Intellectual Property

Read about a Third Circuit ruling, which held that a creditor’s right to future royalty payments in a non-executory contract — an agreement in which one party has performed all material obligations and the other has not — could be discharged in the bankruptcy of a counterparty-debtor. The decision highlights the importance of properly structuring M&A, earn-out, and royalty-based transactions.

On May 29, 2024, the Western District of Oklahoma in SIPCO, LLC v. JASCO Prods. Co. dismissed the plaintiff SIPCO’s patent infringement claims against defendant JASCO because of a minor typo made by the USPTO during prosecution.

Last week, Sun Patent Trust sued Xiaomi in France for infringement of patents claimed to be essential to the LTE-Advanced standard. In its suit, Sun Patent Trust asked French courts to set a global FRAND rate—something that has never occurred before. 

Blockchain is becoming central to more FinTech patent portfolios than ever – but it’s harder to obtain protection on blockchain than most other technologies. The US Supreme Court’s decision in Alice v. CLS Bank (2014) strengthened limits on what subject matter is eligible for patent protection under 35. U.S.C. §101. 

To stay or to go (from the docket)? For decades, federal courts of appeal have disagreed on a fundamental procedural question: when a dispute filed in federal district court is subject to arbitration, should the court dismiss the action or stay it pending the outcome of the arbitration? 

The United States Patent and Trademark Office (USPTO) has issued a pivotal guidance document, effective April 11, on the use of Artificial Intelligence (AI) tools within patent and trademark practices.

To date, the Unified Patent Court (UPC) has not held a trial involving standard-essential patents (SEPs). However, the new forum’s Mannheim Local Division has now authored its first SEP-specific order in a case between Panasonic and Xiaomi. 

On April 17, 2024, a second Texas jury assessed damages of $142 million against Samsung, more than doubling a previous jury award of $67.5 in a protracted standard essential patent (SEP) litigation brought by G+ Communications. 

Where an alleged infringer administers a substance A to a subject, and the substance is subsequently transformed to a therapeutic agent X inside the subject’s body, does the administration of the substance A constitute an act of infringement of a patent claiming a method of treatment by administration of the therapeutic agent X?

In a precedential opinion issued on April 11, 2024 in Salix Pharmaceuticals, Ltd. v. Norwich Pharmaceuticals Inc., Nos. 22-2153, 23-1952, the U.S. Court of Appeals for the Federal Circuit affirmed the U.S. District Court for the District of Delaware’s decision holding claims directed to polymorphic form “β” of rifaximin invalid as obvious. 

Filing a continuation application from a parent patent is an implicit admission that obviousness-type double patenting (ODP) applies to the resulting continuation patent.  A Terminal Disclaimer in the continuation patent over the parent patent is thus necessary to avoid the public policy concerns underlying ODP.

Implementers of standard essential patents (SEPs) continue to hold out in patent licensing discussions with SEP owners, including pursuing the cynical strategy of seeking anti-suit injunctions (ASIs). 

The United States Patent and Trademark Office (USPTO) released the web-based Patent Public Search tool ("PPS") in late 2021. This useful tool is comparable to the search tool that the PTO’s own examiner’s use to find prior art. That said, PPS has a real learning curve in developing effective search queries. In this article we offer a starting point in developing search queries that will return relevant results.

Compulsory licensing is a practice that allows a third party to produce or use a patented product or process without the consent of the patent owner.  The practice may be implemented to ensure patent owners are utilizing the technology in which they were granted exclusive rights.

As 2024 begins and intellectual property (IP) strategies are being developed for the new year, it is a good time to reflect on what IP issues were prominent in 2023. According to many readers, hot IP topics included patent litigation strategies, artificial intelligence (AI), and pharmaceutical-related patent applications.