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Patents International Trade Commission (ITC) Patent Ownership

Foley & Lardner LLP

Federal Circuit Opens the Door to Additional Domestic Industry Investment: “Ordinary Importer” No Longer

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In its recent decision in Lashify, Inc. v. International Trade Commission, the Federal Circuit opened the door for patent owners to include expanded categories of domestic investment to satisfy the economic prong of the...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

2024 ITC Section 337 Year in Review: Analysis & Trends

Section 337 investigations at the U.S. International Trade Commission (ITC) remain an efficient and powerful method for American businesses seeking relief from foreign acts of unfair competition, including infringement of...more

Sheppard Mullin Richter & Hampton LLP

Celanese v. ITC: How the On-Sale Bar Can Turn Sweet Sales into Spoiled Patents

Celanese International Corporation, Celanese (Malta) Company 2 Limited, and Celanese Sales U.S. Ltd. (collectively, “Celanese”) filed a petition before the United States International Trade Commission (the “ITC”), alleging...more

Dinsmore & Shohl LLP

Federal Circuit Reiterates the Urgency of Opting for Patent Protection or Trade Secrecy, as the On-Sale Bar to Patentability Looms

Dinsmore & Shohl LLP on

Under 35 U.S.C. § 102, the “on-sale bar” invalidates a patent if an inventor has sold or made the invention publicly available more than one year before filing the patent application. Recently, the United States Court of...more

A&O Shearman

Federal Circuit Holds That America Invents Act Does Not Affect On-Sale Bar To Patentability

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In Celanese Int’l Corp. v. ITC, the Federal Circuit addressed whether the America Invents Act (“AIA”) changed the on-sale bar such that the sale of a product made using a secret process would no longer invalidate later-sought...more

Jones Day

Petitioner Faulted For Not Preemptively Addressing Fintiv

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On July 17, 2023, the Patent Trial and Appeals Board (“PTAB”) exercised its discretion under 35 U.S.C. § 314(a) to deny institution of an inter partes review petition based on the stature of a related U.S. District Court of...more

McDermott Will & Emery

Employment Agreement Assignment Provisions Don’t Reach Post-Employment Inventions

The US Court of Appeals for the Federal Circuit rejected a biotechnology company’s argument that assignment provisions in its employment agreements granted ownership rights in post-employment inventions. Bio-Rad Laboratories,...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

Senators Propose Bill to Strengthen Anti-Counterfeiting Toolkit with Design Patents

On December 5, 2019, four senators introduced a bill that would add an important tool to the design patent enforcement toolbox, making it easier and less expensive to enforce design patents at the U.S. border. Senators...more

Mintz - Intellectual Property Viewpoints

Recent Decision Holds That Litigation Funding Does Not Harm Standing and Provides Tips for Negotiating Funding Agreements

The August 13, 2019 decision from the United States District Court for the District of New Jersey in WAG Acquisition, LLC v. Multi Media LLC, Civil Action No. 2-14-cv-02340, deals a blow to a common attack on litigation...more

Mintz - Intellectual Property Viewpoints

International Trade Commission Clarifies the Intersection Between Litigation Funding Agreements and Standing

On April 18, 2018, the International Trade Commission (“Commission”) reversed an Administrative Law Judge’s (“ALJ”) finding that a litigation funding agreement destroyed standing for a complainant at the ITC. In Certain Audio...more

Jones Day

Owning the Patent Isn’t Always Enough for Standing

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In a recent Initial Determination (“ID”), Administrative Law Judge Lord ruled that a patent owner did not have standing to sue without joining a third party to which certain rights had been transferred. Certain Audio...more

Schwabe, Williamson & Wyatt PC

2017 and Early 2018 Supreme Court and Precedential Patent Cases From the Federal Circuit

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

Jones Day

Senate’s STRONGER Patents Act Aims to Address Key PTAB Patent Owner Woes

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On June 21, Senators Chris Coons (D-Del), Tom Cotton (R-Ark), Dick Durbin (D-Ill), and Mazie Hironoa (D-Hawaii) introduced the “Support Technology & Research for Our Nation’s Growth and Economic Resilience Patents Act of...more

Mintz - Intellectual Property Viewpoints

Markman at the ITC and Its Effect on an Investigation

Several months ago, we were struck with the question of whether, as counsel for a patent owner at the ITC, our clients’ case would benefit from a Markman hearing. Claim construction during an ITC investigation was routinely...more

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