You May Be Exhausted Over Standard Essential Patents (And Not Even Know It)
For many product manufacturers, post-sale repair and maintenance of their products is a significant source of revenue, and manufacturers use various incentives to entice their customers to return to them for post-sale...more
In interpreting a patent license agreement originally drafted in the era of third generation (3G) cellular networks, the US Court of Appeals for the Federal Circuit found that the license agreement covered subsequent wireless...more
Recently, the Department of Justice issued a business review letter (BRL) relating to Avanci’s proposed 5G licensing platform for patents declared as potentially essential owned by its globally diverse thirty eight...more
Broad Claim Language and Unpredictability in the Art Lead to Non-Enablement - In Enzo Life Sciences, Inc. v. Roche Molecular Systems, Inc., Appeal Nos. 2017-2498, -2499, -2545, -2546, broad patent claims were invalid as...more
• In a relatively rare opinion regarding design patents, the U.S. Court of Appeals for the Federal Circuit weighed in recently on the requirements for design patents in its Automotive Body Parts Association v. Ford Global...more
PATENT CASE OF THE WEEK - Automotive Body Parts Ass’n. v. Ford Global Techs., LLC, Appeal No. 2018-1613 (Fed. Cir. July 23, 2019) - Our case of the week is a design patent case. It concerns two primary issues—what...more
On July 23, 2019, the U.S. Court of Appeals for the Federal Circuit released its decision affirming summary judgment that the asserted design patents were not invalid for non-ornamentality under 35 U.S.C. § 171, and rejecting...more
The Federal Circuit has ruled that neither the exhaustion nor permissible repair doctrines allow manufacture of new replacement components covered by design patents. The Automotive Body Parts Association (ABPA) sued Ford...more
The Federal Circuit issued a precedential opinion on July 23, 2019, affirming the validity of two design patents related to the Ford F-150 hood and headlamp and sweepingly rejecting arguments that the patents on automotive...more
AUTOMOTIVE BODY PARTS ASS'N v. FORD GLOBAL TECHNOLOGIES, LLC - Before Hughes, Schall, and Stoll. Appeal from the United States District Court for the Eastern District of Michigan. Summary: Aesthetic appeal is not an...more
A district court in the Western District of Washington denied Adaptics Ltd.’s (“Adaptics”) motion for summary judgment of patent exhaustion, which was based on a theory that an authorized sale by a downstream reseller can...more
As has been widely reported in the recent weeks, the UK government is currently trying to progress negotiations on a withdrawal agreement and a framework for its future relationship with the EU. However, uncertainty remains...more
Though it can be difficult to avoid post-grant challenges, patents can be drafted to increase the chances of survival. In today’s environment, patents subject to post-grant proceedings face a very high likelihood of being...more
This year was a significant year for intellectual property cases at the Supreme Court level. In fact, the Supreme Court granted certiorari for seven patent cases, and decided five of these cases before the end of the year....more
In an application of 2017 U.S. Supreme Court precedent in Impressions Products, Inc. v. Lexmark Intern., Inc., the Northern District California in International Fruit Genetics LLC v. Orcharddepot.com, No. 4:17-cv-02905-JSW,...more
Arbitration - Waymo v. Uber Technologies, 870 F.3d 1342 (Fed. Cir. 2017) - Waymo sued Uber and others for trade secret misappropriation and patent infringement. Uber contends that Waymo should be compelled to...more
Patent Exhaustion: Supreme Court Expands Patent-Limiting Doctrine - The U.S. Supreme Court at the end of the past term handed down a decision, Impression Products, Inc. v. Lexmark International, Inc., that greatly expanded...more
The U.S. Supreme Court at the end of the past term handed down a decision, Impression Products, Inc. v. Lexmark International, Inc., that greatly expanded the doctrine of patent exhaustion. This equitable doctrine prevents a...more
Generally, a patent owner's rights are exhausted after an authorized sale; the patent owner cannot sue a downstream customer who purchased an authorized patented product from a third party reseller. So how can a patent owner...more
The UK government’s draft EU Withdrawal Bill (the “Brexit Bill“) aims to incorporate EU directives and regulations into UK domestic law in their current form immediately following Brexit (“Retained EU Law“). This article...more
I was on a panel at the Patent Law in Global Perspectives Seminar on October 20 at Stanford Law School, discussing the implications of Impression Products, Inc. v. Lexmark, 581 U.S. ___, 137 S. Ct. 1523 (2017), for patent...more
Serial IPR or CBM petitions challenging the same patent claims have been a recurring issue for the PTAB. On October 18, 2017, the PTAB designated as precedential a portion of a decision by an expanded panel that addressed...more
The most important patent-antitrust case in recent years is not an antitrust case but is the United States Supreme Court’s May 2017 decision in Impression Products Inc. v. Lexmark Int’l., Inc., 583 U.S. ___ (2017). ...more
Last May, the U.S. Supreme Court issued a highly-anticipated decision in Impression Products, Inc. v. Lexmark Int’l, Inc., reversing the Federal Circuit and holding that, when a patent holder sells a product, it exhausts all...more