McDermott Will & Emery
Subscribe to McDermott Will & Emery's PostsEmmy 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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No Disclaimer, No Problem – Terms Limited by Consistent Statements
By McDermott Will & Emery on Apr 2, 2020
Posted In America Invents Act, Patents
In an appeal from the Patent Trial and Appeal Board (PTAB), the US Court of Appeals for the Federal Circuit found claim construction error and reversed the PTAB’s finding that all instituted claims were unpatentable. Personalized Media Commc’ns, LLC v. Apple Inc., Case No. 18-1936 (Fed. Cir. Mar. 13, 2020) (Stoll, J.).
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No Statutory Damages Even When Post-Registration Acts Violate a Different Exclusive Right from Pre-Registration Acts
By McDermott Will & Emery on Jan 29, 2020
Posted In Copyrights
The US Court of Appeals for the Fifth Circuit has reversed a district court ruling awarding statutory copyright damages for pre-registration infringements, explaining that the statute bars such an award even when the post-registration infringement of exclusive rights of the copyright holder is different from the pre-registration act(s). Southern Credentialing Support Services, LLC v. Hammond...
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Inherency Can Be Used in Obviousness Analysis to Supply Missing Limitation
By McDermott Will & Emery on Jan 15, 2020
Posted In Patents
Finding that inherency can be used to show the presence of a missing claim limitation, the US Court of Appeals for the Federal Circuit affirmed a district court decision that asserted claims in pain management method patents were invalid as obvious. Persion Pharmaceuticals LLC v. Alvogen Malta Operations Ltd., Case No. 18-2361 (Fed. Cir., Dec....
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Federal Circuit Leaves Controversial Noerr-Pennington Trial Court Decision Untouched
By Lisa A. Peterson and McDermott Will & Emery on Jan 8, 2020
Posted In Antitrust, Patents
The US Court of Appeals for the Federal Circuit denied counterclaim plaintiff’s petition for panel rehearing and rehearing en banc with respect to its decision that the counterclaim plaintiff was estopped from bringing antitrust counterclaims in a patent infringement suit. Intellectual Ventures 1, LLC v. Capital One Financial Corporation, Case No. 18-1367 (Fed. Cir. Dec....
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Slipping Through the Cracks of the § 271(e)(1) Safe Harbor
By McDermott Will & Emery on Jan 8, 2020
Posted In Life Sciences, Patents
The US Court of Appeals for the Federal Circuit affirmed that the majority of the batches of an accused biosimilar manufactured by Hospira were not protected by the Safe Harbor exemption of § 271(e)(1), and that patent infringement damages were not unreasonable, notwithstanding that none of the accused product had been sold. Amgen Inc. v....
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Garage Door Opener Dispute Highlights Importance of Disavowal
By McDermott Will & Emery on Jan 8, 2020
Posted In Patents
In a pair of opinions, the US Court of Appeals for the Federal Circuit addressed appeals arising out of the Chamberlain Group and One World Technologies’ patent infringement dispute concerning garage door opener technology. In the first appeal of a limited exclusion order issued by the USITC, the Federal Circuit reversed and vacated the USITC’s...
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