The acting director of the US Patent & Trademark Office (PTO) granted a patent owner’s request for discretionary denial and denied institution of an inter partes review (IPR) proceeding, finding that the petitioner engaged in...more
6/27/2025
/ Denial of Institution ,
Director of the USPTO ,
Estoppel ,
Intellectual Property Litigation ,
Inter Partes Review (IPR) Proceeding ,
Inventors ,
Patent Litigation ,
Patent Ownership ,
Patent Trial and Appeal Board ,
Patents ,
Unfair Competition ,
USPTO
In an en banc decision in EcoFactor, Inc. v. Google LLC, the US Court of Appeals for the Federal Circuit concluded that the district court abused its discretion by admitting testimony from a damages expert that a lump-sum...more
5/29/2025
/ Appeals ,
Contract Terms ,
Damages ,
Daubert Standards ,
En Banc Review ,
Evidence ,
Expert Testimony ,
Expert Witness ,
License Agreements ,
Patent Infringement ,
Patent Litigation ,
Patents ,
Rule of Evidence 702 ,
Vacated
In a matter of first impression, the US Court of Appeals for the Federal Circuit found that inter partes review (IPR) estoppel does not preclude a petitioner from relying on the same patents and printed publications as...more
A bipartisan group of senators and congressional representatives reintroduced the Patent Eligibility Restoration Act (PERA), which aims to reform the law of patent eligibility under 35 U.S.C. § 101. PERA seeks to address the...more
McDermott is committed to providing insightful commentary on intellectual property (IP) developments from around the world to our Japanese clients. During these sessions, a variety of speakers from McDermott’s offices in the...more
1/22/2025
/ Artificial Intelligence ,
Intellectual Property Litigation ,
Intellectual Property Protection ,
Japan ,
Patent Applications ,
Patent Infringement ,
Patent Litigation ,
Patent Reform ,
Patent Registration ,
Patents ,
Pharmaceutical Patents ,
Standard Essential Patents ,
Trump Administration ,
Webinars
The US Court of Appeals for the Federal Circuit clarified that a technical expert does not need to have been a person of ordinary skill in the art (POSITA) at the time of the invention. Instead, they may rely on...more
The UK Court of Appeal found that the UK High Court of Justice applied flawed reasoning in setting a global fair, reasonable and non-discriminatory (FRAND) royalty rate for a patent portfolio essential to 3G, 4G and 5G...more
On May 21, 2024, the US Court of Appeals for the Federal Circuit issued an en banc opinion overruling the long-standing Rosen-Durling test for obviousness of design patents in favor of the analytical framework used for...more
The US Court of Appeals for the Second Circuit affirmed the dismissal of a lawsuit against pharmaceutical companies accused of violating antitrust laws by using reverse payments to delay entry of a generic version of a...more
5/24/2024
/ Antitrust Division ,
Antitrust Violations ,
Appeals ,
CVS ,
Dismissals ,
FTC v Actavis ,
Generic Drugs ,
Patent Infringement ,
Patent Litigation ,
Patent-in-Suit ,
Patents ,
Pay-For-Delay ,
Pharmaceutical Industry ,
Pharmaceutical Patents ,
Reverse Payments ,
SCOTUS
The US Court of Appeals for the Federal Circuit affirmed a district court’s decision to preclude a patent owner from seeking damages based on method claims infringed outside of the United States but confirmed that reasonable...more
The US Court of Appeals for the Federal Circuit affirmed a Patent Trial & Appeal Board obviousness determination, explaining that inter partes review (IPR) statutory provisions that prohibit an otherwise time-barred party...more
The US Patent & Trademark Office (PTO) published its final rule, creating a separate design patent bar where admitted design patent practitioners will practice in design patent proceedings only. (88 Fed. Reg. 78644 (Nov. 16,...more
Addressing a matter of first impression concerning the scope of prior art relevant to a design patent infringement analysis, the US Court of Appeals for the Federal Circuit concluded that “to qualify as comparison prior art,...more
9/28/2023
/ Appeals ,
Article of Manufacture ,
Claim Construction ,
Design Patent ,
Intellectual Property Protection ,
Inter Partes Review (IPR) Proceeding ,
Patent Infringement ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Prior Art ,
USPTO
The US Court of Appeals for the Federal Circuit affirmed a decision from the Patent Trial & Appeal Board denying a motion to amend claims during an inter partes review (IPR) proceeding, explaining that a claim amendment is...more
The High Court of Justice in London recently issued its third judgment on a fair, reasonable and non-discriminatory (FRAND) rate for a license to cellular standard-essential patents (SEPs). In the two prior UK FRAND...more
The US Court of Appeals for the Federal Circuit affirmed a district court’s denial of attorneys’ fees, explaining that when a district court denies summary judgment and allows a plaintiff’s case to proceed, the district court...more
In a case involving sua sponte review, the Director of the US Patent & Trademark Office (PTO) vacated an inter partes review (IPR) decision denying institution, found that the Patent Trial & Appeal Board had statutory...more
5/18/2023
/ 35 U.S.C. § 311(b) ,
America Invents Act ,
Director of the USPTO ,
Intellectual Property Litigation ,
Intellectual Property Protection ,
Inter Partes Review (IPR) Proceeding ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Section 101 ,
USPTO
The US Court of Appeals for the Federal Circuit affirmed an International Trade Commission decision finding a § 337 violation. The Court concluded that the Commission correctly found that an open-ended claim was enabled since...more
The US Court of Appeals for the Federal Circuit affirmed a jury’s noninfringement verdict, finding that the district court correctly interpreted the article “a” and antecedent “said” in the asserted claims to require that a...more
The UK High Court of Justice issued its long-anticipated decision establishing a global Fair, Reasonable and Non-Discriminatory (FRAND) royalty rate for a patent portfolio essential to 3G, 4G and 5G cellular technologies....more
The US Patent & Trademark Office Director affirmed and designated as precedential a Patent Trial & Appeal Board (Board) decision denying institution of an inter partes review (IPR) petition where the expert declaration...more
The US Patent & Trademark Office (PTO) published a Request for Comments Regarding Artificial Intelligence and Inventorship seeking input from stakeholders on inventorship issues that may arise as artificial intelligence (AI)...more
On remand from a decision allowing the US District Court for the District of Delaware to continue its probe into who was funding a patent owner’s infringement litigation, the district court denied the patent owner’s motion to...more
The US Court of Appeals for the Federal Circuit denied a patent owner’s mandamus petition, clearing the way for a district court to probe who is funding the patent owner’s infringement litigation. In re Nimitz Techs. LLC,...more
The US Court of Appeals for the Federal Circuit found that an artificial intelligence (AI) software system cannot be listed as an inventor on a patent application because the Patent Act requires an “inventor” to be a natural...more