McDermott Will & Emery
Subscribe to McDermott Will & Emery's PostsPrinted Matter Is Patentable If It’s Functional, Not Just Communicative
By McDermott Will & Emery 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...
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No Stay, But Please Fix
By McDermott Will & Emery 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...
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No Due Process Violation When New Panel Hears Substantive Arguments
By McDermott Will & Emery 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.,...
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Hooked on Precedent or Something New
By McDermott Will & Emery 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...
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Technical Issues Affirm Patent Validity but Preclude Pre-Suit Damages
By McDermott Will & Emery 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...
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“Seams” Like Activity Giving Rise to Infringement Risk Supports Appellate Jurisdiction
By McDermott Will & Emery 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...
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Focusing on Functionality, Software Claims Found Patent Eligible
By McDermott Will & Emery 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...
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Emmy Award to the Rescue – Secondary Considerations Overcome Prior Art
By McDermott Will & Emery 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...
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No Summary Judgment Where Primary Reference Might Not Be “Basically the Same” as Asserted Design Patent
By McDermott Will & Emery on Apr 30, 2020
Posted In Patents
The US Court of Appeals for the Federal Circuit found that the district court improperly resolved a genuine dispute of material fact with respect to summary judgment of invalidity for design patent obviousness because a reasonable fact finder could have concluded that the primary prior art reference did not create “basically the same” visual impression...
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No Trade Dress Protection for Functional Shape and Color Scheme
By McDermott Will & Emery on Apr 9, 2020
Posted In Trademarks
Addressing the scope of trade dress protection, the US Court of Appeals for the Fourth Circuit found that the shape and color scheme of a product was functional and therefore only eligible for patent law’s protection of utilitarian inventions. CTB, Inc. v. Hog Slat, Inc., Case No. 18-2107 (4th Cir. Mar. 27, 2020) (Wynn, J.)...
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