Protecting Your Brand in China
What the First-to-File Patent Change Means (And What IP Strategists Should Do About It)
The Corporate Law Report: First-to-File Patents, Hiring for Cultural Fit, Roth Conversions Post-Fiscal Cliff, and Global Corporate Insights
Precedential and Key Federal Circuit Opinions - SANHO CORP. v. KAIJET TECHNOLOGY INTERNATIONAL LIMITED, INC. [OPINION] (2023-1336, 7/31/24) (Dyk, Clevenger, Stoll) - Dyk, J. The Court affirmed the Board’s decision...more
As part of the America Invents Act (“AIA”), Congress moved the patent system from a first-to-invent to a first-inventor-to-file system. For patents governed by the new first-to-file system, the Act also eliminated...more
This case addresses certain implications of the Laehy-Smith America Invests Act (AIA), namely whether patents with a filing date after March 16, 2013 (pure AIA patents) may be part of an interference proceeding under pre-AIA,...more
One of the wonderful (as in, it makes one wonder) and frustrating (which needs no explanation) aspects of patent law is that just when you think a question is settled it either isn't or the conventional interpretation is...more
Four subjects stood out in patent litigation in Texas in April 2023: (1) applicability of the customer-suit exception to the first-to-file rule; (2) the level of ties a reasonable royalty methodology must have to the facts of...more
In a “first to file” patent system as exists in the United States and in most countries throughout the world, timing of when to file a patent application is critically important but must be balanced by patentability...more
Dear Patenticity, My company has several new product concepts under development right now, and some are very early in the design process. We are in a very competitive space, so we want to protect our work with patents to...more
A patent is eligible for post-grant review (“PGR”) only if the patent is subject to the first-inventor-to-file provisions of the AIA. In Tricam Indus., Inc. v. Little Giant Ladder Sys., LLC, the PTAB explained that...more
There are many misconceptions or ‘myths’ about patents that have found their way into popular discourse, ranging from what type of innovations are patentable, to how important it is to own and protect your intellectual...more
After issuing a rare grant of a mandamus petition directing a district court to stay proceedings until ruling on a pending motion to transfer, the US Court of Appeals for the Federal Circuit denied a subsequent mandamus...more
Interferences were rendered unnecessary with the passage of the Leahy-Smith America Invents Act in 2011, but they linger in disputes between patents and applications claiming priority to applications filed before the change...more
Expiration of a Patent Does Not Always Trigger Application of Phillips Standard on IPR Appeal - In Immunex Corporation v. Sanofi-Aventis U.S. LLC, Appeal No. 19-1749, the Federal Circuit held that expiration of a patent...more
Precedential Federal Circuit Opinions: In Re NITRO FLUIDS L.L.C. [ORDER] (2020-0142, 10/28/28) (REYNA, WALLACH, and CHEN) - Reyna, J. The Court considered a petition for a writ of mandamus seeking transfer from the...more
Vacating and remanding a district court’s decision not to transfer a case, the US Court of Appeals for the Federal Circuit granted a petition for a writ of mandamus because the district court did not consider whether the...more
In re: Nitro Fluids L.L.C., Appeal No. 2020-142 (Fed. Cir. Oct. 28, 2020) - In the Court’s only precedential patent opinion this week, the Federal Circuit granted a mandamus petition vacating the district court’s denial of...more
In what seems to be a pattern, the week before argument week was again light on output at the Federal Circuit. The Court issued just two opinions and two dispositive orders. Below we provide our usual weekly statistics and...more
IN RE: NITRO FLUIDS - Before Reyna, Wallach, and Chen. Petition for writ of mandamus to Western District of Texas. Summary: The balance of transfer factors must favor keeping a case in a second-filed court in order to...more
The Québec Court of Appeal recently released a decision in Micron Technology Inc. c Hazan, 2020 QCCA 1104, that could have important implications for defendants seeking to have proposed class proceedings in Québec courts...more
In Dana-Farber Cancer Institute v. Ono Pharmaceutical Co., Ltd., the Federal Circuit held that publication of a part of a complicated invention did not automatically preclude joint inventorship of that invention. The court...more
The US Court of Appeals for the Federal Circuit affirmed a district court’s decision to dismiss a first-filed declaratory judgment complaint, finding that equitable considerations warranted departure from the first-to-file...more
Communications Test Design, Inc. v. Contec, LLC - Before O’Malley, Mayer, and Wallach. Appeal from the Eastern District of Pennsylvania. Summary: Filing a declaratory judgment action in the midst of ongoing licensing...more
PATENT CASE OF THE WEEK - Communication Test Design, Inc. v. Contec, LLC, Appeal No. 2019-1672 (Fed. Cir. March 13, 2020) - This week’s Case of the Week explores two important procedural issues: a court’s discretion to...more
Chief Judge Rodney Gilstrap of the Eastern District of Texas issued a decision addressing motions to stay a patent infringement case under the “customer-suit exception” to the general first-to-file rule. Judge Gilstrap...more
With the implementation of the America Invents Act and the United States moving to a first-to-file regime, there is greater time pressure to file patent applications than ever before. When patent protection in ex-US...more
The US Court of Appeals for the Federal Circuit denied a petition for a writ of mandamus requesting transfer of a patent infringement case, finding that the “first-to-file” rule did not warrant transfer because, even though...more