IP Newsletter - April 2015

In This Issue:

- Federal Circuit Affirms PTO in First Appeal of an Inter Partes Review Decision

- EU Copyright: No Resale of Digital Content Except for Software?

- Qualcomm Agrees to $975 Million Fine and Conduct Remedies to Resolve Chinese Standard Essential Patent Licensing Investigation

- Navigating Fraud in Trademark Cases

- ITC Pilot Program to Expedite Rulings on Whether Exclusion Orders Cover Redesigns and New Products

- Record-Breaking Trade Secret Cases in Japan

- Excerpt from Federal Circuit Affirms PTO in First Appeal of an Inter Partes Review Decision:

In a split decision, the Federal Circuit issued its first opinion reviewing a final decision of the Patent Trial and Appeal Board (“Board”) of the Patent and Trademark Office (“PTO”) in an inter partes review case. The court affirmed the PTO’s decision finding three claims invalid and denying the patent owner’s motion to amend claims. Along the way, the Court made two significant rulings: (1) the Court lacks jurisdiction to review the Board’s decision to institute an IPR; and (2) the Board correctly used the “broadest reasonable interpretation” standard to construe claims. Judge Newman dissented because, in her view, “several of the panel majority’s rulings are contrary to the legislative purpose of the Leahy- Smith America Invents Act.”

This decision provides a first look at how the Federal Circuit will review Board decisions in inter partes review cases. The opinion confirms the Board’s authority, making the Board’s decisions to institute trial unreviewable on appeal, and approving the Board’s “broadest reasonable interpretation” standard that can make it easier to invalidate patents. The decision thus confirms the Board’s approach in conducting these increasingly important patent review proceedings.

Please see full issue below for more information.

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DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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Morrison & Foerster LLP

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