Mintz - Intellectual Property Viewpoints

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Firm Profile: Mintz
One Financial Center
Boston, MA 02111, United States
Phone: 617-348-1696
Fax: 617-542-2241
Areas Of Practice
  • Intellectual Property
  • International Law & Trade
  • Litigation
  • Science, Computers, & Tech
Locations
Other U.S. Locations
  • California
  • D.C.
  • Massachusetts
  • New York
Other Countries
  • United Kingdom
Number of Attorneys
400+ Attorneys

Best Practices for Clearances and Opinions

Last week, Mintz Member Lisa Adams moderated a panel discussion between in-house attorneys that covered best practices for conducting patent clearances and obtaining non-infringement and invalidity opinions. The panel…more

Claim Construction, Noninfringement, Patent Infringement, Patent Invalidity, Patent Litigation

See all updates »

PATENT 101: Key Considerations and Activities for Establishing a Patent Program (Part 2 of 3)

Tasked with starting an innovation protection and patent development program at your company but do not know where to begin? This three part series describes the key components to a patent development program for any company,…more

Competition, Exclusivity, Inventions, Inventors, Licenses

See all updates »

Open Question: Use of Stolen Trade Secrets May or May Not Qualify as a Predicate Act Under RICO

Since the passage of the Defend Trade Secrets Act (DTSA), trade secret owners have been able to use allegations of trade secret misappropriation under the DTSA to support civil claims under the Racketeer Influence and Corrupt…more

Attorney's Fees, Defend Trade Secrets Act (DTSA), Intellectual Property Protection, Misappropriation, Patent Litigation

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Not just for crypto – How blockchain technology will affect medical devices

Most people are familiar with blockchain technology because of its use in cryptocurrency, but its use is going to be far more widespread than just as a ledger for digital currency. As explained in a previous blog post,…more

Blockchain, Distributed Ledger Technology (DLT), Electronic Medical Records, Health Care Providers, Manufacturers

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The Importance of Getting Inventorship Right: A Cautionary Tale in Two Cases

U.S. patent law elevates the importance of “the inventor” to an extent unseen in the rest of the world. Unlike many other countries, ownership of patent applications in the United States initially vests in the inventors listed…more

Appeals, Assignment of Inventions, Dismissals, Employment Contract, Former Employer

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Reduced Scope of March-in Rights Under Bayh Dole Rules Revisions

The Bayh Dole Act was enacted to provide incentives to promote commercialization of federally funded inventions and was designed to capitalize on the significant government investments in small business, university research, and…more

Bayh-Dole Act, Biden Administration, IP License, March-in-Rights, Patents

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AI in Biotech and Synthetic Biology: What Can Be Protected? What Should Be Kept Secret?

Machine learning (ML), bioinformatics, artificial intelligence (AI), and other computational tools have become ubiquitous in the biotech and synthetic biology industries because such technology allows for rapid processing of a…more

Artificial Intelligence, Biotechnology, Intellectual Property Protection, Machine Learning, Patents

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Representations Made by a Patentee during Foreign Prosecution May Be Used in Claim Construction for U.S. Patents

Claim construction, the process by which a court interprets the scope and meaning of a patent’s claims, is a crucial part of patent litigation. In fact, claim construction can make or break a patentee’s case for infringement…more

Claim Construction, Foreign Jurisdictions, Foreign Patent Applications, Intellectual Property Protection, Patent Infringement

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PTAB Continues Streak of IPR Denials

US Patent Trial and Appeal Board (PTAB) institution denials for inter partes review (“IPR”) and other post-grant review petitions have steadily risen from 13 percent in 2012 to 44 percent in 2020. In 2020, the institution rate…more

Burden of Persuasion, Denial of Institution, Inter Partes Review (IPR) Proceeding, Patent Litigation, Patent Trial and Appeal Board

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District of Delaware Dismisses ANDA Applicant for Lack of Venue under TC Heartland and In re Cray

On June 17, 2019, the United States District Court for the District of Delaware, in Novartis Pharmaceuticals Corp. v. Accord Healthcare Inc., et al., No. 18-cv-01043, held that venue was not proper in Delaware over Mylan…more

Abbreviated New Drug Application (ANDA), Bristol-Myers Squibb, Dismissals, FRCP 12(b)(3), Generic Drugs

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A Business Deal Could Kill Your Right to Challenge a Patent’s Validity

Last week, the Federal Circuit issued a decision holding that parties can contractually bargain away their rights to file petitions for Inter Partes Review (“IPR”) at the Patent Trial and Appeals Board (“the Board”). This…more

Confidentiality Agreements, Corporate Counsel, Forum Non Conveniens, Inter Partes Review (IPR) Proceeding, Patent Trial and Appeal Board

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Emerging Legal Trends AI: Can Israel Join the U.S. and Europe as a Leader in AI Protections?

The intersection of artificial intelligence (AI) and intellectual property invokes fascinating theoretical questions. For example, can a machine own an invention? Or be liable for the consequences of its actions? However, with…more

Artificial Intelligence, Computer-Related Inventions, Innovation, Intellectual Property Protection, Israel

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USPTO Releases Final Rules on PTA Calculations in view of Supernus

On June 16, 2020, the U.S. Patent and Trademark Office (USPTO) released final rules (the “Rules”) implementing changes to how Patent Term Adjustment (PTA) is calculated in certain circumstances in view of Supernus Pharms., Inc…more

European Patent Office, Final Rules, Information Disclosure Statement, Patent Applications, Patent Litigation

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Judge Albright Holds Willful Infringement Pleading Does Not Require Allegations of Egregious Infringing Behavior

On July 12, 2022, U.S. District Judge Alan D. Albright of the Western District of Texas denied alleged infringer Lenovo’s motion to dismiss ACQIS’s willful and indirect infringement and enhanced damages claims, holding that…more

Appeals, CAFC, Damages, Infringement, Motion to Dismiss

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SCOTUS Declines to Answer Calls for Clarification in American Axle v. Neapco

The United States Supreme Court denied certiorari in the closely observed case American Axle & Manufacturing, Inc., v. Neapco Holdings LLC. The Court’s refusal to hear the case disappointed patent practitioners nationwide—and…more

Ad-Hoc Mandates, Alice/Mayo, Appeals, En Banc Review, Patent-Eligible Subject Matter

See all updates »

PATENT 101: Key Considerations and Activities for Establishing a Patent Program (Part 2 of 3)

Tasked with starting an innovation protection and patent development program at your company but do not know where to begin? This three part series describes the key components to a patent development program for any company,…more

Competition, Exclusivity, Inventions, Inventors, Licenses

See all updates »

Rules for Complainant Success in ITC Trade Secret Litigation

Successful ITC trade secret complainants follow these rules before filing the complaint in Section 337 investigations: Identify and prepare “packages” for each of the trade secrets you plan to assert before you file the…more

Confidentiality Agreements, ITC, Trade Secrets

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Open Question: Use of Stolen Trade Secrets May or May Not Qualify as a Predicate Act Under RICO

Since the passage of the Defend Trade Secrets Act (DTSA), trade secret owners have been able to use allegations of trade secret misappropriation under the DTSA to support civil claims under the Racketeer Influence and Corrupt…more

Attorney's Fees, Defend Trade Secrets Act (DTSA), Intellectual Property Protection, Misappropriation, Patent Litigation

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Federal Circuit Says Automated Systems Are Not Abstract when Tied to Improvements

It is now over 10 years since the Bilski decision was handed down by the United States Supreme Court. In that decision and several other decisions that followed (i.e., Mayo, Myriad, and Alice), the Supreme Court pronounced…more

Abstract Ideas, Patent Invalidity, Patent Litigation, Patent-Eligible Subject Matter, Patents

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USPTO Proposes Fee Increases for FY 2017

The USPTO has published its notice of proposed rulemaking for the FY 2017 patent fee schedule in the Federal Register. The USPTO proposes fee increases to recover its estimated costs for patent operations and achieve its…more

America Invents Act, Covered Business Method Proceedings, Federal Register, Inter Partes Review (IPR) Proceeding, Patent Fees

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United States Supreme Court Rules for Google in a Landmark Fair Use Decision

On April 5, 2021, the United States Supreme Court handed down a decision that could have profound implications in the software industry. It held 6-2 that Google’s copying of 11,500 lines of code from Oracle’s Java SE API in…more

Copyright, Copyright Infringement, Copyright Litigation, Fair Use, Google

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Apple Backs Down: Commits to Take Global FRAND License to Avoid Exile from UK Market

For years, Apple has resisted taking a license to Optis’ standard-essential patent portfolio covering Long-Term Evolution (LTE) technology. However, it is now being reported that Apple committed to enter a global FRAND license…more

Apple, FRAND, Licenses, UK

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10 Millionth U.S. Patent Issues Today

Further to our previous blog post, the U.S. Patent and Trademark Office reported that the 10 millionth patent issued today with the new patent cover design…more

Covered Business Method Patents, Design Patent, Intellectual Property Protection, Inventions, Patent Applications

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Quentin Tarantino’s Secret NFTs

Quentin Tarantino recently announced plans to auction off seven scenes from the 1994 motion picture Pulp Fiction as non-fungible tokens or NFTs. These “Tarantino NFTs” will include a collection of high-resolution digital scans…more

Art, Blockchain, Copyright, Cryptocurrency, Digital Assets

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Fast Track to Justice for Trade Secret Theft at the ITC: New Senate Bill Would Expand ITC Authority to Curtail Trade Secret Theft by Foreign Governments

Amid the continuing threat to U.S. intellectual property rights posed by foreign actors, the International Trade Commission (ITC) is poised to become the latest federal agency to bolster protections for U.S. IP owners. The ITC’s…more

Foreign Governments, Imports, Intellectual Property Protection, ITC, Patent Infringement

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Copy Cats II: Nexus of Copying Required to Substantiate Non-Obviousness

On January 28, 2021, the Federal Circuit affirmed the general principle that the mere fact of copying by an accused infringer is insufficient to rebut a charge of obviousness (L’Oreal USA, Inc. v. Olaplex, Inc.; appeal from…more

Confidential Information, L'Oreal, Obviousness, Patent Infringement, Patent Litigation

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Amazon’s Utility Patent Neutral Evaluation Proceeding: Let the Seller Beware

Speed and efficiency have long been Amazon’s hallmarks, and its dispute resolution system for patent infringement claims is no exception. Amazon’s Utility Patent Neutral Evaluation (“UPNE”) proceeding is quickly emerging as an…more

Amazon, Declaratory Judgments, Neutral Evaluation Program, Patent Infringement, Patent Invalidity

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Discretion Retained: USPTO Dodges Attack from Big Tech to Rein in Discretionary IPR Denials

The U.S. Patent and Trademark Office (USPTO) recently thwarted an attempt by big tech companies such as Apple, Cisco, Google, and Intel, to rid themselves of discretionary denials under the Fintiv factors. While these companies…more

America Invents Act, Big Tech, Inter Partes Review (IPR) Proceeding, Patent Infringement, Patent Ownership

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Strengthen Software Claims Against Alice Challenges through Coined Terms and Depicting Technical Advantages in Figures

The Federal Circuit recently provided strategic guidance for defending software claims against Alice challenges that claims recite ineligible patent subject matter under 35 U.S.C. § 101. In Mentone Solutions LLC v. Digi…more

Abstract Ideas, Alice/Mayo, Patent Litigation, Patent-Eligible Subject Matter, Patents

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First Monoclonal Antibody Biosimilar in U.S. Gets One Step Closer to FDA Approval

On February 9, 2016, the FDA’s Arthritis Advisory Committee voted 21-3 to recommend that CT-P13, Celltrion’s proposed biosimilar of Janssen Biotech, Inc.’s Remicade® (infliximab) be approved for all indications — including,…more

Amgen, Apotex, Biosimilars, BPCIA, FDA

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Key Lessons from Patent Litigation for Drafting and Prosecuting Utility Patent Applications

In almost every U.S. patent suit, the patentee’s counsel considers how the case could have been facilitated had the patent at issue been drafted and prosecuted differently. These considerations demonstrate that patents should…more

Claim Construction, Corporate Counsel, Covered Business Method Patents, Patent Applications, Patent Litigation

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Patent Owner Tip #19 for Surviving an Instituted IPR: Sur-Reply Strategies

In this final patent owner tip for surviving an instituted IPR we discuss sur-reply strategies. At this point, the Patent Owner has filed its Response, developed all the facts and evidence, and taken and defended expert…more

Inter Partes Review (IPR) Proceeding, Patent Litigation, Patent Ownership, Patents, Trial Practice Guidance

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Amazon’s Utility Patent Neutral Evaluation Proceeding: Let the Seller Beware

Speed and efficiency have long been Amazon’s hallmarks, and its dispute resolution system for patent infringement claims is no exception. Amazon’s Utility Patent Neutral Evaluation (“UPNE”) proceeding is quickly emerging as an…more

Amazon, Declaratory Judgments, Neutral Evaluation Program, Patent Infringement, Patent Invalidity

See all updates »

Navigating the Legalization of Hemp under the 2018 Farm Bill Involves Changes to the Issuance of Federal Trademarks in the Cannabis Industry

Legalizing “hemp” under the Agricultural Improvement Act of 2018 (2018 Farm Bill) has triggered an important change for the examination of federal trademark applications concerning cannabis and cannabis-derived goods and…more

Agribusiness, Cannabidiol (CBD) oil, Controlled Substances Act, Corporate Counsel, Farm Bill

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Copy Cats II: Nexus of Copying Required to Substantiate Non-Obviousness

On January 28, 2021, the Federal Circuit affirmed the general principle that the mere fact of copying by an accused infringer is insufficient to rebut a charge of obviousness (L’Oreal USA, Inc. v. Olaplex, Inc.; appeal from…more

Confidential Information, L'Oreal, Obviousness, Patent Infringement, Patent Litigation

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With Software Patents and Means-Plus-Function, “Structure” Takes On a New Meaning

Functional Claiming in Software Patents - Software patents are generally directed to a sequence of steps or rules, i.e., an algorithm, performed by a computer programmed to carry out the algorithm. Because algorithms are…more

Algorithms, Claim Limitations, Computer-Related Inventions, Indefiniteness, Intellectual Property Protection

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SCOTUS Declines to Answer Calls for Clarification in American Axle v. Neapco

The United States Supreme Court denied certiorari in the closely observed case American Axle & Manufacturing, Inc., v. Neapco Holdings LLC. The Court’s refusal to hear the case disappointed patent practitioners nationwide—and…more

Ad-Hoc Mandates, Alice/Mayo, Appeals, En Banc Review, Patent-Eligible Subject Matter

See all updates »

USPTO Prepares to Celebrate the Issuance of the Ten Millionth U.S. Patent

The United States Patent and Trademark Office (USPTO) anticipates issuing the 10 millionth utility patent at some point during the summer 2018. According to the USPTO, “[t]his milestone of human ingenuity perhaps exceeds even…more

Design Patent, Inventions, Patent Applications, Patents, USPTO

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Korean Ruling Places Qualcomm’s Business Model at Risk

On December 28, 2016, the Korean Fair Trade Commission (KFTC) issued a steep fine (“KFTC Ruling”) against Qualcomm for antitrust violations in patent licensing and modem chip sales – a record penalty that the U.S. company will…more

Antitrust Violations, Fair Trade Commissions, FRAND, Korea, Patents

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Determining Entity Status Before the United States and Patent Trademark Office: Large, Small, or Micro?

At the time of filing any patent application with the United States and Patent Trademark Office (USPTO), patent applicants must designate their entity status. Selecting the correct entity status can significantly reduce costs,…more

America Invents Act, Fees, Higher Education Act, Micro Entity Status, Nonprofits

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Genus Claims: Foiled again by Written Description

In late August of 2021, the Federal Circuit reversed a jury verdict of $1.2 billion in favor of Juno Therapeutics and Sloan Kettering Institute because the jury’s finding that four of the asserted patent claims did not lack…more

Patent Litigation, Patents, Pharmaceutical Patents, Reversal

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Another One Bites the Dust – N.D. Tex. Dismisses Antitrust Claims re FRAND Commitments with Prejudice

In the latest decision addressing antitrust liability for FRAND commitments, Judge Barbara M. G. Lynn of the Northern District of Texas dismissed a complaint from Continental Automotive Systems, Inc. (“Continental”) alleging,…more

Anti-Competitive, Antitrust Violations, Bargaining Power, Breach of Contract, Declaratory Judgments

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AbbVie’s Enforcement of its ‘Patent Thicket’ For Humira Under the BPCIA Does Not Provide Cognizable Basis for an Antitrust Violation

In a recent decision in In Re Humira (Adalimumab) Antitrust Litigation, No. 19-cv-1873, Judge Shah of the Northern District of Illinois dismissed a consolidated class action complaint filed by U.S. purchasers of AbbVie Inc.’s…more

Anti-Competitive, Antitrust Injuries, Antitrust Litigation, Biopharmaceutical, Biosimilars

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Obviousness-Type Double Patenting and Divisional Applications in Canada

Obviousness-type double patenting (“OTDP”) arises when two or more patents or applications include claims that, while not being identical, are not patentably distinct from each other. In the U.S., OTDP rejections can be…more

Canada, Canadian Patent Office, Double Patent, Obviousness, Obviousness-Type Double Patenting (ODP)

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With its Vanda Pharma and Berkheimer memos, USPTO provides increased clarity around personalized medicine patent eligibility

In the time since the Federal Circuit issued its Vanda Pharma decision in April, Vanda Pharm. Inc. v West-Ward Pharm. Intl. Ltd. 887 F.3d 1117 (Fed. Cir. 2018) the US Patent and Trademark Office (USPTO) has issued two memos to…more

Evidence, Intellectual Property Protection, Patent Examinations, Patent-Eligible Subject Matter, Patents

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PTAB statistics show interesting trends for Orange Book and biologic patents in AIA proceedings

The Patent Trial and Appeal Board (“PTAB”) regularly tracks statistics regarding administrative trials conducted under the processes created by the America Invents Act (“AIA”), which provide insight into recent trends occurring…more

Abbreviated New Drug Application (ANDA), America Invents Act, Biologics, BPCIA, FDA

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Benefits of Using Copyrights to Protect Artificial Intelligence and Machine Learning Inventions

We previously discussed which portions of an artificial intelligence/machine-learning (“AI/ML”) platform could be patented or protected under trade secret, such as related to biotech and synthetic biology. Equally important to…more

Artificial Intelligence, Copyright, Copyright Infringement, Inventions, Machine Learning

See all updates »

Five Tips For Every In-House Counsel Launching an Open Source Software Program

Used properly, Open Source Software (OSS) is an excellent tool. It saves your business time and money, enables interoperability of product platforms, and developers love it. But used improperly, it can be financially and…more

Bad Actors, Copyright, Copyright Infringement, Guidance Documents, Licenses

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U.S. Supreme Court Adopts Rule Protecting a Trademark Licensee’s Ability to Use a Trademark after a Bankrupt Licensor’s Rejection of the License

This past May, in a highly-anticipated decision, the Supreme Court held in Mission Product Holdings, Inc. v. Tempnology, LLC that a debtor’s rejection of an executory contract under Section 365 of the Bankruptcy Code has the…more

Bankruptcy Appellate Panel (BAP), Bankruptcy Code, Breach of Contract, Chapter 11, Commercial Bankruptcy

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DOJ Breaking with Big Tech Approach to SEPs

On June 8, 2022, the DOJ, USPTO, and the National Institute of Standards and Technology (NIST) (collectively, the Agencies) issued a new statement on FRAND licensing (2022 Statement) providing no set policy regarding Standards…more

Department of Justice (DOJ), FRAND, Licenses, NIST, Patents

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A Business Deal Could Kill Your Right to Challenge a Patent’s Validity

Last week, the Federal Circuit issued a decision holding that parties can contractually bargain away their rights to file petitions for Inter Partes Review (“IPR”) at the Patent Trial and Appeals Board (“the Board”). This…more

Confidentiality Agreements, Corporate Counsel, Forum Non Conveniens, Inter Partes Review (IPR) Proceeding, Patent Trial and Appeal Board

See all updates »

Another One Bites the Dust – N.D. Tex. Dismisses Antitrust Claims re FRAND Commitments with Prejudice

In the latest decision addressing antitrust liability for FRAND commitments, Judge Barbara M. G. Lynn of the Northern District of Texas dismissed a complaint from Continental Automotive Systems, Inc. (“Continental”) alleging,…more

Anti-Competitive, Antitrust Violations, Bargaining Power, Breach of Contract, Declaratory Judgments

See all updates »

Reduced Scope of March-in Rights Under Bayh Dole Rules Revisions

The Bayh Dole Act was enacted to provide incentives to promote commercialization of federally funded inventions and was designed to capitalize on the significant government investments in small business, university research, and…more

Bayh-Dole Act, Biden Administration, IP License, March-in-Rights, Patents

See all updates »

Federal Circuit Invalidates Claim to Generating “Financial Risk” Reports

In the recent decision of Clarilogic v. Formfree Holdings, the Federal Circuit invalidated the patentee’s (Formfree) claim to a “computer-implemented method for providing certified financial data indicating financial risk about…more

Abstract Ideas, CLS Bank v Alice Corp, Computer-Related Inventions, Machine-or-Transformation Test, Patent Applications

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Patent Owner Tip #18 for Surviving an Instituted IPR: Defending Depositions

In our penultimate patent owner tip for surviving an instituted IPR, we turn our discussion to defending the deposition of your expert. At this stage of the proceeding, your Patent Owner Response has been filed, and all the…more

Depositions, Expert Testimony, Inter Partes Review (IPR) Proceeding, Patent Litigation, Patent Owner Preliminary Response

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Five Tips For Every In-House Counsel Launching an Open Source Software Program

Used properly, Open Source Software (OSS) is an excellent tool. It saves your business time and money, enables interoperability of product platforms, and developers love it. But used improperly, it can be financially and…more

Bad Actors, Copyright, Copyright Infringement, Guidance Documents, Licenses

See all updates »

Performing a Service without Selling the Process Still Triggers the On-Sale Bar

Services play a large role in today’s economy, and it is important to be mindful of how certain pitfalls that apply to product-based intellectual property rights also apply to method or process-based intellectual property (“IP”)…more

Intellectual Property Protection, On-Sale Bar, Patent Applications, Patent Infringement, Patent Litigation

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Custom Servers Pin Netflix In the Eastern District of Texas

Patent owners searching for an appropriate venue for cases against alleged infringers may be able to point to the activity of an infringer’s agents, based on a new decision from the Eastern District of Texas. In recommending…more

Computer Servers, Internet Service Providers (ISPs), Netflix, Patent Infringement

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Federal Circuit Reminds the PTAB that the APA Process Still Matters

The Federal Circuit recently found that the Patent Trial and Appeal Board (“Board”) violates a patent owner’s procedural rights under the Administrative Procedure Act (“APA”) when construing a disputed claim term by omitting an…more

Administrative Procedure Act, Claim Construction, Patent Trial and Appeal Board, Patents

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District of Delaware Dismisses ANDA Applicant for Lack of Venue under TC Heartland

On October 18, 2018, the United States District Court for the District of Delaware, in Bristol-Myers Squibb v. Mylan Pharmaceuticals Inc., No. 17-00379, held that venue was not proper in Delaware over Mylan Pharmaceuticals Inc…more

Abbreviated New Drug Application (ANDA), Bristol-Myers Squibb, Hatch-Waxman, Improper Venue, Mylan Pharmaceuticals

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PTAB Guidance on Motions to Amend in View of Aqua Products

On November 21st, the PTAB issued guidance on motions to amend based on the Federal Circuit’s en banc decision in Aqua Products, Inc. v. Matal, 872 F.3d 1290 (Fed. Cir. 2017). In view of the Aqua Products decision, the PTAB will…more

Burden of Persuasion, Claim Amendments, Motion to Amend, Patent Ownership, Patent Trial and Appeal Board

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Rule 11 Sanctions Appropriate for Frivolous Inventorship Pleading

While litigants may oft use Rule 11 prematurely or inappropriately, it does have its proper time and place when deployed as intended. In the patent context, examples include when claim elements are clearly missing in an accused…more

Declaratory Judgments, Frivolous Lawsuits, Inequitable Conduct, Inventors, Rule 11

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When It Isn’t Better Late Than Never: ALJ Reins in on Redesigns First Disclosed in the Last Week of Fact Discovery

In a recent IAM article, Levelling the playing field in ITC patent cases by identifying redesigns to a set deadline, we commented on best practices for ITC complainants to protect their interests against the nascent uptick of…more

Administrative Law Judge (ALJ), ITC, Patent Infringement, Patents, Redesigned Products

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Best Practices for Clearances and Opinions

Last week, Mintz Member Lisa Adams moderated a panel discussion between in-house attorneys that covered best practices for conducting patent clearances and obtaining non-infringement and invalidity opinions. The panel…more

Claim Construction, Noninfringement, Patent Infringement, Patent Invalidity, Patent Litigation

See all updates »

Judge Albright Holds Willful Infringement Pleading Does Not Require Allegations of Egregious Infringing Behavior

On July 12, 2022, U.S. District Judge Alan D. Albright of the Western District of Texas denied alleged infringer Lenovo’s motion to dismiss ACQIS’s willful and indirect infringement and enhanced damages claims, holding that…more

Appeals, CAFC, Damages, Infringement, Motion to Dismiss

See all updates »

Judge Albright Holds Willful Infringement Pleading Does Not Require Allegations of Egregious Infringing Behavior

On July 12, 2022, U.S. District Judge Alan D. Albright of the Western District of Texas denied alleged infringer Lenovo’s motion to dismiss ACQIS’s willful and indirect infringement and enhanced damages claims, holding that…more

Appeals, CAFC, Damages, Infringement, Motion to Dismiss

See all updates »

USPTO Releases Final Rules on PTA Calculations in view of Supernus

On June 16, 2020, the U.S. Patent and Trademark Office (USPTO) released final rules (the “Rules”) implementing changes to how Patent Term Adjustment (PTA) is calculated in certain circumstances in view of Supernus Pharms., Inc…more

European Patent Office, Final Rules, Information Disclosure Statement, Patent Applications, Patent Litigation

See all updates »

Lost Profits – Who’s Sale is it Anyway?

Patent owners can recover lost profits when (1) there is a demand for a patented product, (2) an absence of acceptable non-infringing alternatives, (3) the patentee had the manufacturing and marketing capacity to exploit demand…more

Damages, Lost Profits, Non-Infringing Alternatives (NIAs), Patent Ownership

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Benefits of Using Copyrights to Protect Artificial Intelligence and Machine Learning Inventions

We previously discussed which portions of an artificial intelligence/machine-learning (“AI/ML”) platform could be patented or protected under trade secret, such as related to biotech and synthetic biology. Equally important to…more

Artificial Intelligence, Copyright, Copyright Infringement, Inventions, Machine Learning

See all updates »

New revised USMCA trade deal affects intellectual property rights, but not exclusivity period for biologics

On December 10, 2019, an agreement was reached between the United States, Mexico, and Canada on amendments to the U.S.-Mexico-Canada Agreement (“USMCA”). The USMCA, if ratified by each respective country, would replace the North…more

Biologics, Biotechnology, BPCIA, Copyright, Exclusivity

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Examining Art Units to Avoid Subject Matter Eligibility Challenges for Bioinformatics and AI-related Patents

Overview of Subject Matter Eligibility Challenges Computer-based - inventions – especially in the machine learning (ML), bioinformatics, and artificial intelligence (AI) fields – are susceptible to subject matter eligibility…more

Abstract Ideas, Artificial Intelligence, Bioinformatics Patents, Biotechnology, Machine Learning

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Korean Ruling Places Qualcomm’s Business Model at Risk

On December 28, 2016, the Korean Fair Trade Commission (KFTC) issued a steep fine (“KFTC Ruling”) against Qualcomm for antitrust violations in patent licensing and modem chip sales – a record penalty that the U.S. company will…more

Antitrust Violations, Fair Trade Commissions, FRAND, Korea, Patents

See all updates »

Obviousness-Type Double Patenting and Divisional Applications in Canada

Obviousness-type double patenting (“OTDP”) arises when two or more patents or applications include claims that, while not being identical, are not patentably distinct from each other. In the U.S., OTDP rejections can be…more

Canada, Canadian Patent Office, Double Patent, Obviousness, Obviousness-Type Double Patenting (ODP)

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Sales Projections and a “Litigation Risk Multiplier” Are Fair Game When Assessing Reasonable Royalty Damages

A recent decision from Judge Stark, now presiding at the Federal Circuit, endorses the use, by a patent owner’s damages expert, of sales projections and a “litigation risk multiplier” in determining reasonably royalty damages. …more

Damages, Daubert Ruling, Patent Infringement, Patent Royalties, Royalties

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Another Shoe Drops in the Qualcomm Patent Licensing Saga

Just when observers thought Qualcomm could celebrate its successful litigation with Apple another decision has come down which could have major implications for Qualcomm’s business going forward. In much-anticipated 233-page…more

Antitrust Litigation, FRAND, Intellectual Property Protection, IP License, Monopolization

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Ninth Circuit Reverses FTC Win in FTC v. Qualcomm, Finding No Antitrust Violations from Qualcomm’s Licensing of its Standard-Essential Patents

In a reversal that came as no surprise to many observers, on Tuesday, August 11, 2020, a unanimous panel of the U.S. Court of Appeals for the Ninth Circuit reversed the decision by the U.S. District Court for the Northern…more

Anticompetitive Behavior, Antitrust Violations, Appeals, Cell Phones, Competition

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Determining Entity Status Before the United States and Patent Trademark Office: Large, Small, or Micro?

At the time of filing any patent application with the United States and Patent Trademark Office (USPTO), patent applicants must designate their entity status. Selecting the correct entity status can significantly reduce costs,…more

America Invents Act, Fees, Higher Education Act, Micro Entity Status, Nonprofits

See all updates »

Failing to Adequately Support a Means-Plus-Function Claim Term Renders a Claim Invalid

Claim language is important. Particularly when dealing with software systems, claims may be held invalid as being indefinite when the claim language is characterized as “means-plus-function” under pre-AIA 35 U.S.C. §112 ¶ 6 (now…more

Claim Limitations, Indefiniteness, Means-Plus-Function, Patent Invalidity, Patent Litigation

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Fintiv in Decline?

In 2020, the Patent Trial and Appeal Board (“PTAB”) announced six factors to be used in determining whether to institute an inter partes review (“IPR”) when a fast-moving parallel district court litigation could determine the…more

Apple, Inter Partes Review (IPR) Proceeding, Patent Litigation, Patent Trial and Appeal Board, Patents

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Lost Profits – Who’s Sale is it Anyway?

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Canada Institutes Certificates of Supplementary Protection for Approved Drug Products

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Apple Backs Down: Commits to Take Global FRAND License to Avoid Exile from UK Market

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JD Supra Privacy Policy

Updated: Dec 28, 2021:

JD Supra is a legal publishing service that connects experts and their content with broader audiences of professionals, journalists and associations.

This Privacy Policy describes how JD Supra, LLC ("JD Supra" or "we," "us," or "our") collects, uses and shares personal data collected from visitors to our website (located at www.jdsupra.com) (our "Website") who view only publicly-available content as well as subscribers to our services (such as our email digests or author tools)(our "Services"). By using our Website and registering for one of our Services, you are agreeing to the terms of this Privacy Policy.

Please note that if you subscribe to one of our Services, you can make choices about how we collect, use and share your information through our Privacy Center under the "My Account" dashboard (available if you are logged into your JD Supra account).

Collection of Information

Registration Information. When you register with JD Supra for our Website and Services, either as an author or as a subscriber, you will be asked to provide identifying information to create your JD Supra account ("Registration Data"), such as your:

  • Email
  • First Name
  • Last Name
  • Company Name
  • Company Industry
  • Title
  • Country

Other Information: We also collect other information you may voluntarily provide. This may include content you provide for publication. We may also receive your communications with others through our Website and Services (such as contacting an author through our Website) or communications directly with us (such as through email, feedback or other forms or social media). If you are a subscribed user, we will also collect your user preferences, such as the types of articles you would like to read.

Information from third parties (such as, from your employer or LinkedIn): We may also receive information about you from third party sources. For example, your employer may provide your information to us, such as in connection with an article submitted by your employer for publication. If you choose to use LinkedIn to subscribe to our Website and Services, we also collect information related to your LinkedIn account and profile.

Your interactions with our Website and Services: As is true of most websites, we gather certain information automatically. This information includes IP addresses, browser type, Internet service provider (ISP), referring/exit pages, operating system, date/time stamp and clickstream data. We use this information to analyze trends, to administer the Website and our Services, to improve the content and performance of our Website and Services, and to track users' movements around the site. We may also link this automatically-collected data to personal information, for example, to inform authors about who has read their articles. Some of this data is collected through information sent by your web browser. We also use cookies and other tracking technologies to collect this information. To learn more about cookies and other tracking technologies that JD Supra may use on our Website and Services please see our "Cookies Guide" page.

How do we use this information?

We use the information and data we collect principally in order to provide our Website and Services. More specifically, we may use your personal information to:

  • Operate our Website and Services and publish content;
  • Distribute content to you in accordance with your preferences as well as to provide other notifications to you (for example, updates about our policies and terms);
  • Measure readership and usage of the Website and Services;
  • Communicate with you regarding your questions and requests;
  • Authenticate users and to provide for the safety and security of our Website and Services;
  • Conduct research and similar activities to improve our Website and Services; and
  • Comply with our legal and regulatory responsibilities and to enforce our rights.

How is your information shared?

  • Content and other public information (such as an author profile) is shared on our Website and Services, including via email digests and social media feeds, and is accessible to the general public.
  • If you choose to use our Website and Services to communicate directly with a company or individual, such communication may be shared accordingly.
  • Readership information is provided to publishing law firms and companies and authors of content to give them insight into their readership and to help them to improve their content.
  • Our Website may offer you the opportunity to share information through our Website, such as through Facebook's "Like" or Twitter's "Tweet" button. We offer this functionality to help generate interest in our Website and content and to permit you to recommend content to your contacts. You should be aware that sharing through such functionality may result in information being collected by the applicable social media network and possibly being made publicly available (for example, through a search engine). Any such information collection would be subject to such third party social media network's privacy policy.
  • Your information may also be shared to parties who support our business, such as professional advisors as well as web-hosting providers, analytics providers and other information technology providers.
  • Any court, governmental authority, law enforcement agency or other third party where we believe disclosure is necessary to comply with a legal or regulatory obligation, or otherwise to protect our rights, the rights of any third party or individuals' personal safety, or to detect, prevent, or otherwise address fraud, security or safety issues.
  • To our affiliated entities and in connection with the sale, assignment or other transfer of our company or our business.

How We Protect Your Information

JD Supra takes reasonable and appropriate precautions to insure that user information is protected from loss, misuse and unauthorized access, disclosure, alteration and destruction. We restrict access to user information to those individuals who reasonably need access to perform their job functions, such as our third party email service, customer service personnel and technical staff. You should keep in mind that no Internet transmission is ever 100% secure or error-free. Where you use log-in credentials (usernames, passwords) on our Website, please remember that it is your responsibility to safeguard them. If you believe that your log-in credentials have been compromised, please contact us at privacy@jdsupra.com.

Children's Information

Our Website and Services are not directed at children under the age of 16 and we do not knowingly collect personal information from children under the age of 16 through our Website and/or Services. If you have reason to believe that a child under the age of 16 has provided personal information to us, please contact us, and we will endeavor to delete that information from our databases.

Links to Other Websites

Our Website and Services may contain links to other websites. The operators of such other websites may collect information about you, including through cookies or other technologies. If you are using our Website or Services and click a link to another site, you will leave our Website and this Policy will not apply to your use of and activity on those other sites. We encourage you to read the legal notices posted on those sites, including their privacy policies. We are not responsible for the data collection and use practices of such other sites. This Policy applies solely to the information collected in connection with your use of our Website and Services and does not apply to any practices conducted offline or in connection with any other websites.

Information for EU and Swiss Residents

JD Supra's principal place of business is in the United States. By subscribing to our website, you expressly consent to your information being processed in the United States.

  • Our Legal Basis for Processing: Generally, we rely on our legitimate interests in order to process your personal information. For example, we rely on this legal ground if we use your personal information to manage your Registration Data and administer our relationship with you; to deliver our Website and Services; understand and improve our Website and Services; report reader analytics to our authors; to personalize your experience on our Website and Services; and where necessary to protect or defend our or another's rights or property, or to detect, prevent, or otherwise address fraud, security, safety or privacy issues. Please see Article 6(1)(f) of the E.U. General Data Protection Regulation ("GDPR") In addition, there may be other situations where other grounds for processing may exist, such as where processing is a result of legal requirements (GDPR Article 6(1)(c)) or for reasons of public interest (GDPR Article 6(1)(e)). Please see the "Your Rights" section of this Privacy Policy immediately below for more information about how you may request that we limit or refrain from processing your personal information.
  • Your Rights
    • Right of Access/Portability: You can ask to review details about the information we hold about you and how that information has been used and disclosed. Note that we may request to verify your identification before fulfilling your request. You can also request that your personal information is provided to you in a commonly used electronic format so that you can share it with other organizations.
    • Right to Correct Information: You may ask that we make corrections to any information we hold, if you believe such correction to be necessary.
    • Right to Restrict Our Processing or Erasure of Information: You also have the right in certain circumstances to ask us to restrict processing of your personal information or to erase your personal information. Where you have consented to our use of your personal information, you can withdraw your consent at any time.

You can make a request to exercise any of these rights by emailing us at privacy@jdsupra.com or by writing to us at:

Privacy Officer
JD Supra, LLC
150 Harbor Drive, #2760
Sausalito, CA 94965

You can also manage your profile and subscriptions through our Privacy Center under the "My Account" dashboard.

We will make all practical efforts to respect your wishes. There may be times, however, where we are not able to fulfill your request, for example, if applicable law prohibits our compliance. Please note that JD Supra does not use "automatic decision making" or "profiling" as those terms are defined in the GDPR.

  • Timeframe for retaining your personal information: We will retain your personal information in a form that identifies you only for as long as it serves the purpose(s) for which it was initially collected as stated in this Privacy Policy, or subsequently authorized. We may continue processing your personal information for longer periods, but only for the time and to the extent such processing reasonably serves the purposes of archiving in the public interest, journalism, literature and art, scientific or historical research and statistical analysis, and subject to the protection of this Privacy Policy. For example, if you are an author, your personal information may continue to be published in connection with your article indefinitely. When we have no ongoing legitimate business need to process your personal information, we will either delete or anonymize it, or, if this is not possible (for example, because your personal information has been stored in backup archives), then we will securely store your personal information and isolate it from any further processing until deletion is possible.
  • Onward Transfer to Third Parties: As noted in the "How We Share Your Data" Section above, JD Supra may share your information with third parties. When JD Supra discloses your personal information to third parties, we have ensured that such third parties have either certified under the EU-U.S. or Swiss Privacy Shield Framework and will process all personal data received from EU member states/Switzerland in reliance on the applicable Privacy Shield Framework or that they have been subjected to strict contractual provisions in their contract with us to guarantee an adequate level of data protection for your data.

California Privacy Rights

Pursuant to Section 1798.83 of the California Civil Code, our customers who are California residents have the right to request certain information regarding our disclosure of personal information to third parties for their direct marketing purposes.

You can make a request for this information by emailing us at privacy@jdsupra.com or by writing to us at:

Privacy Officer
JD Supra, LLC
150 Harbor Drive, #2760
Sausalito, CA 94965

Some browsers have incorporated a Do Not Track (DNT) feature. These features, when turned on, send a signal that you prefer that the website you are visiting not collect and use data regarding your online searching and browsing activities. As there is not yet a common understanding on how to interpret the DNT signal, we currently do not respond to DNT signals on our site.

Access/Correct/Update/Delete Personal Information

For non-EU/Swiss residents, if you would like to know what personal information we have about you, you can send an e-mail to privacy@jdsupra.com. We will be in contact with you (by mail or otherwise) to verify your identity and provide you the information you request. We will respond within 30 days to your request for access to your personal information. In some cases, we may not be able to remove your personal information, in which case we will let you know if we are unable to do so and why. If you would like to correct or update your personal information, you can manage your profile and subscriptions through our Privacy Center under the "My Account" dashboard. If you would like to delete your account or remove your information from our Website and Services, send an e-mail to privacy@jdsupra.com.

Changes in Our Privacy Policy

We reserve the right to change this Privacy Policy at any time. Please refer to the date at the top of this page to determine when this Policy was last revised. Any changes to our Privacy Policy will become effective upon posting of the revised policy on the Website. By continuing to use our Website and Services following such changes, you will be deemed to have agreed to such changes.

Contacting JD Supra

If you have any questions about this Privacy Policy, the practices of this site, your dealings with our Website or Services, or if you would like to change any of the information you have provided to us, please contact us at: privacy@jdsupra.com.

JD Supra Cookie Guide

As with many websites, JD Supra's website (located at www.jdsupra.com) (our "Website") and our services (such as our email article digests)(our "Services") use a standard technology called a "cookie" and other similar technologies (such as, pixels and web beacons), which are small data files that are transferred to your computer when you use our Website and Services. These technologies automatically identify your browser whenever you interact with our Website and Services.

How We Use Cookies and Other Tracking Technologies

We use cookies and other tracking technologies to:

  1. Improve the user experience on our Website and Services;
  2. Store the authorization token that users receive when they login to the private areas of our Website. This token is specific to a user's login session and requires a valid username and password to obtain. It is required to access the user's profile information, subscriptions, and analytics;
  3. Track anonymous site usage; and
  4. Permit connectivity with social media networks to permit content sharing.

There are different types of cookies and other technologies used our Website, notably:

  • "Session cookies" - These cookies only last as long as your online session, and disappear from your computer or device when you close your browser (like Internet Explorer, Google Chrome or Safari).
  • "Persistent cookies" - These cookies stay on your computer or device after your browser has been closed and last for a time specified in the cookie. We use persistent cookies when we need to know who you are for more than one browsing session. For example, we use them to remember your preferences for the next time you visit.
  • "Web Beacons/Pixels" - Some of our web pages and emails may also contain small electronic images known as web beacons, clear GIFs or single-pixel GIFs. These images are placed on a web page or email and typically work in conjunction with cookies to collect data. We use these images to identify our users and user behavior, such as counting the number of users who have visited a web page or acted upon one of our email digests.

JD Supra Cookies. We place our own cookies on your computer to track certain information about you while you are using our Website and Services. For example, we place a session cookie on your computer each time you visit our Website. We use these cookies to allow you to log-in to your subscriber account. In addition, through these cookies we are able to collect information about how you use the Website, including what browser you may be using, your IP address, and the URL address you came from upon visiting our Website and the URL you next visit (even if those URLs are not on our Website). We also utilize email web beacons to monitor whether our emails are being delivered and read. We also use these tools to help deliver reader analytics to our authors to give them insight into their readership and help them to improve their content, so that it is most useful for our users.

Analytics/Performance Cookies. JD Supra also uses the following analytic tools to help us analyze the performance of our Website and Services as well as how visitors use our Website and Services:

  • HubSpot - For more information about HubSpot cookies, please visit legal.hubspot.com/privacy-policy.
  • New Relic - For more information on New Relic cookies, please visit www.newrelic.com/privacy.
  • Google Analytics - For more information on Google Analytics cookies, visit www.google.com/policies. To opt-out of being tracked by Google Analytics across all websites visit http://tools.google.com/dlpage/gaoptout. This will allow you to download and install a Google Analytics cookie-free web browser.

Facebook, Twitter and other Social Network Cookies. Our content pages allow you to share content appearing on our Website and Services to your social media accounts through the "Like," "Tweet," or similar buttons displayed on such pages. To accomplish this Service, we embed code that such third party social networks provide and that we do not control. These buttons know that you are logged in to your social network account and therefore such social networks could also know that you are viewing the JD Supra Website.

Controlling and Deleting Cookies

If you would like to change how a browser uses cookies, including blocking or deleting cookies from the JD Supra Website and Services you can do so by changing the settings in your web browser. To control cookies, most browsers allow you to either accept or reject all cookies, only accept certain types of cookies, or prompt you every time a site wishes to save a cookie. It's also easy to delete cookies that are already saved on your device by a browser.

The processes for controlling and deleting cookies vary depending on which browser you use. To find out how to do so with a particular browser, you can use your browser's "Help" function or alternatively, you can visit http://www.aboutcookies.org which explains, step-by-step, how to control and delete cookies in most browsers.

Updates to This Policy

We may update this cookie policy and our Privacy Policy from time-to-time, particularly as technology changes. You can always check this page for the latest version. We may also notify you of changes to our privacy policy by email.

Contacting JD Supra

If you have any questions about how we use cookies and other tracking technologies, please contact us at: privacy@jdsupra.com.

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This website uses cookies to improve user experience, track anonymous site usage, store authorization tokens and permit sharing on social media networks. By continuing to browse this website you accept the use of cookies. Click here to read more about how we use cookies.