Avatar McDermott Will & Emery

Subscribe to McDermott Will & Emery's Posts

Foreign Company’s Purposeful US Activities Blemishes Lack of Personal Jurisdiction Defense


By on Sep 9, 2021
Posted In Trademarks

The US Court of Appeals for the Ninth Circuit reversed a district court’s dismissal of a complaint, finding that the foreign defendant was subject to specific personal jurisdiction in the United States in light of the defendant’s marketing, sales and operations, each of which reflected a significant focus on the United States. Ayla, LLC v....

Continue Reading



Printed Matter Is Patentable If It’s Functional, Not Just Communicative


By on Nov 19, 2020
Posted In Patents

In a tour de force of issues related to the printed matter doctrine, the US Court of Appeals for the Federal Circuit reversed various rulings that the patents-in-suit were not infringed, not willfully infringed and invalid as directed to printed matter. Instead, the Court held that there was substantial evidence in the record to support...

Continue Reading



No Stay, But Please Fix


By on Nov 4, 2020
Posted In Patents

The US Court of Appeals for the Federal Circuit denied a motion to stay issuance of a mandate while a petition for certiorari regarding patentability under § 101 was pending before the Supreme Court of the United States, finding no irreparable harm if it did not do so. American Axle & Manufacturing, Inc. v. Neapco...

Continue Reading



No Due Process Violation When New Panel Hears Substantive Arguments


By on Oct 8, 2020
Posted In America Invents Act, Patents

Affirming a Patent Trial and Appeal Board (Board) non-obviousness determination, the US Court of Appeals for the Federal Circuit found that the Board did not abuse its discretion in sanctioning a patent owner who engaged in ex parte communications by having a new panel hear the merits of the petition. Apple Inc. v. Voip-Pal.com Inc.,...

Continue Reading



Hooked on Precedent or Something New


By on Aug 13, 2020
Posted In Patents

Highlighting internal disagreement regarding patent eligibility under § 101, a divided panel of the US Court of Appeals for the Federal Circuit issued a series of opinions revising and reissuing a previous opinion on § 101 patent eligibility for a mechanical invention and, in an even split, denied a petition for en banc review. American Axle...

Continue Reading



Technical Issues Affirm Patent Validity but Preclude Pre-Suit Damages


By on Jul 22, 2020
Posted In Patents

In a split decision, the US Court of Appeals for the Federal Circuit affirmed the subject matter eligibility of claims directed to collection, comparison and classification of information. The Court also unanimously found that the patent owner was not entitled to pre-suit or enhanced damages because it failed to prove pre-suit patent marking by its...

Continue Reading



“Seams” Like Activity Giving Rise to Infringement Risk Supports Appellate Jurisdiction


By on Jul 8, 2020
Posted In America Invents Act, Patents

Adding to its body of jurisprudence on standing to challenge an adverse final written opinion in inter partes review (IPR) proceedings, the US Court of Appeals for the Federal Circuit found a petitioner had constitutional standing to appeal where it showed it engaged in activity that would give rise to a possible infringement suit. Adidas...

Continue Reading



Focusing on Functionality, Software Claims Found Patent Eligible


By on May 14, 2020
Posted In Patents

The US Court of Appeals for the Federal Circuit found that patent claims directed to a communication system were patent eligible under 35 U.S.C. § 101 because the claimed invention changes the normal operation of a communication system to overcome a problem specifically arising in the realm of computer networks. Uniloc USA, Inc. v. LG...

Continue Reading



Stratus Update: Federal Circuit Affirms TTAB Refusal to Register Telecoms Mark


By on Apr 30, 2020
Posted In Trademarks

The US Court of Appeals for the Federal Circuit affirmed a US Patent & Trademark Office (PTO) Trademark Trial and Appeal Board (TTAB) refusal to register the mark STRATUS over the existing registration for STRATA, finding a likelihood of confusion between the two marks. Stratus Networks, Inc. v. UBTA-UBET Communications, Inc., Case No. 19-1351 (Fed....

Continue Reading



Emmy Award to the Rescue – Secondary Considerations Overcome Prior Art


By on Apr 30, 2020
Posted In America Invents Act

The Patent Trial and Appeal Board (Board), in a decision designated as precedential, found that a Patent Owner’s substitute claims were patentable in view of evidence of secondary considerations even though the prior art weighed in favor of obviousness. Lectronics, Inc. v. Zaxcom, Inc., Case No. IPR2018-01129 (PTAB Jan. 24, 2020) (Deshpande, APJ.) (designated precedential...

Continue Reading



BLOG EDITORS

STAY CONNECTED

TOPICS

ARCHIVES