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Providing a Service Alone is not Contributory Infringement

In the Cleveland Clinic Foundation v. True Health Diagnostics LLC, [2016-1766](June 16, 2017), the Federal Circuit affirmed that the asserted claims of U.S. Patent Nos. 7,223,552; 7,459,286; and 8,349,581 are not directed to...more

The Board can Rely on a Party’s Arguments in an IPR, as Long as it Explains Why

In Outdry Technologies Corp. v. Geox S.P.A., [2016-1769] (June 16, 2017), the Federal Circuit affirmed the Board’s determination that claims 1–15 of U.S. Patent No. 6,855,171 would have been obvious over a combination of...more

General Statements in Petition and Institution Decision Did Not Give Patent Owner Fair Notice of the Grounds of Invalidity in the...

In Emerachem Holdings, LLC v. Volkswagen Group of America, Inc., [2016-1984] (June 15, 2017), the Federal Circuit affirmed the Board’s decision that claims 1–2, 4–14, and 17–19 of U.S. Patent No. 5,599,758 were obvious, and...more

Imagining the Perfect Confidentiality Agreement

The perfect confidentiality agreements is, in most cases, overkill and in any event would probably never be signed. Hundreds, if not thousands, of CDAs, NDAs and other secrecy agreements are signed every day, and the vast...more

Estoppel in CBMR is Both Reviewable and Determined on a Claim by Claim Basis

In Credit Acceptance Corp. v. Westlake Services, [2016-2001](June 9, 2017), the Federal Circuit affirmed the PTAB decision that Westlake was not estopped to bring a Covered Business Method Review challenge to U.S. Patent No....more

Ownership of a Trademark Follows Use

In Lyons v. The American College of Veterinary Sports Medicine and Rehabilitation, [2016-2055](June 8, 2017), the Federal Circuit affirmed the decision of the TTAB cancelling Lyons’ registration of the mark THE AMERICAN...more

A Cease and Desist Letter Alone Does not Establish Personal Jurisdiction

In New World International, Inc. v. Ford Global Technologies, LLC, [2016-2097](June 8, 2017), the Federal Circuit affirmed the dismissal of New World’s declaratory judgment complaint for lack of personal jurisdiction over...more

“Means” Does Not Always Mean “Means Plus Function”

In Skky, Inc. v. Mindgeek, S.A.R.L. [2016-2018] (June 7, 2017), the Federal Circuit affirmed the PTAB decision in IPR 2014-01236 that all of the challenged claims in U.S. Patent 7,548,875 were invalid for obviousness....more

Promise to Arbitrate Claims “Arising Under” is Narrower than Promise to Arbitrate Claims “Relating to” Agreement

In Evans v. Building Materials Corporation of America, [2016-2427](June 5, 2017), the Federal Circuit affirmed the denial of a motion to dismiss a complaint for patent infringement and trade dress infringement....more

Denial of Attorneys’ Fees Reversed because District Court Conflated Rule and 35 USC 285

In Rothschild Connected Devices Innovations, LLC v. Guardian Protection Services, Inc., [2016-2521] (June 5, 2017), the Federal Circuit reversed and remanded the determination that Appellee Rothschild Connected Devices...more

What Would the Perfect Employee Agreement Look Like?

Lawyers strive for perfection in their work, but time constraints, budgets, and other factors work against us. Also, perfection is not always the same thing in every circumstance. It is interesting, however, to contemplate...more

Patent Rights are So Anemic, They’re Exhausted on First Sale

The Supreme Court in Impression Products, Inc. v. Lexmark International, Inc., has once again reversed the Federal Circuit, holding that a sale of a patented product by (or on behalf of) the patent owner, whether in the U.S....more

There are Few Absolutes In Likelihood of Confusion; Apparently Fame isn’t one of Them

In Joseph Phelps Vineyards, LLC v. Fairmont Holdings, LLC, [2016-1089] (May 24, 2017), the Federal Circuit vacated a Trademark Trial and Appeal Board decision denying cancellation of Fairmont’s Reg. No. 4213619 on the mark...more

The Right to Seclusion of Personal Facts vs. Public Opinion

Unhappy with the valuation determination by Zillow’s Zestimates, a builder and related parties have initiated a class action suit against Zillow Inc. and Zillow Group, for class action complaint for (a) violation of the...more

Drafting Broad Claims to Cover a Competitor is for Naught if the Specification Doesn’t Support Them

In Rivera v. ITC, [2016-1841] (May 23, 2017), the Federal Circuit affirmed the International Trade Commission’s decision that there was no violation of 19 U.S.C. §1337, because the claims of U.S. Patent No. 8,720,320 were...more

Lawsuit Attempts to Finish the Job that the Iceberg Started

Stephen Cummings has sued James Cameron for turning his life story into the hit movie Titanic. Mr. Cummings claims that Leonardo DiCaprio’s character Jack Dawson “is based solely/wholly/only” on his life. Cummings claims...more

AIPLA Proposes New 101 to Save the Patent System

The AIPLA has proposed a new Section 101: 35 U.S.C. § 101—Inventions Patentable - (a) Eligible Subject Matter.— Whoever invents or discovers any useful process, machine, manufacture, composition of matter, or any...more

Function/Way/Result Test Causes Headaches in Chemical Cases; Substitute Insubstantial Differences Test

In Mylan Institutional LLC v. Aurobindo Pharma Ltd., [2017-1645] (May 19, 2017), the Federal Circuit affirmed the grant of a preliminary injunction against the infringement of U.S. Patent 9,353,050 on a triarylmethane dye...more

Merely Because Petitioner Changes its Mind is not Enough to Stop Inter Partes Reexamination

In In Re: AT&T Intellectual Property II, L.P., [2016-1830] (May 10. 2017), the Federal Circuit affirmed the PTAB determination in Inter Partes Reexamination, that the claims of U.S. Patent No. 7,454,071, directed to methods...more

Not Necessarily Unfair to Reply on Patent Owner’s Submissions in Obviousness Finding, but Board Failed to Provide Adequate...

In Rovalma, S.A. v. Bohler-Edelstahl GmbH & Co., KG, [2016-2233] (May 11, 2017), the Federal Circuit vacated the Board’s Final Written Decision in IPR2015-00150, finding the Board did not set forth its reasoning in sufficient...more

Written Description Lacking Where Nothing in the Specification Suggests Inventor Contemplated Claimed Invention

In Cisco Systems, Inc. v. Cirrex Systems, LLC, [2016-1143, 2016-1144](May 10, 2017), the Federal Circuit affirmed in part, and reversed in part the Board’s decision in Inter Partes Reexamination of U.S. Patent No. 6,415,082. ...more

Supreme Courts Reaffirms Fourco, and Limits Where Corporations Can Be Sued for Patent Infringement

In TC Heartland LLC v. Kraft Foods Group Brands LLC, [16–341] (May 22, 2017), the Supreme Court reversed the Federal Circuit and held that for purposes of the patent venue statute (28 U.S.C. 1400(b)), a corporation only...more

Failure to Provide an Unconditional Covenant Not to Sue Kept Case and Controversy Alive

In ArcelorMittal v. AK Steel Corp., [2016-1357] (May 16, 2017), the Federal Circuit affirmed the summary judgment invalidating claims 24 and 25 of U.S. Patent No. RE44153....more

One Year of the Defend Trade Secrets Act

May 16, 2017 marked the first anniversary of the Defend Trade Secrets Act. What has the year taught us about this new federal cause of action for trade secret misappropriation? Here are the top 13 lessons from the first...more

Patent Owner Statements During an IPR Disclaimed Claim Scope

In Aylus Networks, Inc., v. Apple, [2016-1599] (May 11, 2017), the Federal Circuit affirmed summary judgment of non-infringement of U.S. Patent No. RE 44,412 on systems and methods for implementing digital home networks...more

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