Intellectual Property

Recently in Nike, Inc. v. Skechers U.S.A., Inc., 2:17-cv-08509 (C.D. Cal.) (October 26, 2020), the U.S. District Court for the Central District of California granted-in-part and denied-in-part Defendant, Skechers U.S.A., Inc.’s (“Skechers”), motion to limit Plaintiff, Nike, Inc.’s (“Nike”), claim seeking attorney’s fees related to the infringement of its eight asserted design patents, resulting in the bifurcation of the willfulness issue from the trial on the merits.

On November 5, 2020, the United States Court of Appeals for the Federal Circuit, in Valeant Pharmaceuticals N. Am. LLC v. Mylan Pharmaceuticals Inc., No. 19-2402, resolved a split among district courts over what constitutes “acts of infringement” sufficient to support venue in the context of a Hatch-Waxman litigation.  

Building on Tip #4, one effective way to avoid institution and not address facts is to point out shortcomings in the petition’s application of KSR when asserting motivation to combine for an obviousness analysis. The Patent Trial and Appeal Board (“PTAB”) is an administrative tribunal that frequently encounters proposed grounds that challenged claims are obvious pursuant to 35 U.S.C. ¶103.

We’ve previously written that the best defense to an IPR challenge is avoiding IPR institution altogether. In addition to the other tips discussed in this series of posts, another strategy for avoiding institution is focusing the Patent Owner’s Preliminary Response (“POPR”) on areas where the Petitioner failed to adequately support its argument.

Under U.S. patent law, “No inter partes review will be instituted based on disclaimed claims.”  37 C.F.R.  § 42.107(e).  And petitioners only need to demonstrate a reasonable likelihood of prevailing with respect to one challenged claim in order to secure a favorable institution from the PTAB. 35 U.S.C. § 314.  

If you are a patent owner facing an inter partes review (“IPR”) or other post-grant review at the Patent Trial and Appeal Board (“PTAB”), your best chance of success is to convince the PTAB not to institute a trial.  But that does not mean that you should pack all of your substantive arguments about patentability into your preliminary response.

As we reported in our July 7, 2020 blog post on the USPTO v. Booking.com B.V decision, the U.S. Supreme Court ruled that a proposed mark consisting of the combination of a generic term and a generic top-level domain, like “.com,” is not automatically generic and can be protected as a trademark under certain circumstances.

Venue selection is a critical component to any patent enforcement strategy, even before the inception of the PTAB as we know it today.  Venue now has even greater importance, as the speed of your patent case (i.e. time to trial) and stay statistics will have a direct impact on whether IPRs against your patents will institute in light of the Fintiv factors.

The United States Patent and Trademark Office (USPTO) Patent Trial and Appeal Board (PTAB) was once famously referred to by the former chief judge of the Federal Circuit, the honorable Randall Rader, as a patent death squad.

Increased employee mobility, health challenges, and the economic downturn due to the COVID-19 pandemic may result in more inventors than usual being unavailable to assign patent rights.  Fortunately, applicants may procure a U.S. patent even if an assignment document cannot be obtained for the application to be filed.  

The recent anti-suit injunction issued against InterDigital in its SEP litigation with Xiaomi is a somewhat predictable reaction to the recent UK Supreme Court decision against Huawei and ZTE.  One of the central arguments there was that the UK courts were trying to set themselves up as the international arbiter of FRAND disputes. 

On October 13, 2020, the U.S. Supreme Court granted three petitions for writ of certiorari related to Arthrex v. Smith & Nephew addressing two issues that will determine the fate of PTAB judges and decisions.

In high-stakes litigation, parties go to great lengths to prove their case.  One such example is ongoing litigation between two giants in the paint and coatings world.  Sherwin-Williams Co. and PPG Industries, Inc. are involved in a patent infringement dispute over BPA-free can coatings.

In Network-1 Techs., Inc. v. Hewlett-Packard, No. 18-2338, the Federal Circuit reversed and vacated multiple aspects of the district court’s final judgment holding that Hewlett-Packard (HP) did not infringe U.S. Patent No. 6,218,930 (“the ’930 patent”) disclosing an apparatus and method for remotely powering Ethernet compatible equipment.

In the latest decision addressing antitrust liability for FRAND commitments, Judge Barbara M. G. Lynn of the Northern District of Texas dismissed a complaint from Continental Automotive Systems, Inc. (“Continental”) alleging, inter alia, violations of §§ 1 and 2 of the Sherman Act, and declaratory judgment as to FRAND obligations against Avanci, LLC (“Avanci”) and various members of its patent pool (collectively, “Defendants”).

Innovations that are eligible for patent protection are often vital to a company’s revenue stream and profitability, but in some cases, opting for trade secret protection is a better strategic choice.

Last Thursday, September 10, 2020, the U.S. Department of Justice’s Antitrust Division (“DOJ”) issued an updated Business Review Letter (“2020 Letter”) to the Institute of Electrical Electronics Engineers, Incorporated (“IEEE”) clarifying the DOJ’s views on licensing and enforcement practices related to standard essential patents (“SEPs”).

Increased employee mobility, health challenges, and the economic downturn due to the COVID-19 pandemic may result in more inventors than usual being unavailable to sign declarations for patent applications as required by the U.S. Patent and Trademark Office (USPTO) for all applications. 

An ethical corporate culture and clear expectations during the hiring process can help companies curtail trade secret disputes when hiring employees from rival companies.

Companies can minimize trade secret theft by business partners by instituting non-disclosure agreements before sharing trade secrets and establishing general confidentiality agreements with business partners.