Federal Circuit affirmed the district court holding that the challenge to correct inventorship of two … Continue Reading

U.S. Trademark Opposition/Cancellation Rule Change Proposals of Special Interest to Non-U.S. Companies

On April 4, 2016 the United States Patent and Trademark Office (USPTO) published a Notice of Proposed Rulemaking that details proposed changes to the USPTO’s rules of practice for trademark application opposition and registration cancellation proceedings. Public comments are due by June 3, 2016. While it is possible that the rules will be modified further … Continue Reading

Significant Changes to the Rules Related to European Trademarks – Three Things You Should Know

The European Union’s (EU) trademark regulations are undergoing a significant overhaul as of March 23, 2016. For starters, the terminology is changing: the title “Community Trade Mark” or “CTM,” will be replaced by “European Union Trade Mark,” or “EUTM.” There are more changes than can be fully summarized within the scope of this blog post. … Continue Reading

Actual Notice Requirement Presents Challenge for Collecting Pre-Issuance Damages

Most patent owners are aware that under 35 U.S.C. § 154(d), publication of a United States patent application confers provisional rights to the patent owner. The provisional rights allow an owner to collect damages for infringement of issued claims dating back to the date of publication provided that the claims are substantially similar to the … Continue Reading
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