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Federal Circuit to Rehear Fee Shifting Decision En Banc

In June 2017, a panel of the US Court of Appeals for the Federal Circuit ruled that under 35 USC § 145, a court can award attorneys’ fees to the US Patent and Trademark Office (PTO), regardless of whether the applicant,...more

Remand Where PTAB Decision Does Not Explain Reasoning, Account for All Evidence

In reviewing a decision from the Patent Trial and Appeal Board (PTAB) deciding three interferences involving competing claims directed to testing methods for fetal aneuploidies, the US Court of Appeals for the Federal Circuit...more

Does IPR Extinguish Private Property Rights?

The Supreme Court of the United States granted certiorari to decide whether only Art. III federal courts, not executive branch tribunals such as the Patent Trial and Appeal Board (PTAB), can decide whether a patent is...more

Supreme Court to Review Whether PTAB Must Address All Issues Raised in IPR Petition

Echoing Judge Newman’s dissent in the US Court of Appeals for the Federal Circuit’s decision in SAS Institute, Inc. v. ComplementSoft, LLC, Case Nos. 15-1346; -1347 (Fed. Cir., Nov. 7, 2016) (per curiam) (Newman, J,...more

Supreme Court Analyzes Key Provisions of Biologics Price Competition and Innovation Act of 2009

In a unanimous decision, the United States Supreme Court has clarified certain portions of the Biologics Price Competition and Innovation Act of 2009 (BPCIA), concluding (1) that biosimilar makers do not have to wait for...more

SCOTUS Agrees that Cheerleading Uniform Designs Are Eligible for Copyright Protection

In a 6-2 decision authored by Justice Thomas, the US Supreme Court has now provided guidance as to whether aesthetic designs, such as stripes, chevrons, zigzags and color blocks of a cheerleading uniform are eligible for...more

US Supreme Court Rules Export of Single Component of Patented Combination Does Not Impose Liability under Section 271(f)(1)

On February 22, 2017, in reversing the decision of the US Court of Appeals for the Federal Circuit, an essentially unanimous US Supreme Court ruled that the “supply of a single component of a multi-component invention for...more

En Banc Federal Circuit to Consider AIA Appeals Based on Time Bar Provision

In a September 2015 panel decision, Achates Reference Publishing v. Apple, the US Court of Appeals for the Federal Circuit ruled that under 35 USC 314(b), decisions of the Patent Trial and Appeal Board (PTAB) finding that an...more

Supreme Court to Consider BPCIA Requirements for Biosimilars

The Supreme Court of the United States has granted certiorari in a case involving the Biologics Price Competition and Innovation Act of 2009 (BPCIA) in the context of a biosimilars dispute. Sandoz, Inc. v. Amgen Inc. and...more

No Place Like Home: Supreme Court to Review Whether § 1400(b) Alone Governs Venue

The Supreme Court of the United States has granted a petition for certiorari to consider whether 28 USC § 1400(b) is the sole and exclusive provision governing venue in patent infringement actions in light of amendments made...more

For Design Patent Damages 'Article of Manufacture’ Not Necessarily Entire End Product

A unanimous US Supreme Court held that for purposes of determining damages for design patent infringement under 35 U.S.C. §289, the relevant “article of manufacture” may include either the end product sold to the consumer or...more

Supreme Court to Review Registrability of Disparaging Trademarks

On September 29, 2016, the Supreme Court of the United States granted a petition for certiorari to consider the constitutionality of a provision of the US trademark laws directed to the registrability of disparaging...more

Iqbal/Twombly Pleading Standard Governs Joint Patent Infringement Claims

Addressing the pleading standard under which a joint patent infringement claim must be reviewed, the US Court of Appeals for the Federal Circuit affirmed the dismissal of a complaint of patent infringement, finding that the...more

Smartphone Patent War: En Banc Federal Circuit Rebukes Earlier Panel Decision and Reinstates Jury Verdicts for Apple against...

In its October 7 en banc decision in Apple v. Samsung, the US Court of Appeals for the Federal Circuit, without benefit of en banc briefing, issued an unusual opinion overturning a panel decision for the purpose of...more

PTO Must Apply Phillips Standard when Construing Expired Patents **WEB ONLY**

In an opinion addressing the standard for claim construction of a patent that expires during reexamination, the US Court of Appeals for the Federal Circuit upheld the Patent Trial and Appeal Board’s (PTAB’s or Board’s)...more

Korea Quarterly - September 2016

Controlling Costs in International Arbitration - Arbitration is an efficient means for resolving business disputes because it offers more flexibility than court proceedings and enables the parties to choose arbitrators...more

Federal Circuit Will Review PTAB Rules for Claim Amendments in AIA Reviews

The full US Court of Appeals for the Federal Circuit has issued an order granting en banc review of the Patent Trial and Appeal Board’s (PTAB’s or Board’s) rules governing amendments filed in the course of America Invents Act...more

Korea Quarterly - August 2016

Controlling Costs in International Arbitration - Arbitration is an efficient means for resolving business disputes because it offers more flexibility than court proceedings and enables the parties to choose arbitrators...more

Inducement and Risk of Liability for Worldwide Sales

The Supreme Court of the United States agreed to review a decision by the US Court of Appeals for the Federal Circuit regarding active inducement infringement under 35 USC § 271(f)(1) in a case important to US manufacturers...more

Inter Partes Review Institution Decisions Not Appealable, Broadest Reasonable Interpretation Remains Standard

In Depth - The Supreme Court of the United States (Justice Breyer writing for the majority) affirmed a US Court of Appeals for the Federal Circuit decision barring judicial review of most decisions regarding institution...more

Kirtsaeng II: Fees in Copyright Cases Depends on Reasonableness of Litigation Position

In Depth - Under 17 USC § 505, a “court may … award a reasonable attorney’s fee to the prevailing party.” However, when deciding whether to award attorneys’ fees under the Copyright Act’s fee-shifting provision, 17 USC...more

Yet Another Bite at this Apple: Damages in Design Patent Cases - Samsung Electronics Co., Ltd. v. Apple Inc.

The Supreme Court of the United States has now agreed to review a 2015 decision by the US Court of Appeals for the Federal Circuit regarding the proper measure of damages in cases of design patent infringement. Samsung...more

Absent Contemporaneous Objection to Order for Single Trial on Subset of Claims, No Due Process Violation - Nuance Communications...

The US Court of Appeals for the Federal Circuit ruled that a patent owner’s due process rights were not violated when a district court found that the defendant did not infringe all of the originally asserted patents, even...more

Federal Circuit Precedents on Domestic and International Patent Exhaustion Principles Remain Unchanged (Lexmark Int’l, Inc., v....

The en banc U. S. Court of Appeals for the Federal Circuit issued its long awaited (10-2) decision, reaffirming the court’s prior rulings in Mallinckrodt and Jazz Photo that a seller can use its patent rights to block resale...more

Federal Circuit Rules Its Precedents on Domestic and International Patent Exhaustion Principles Not Changed by Supreme Court Cases

Lexmark International, Inc., v. Impression Products, Inc., Case Nos. 14-1617, -1619 (Fed Cir, Feb. 12, 2016) (en banc) (Taranto, J., joined by Prost, CJ and Newman, Lourie, Moore, O’Malley, Reyna, Wallach, Chen and Stoll, JJ)...more

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