The instant case highlights a disagreement between the Federal Circuit Judges Newman and Dyk regarding whether deference should be applied to an examiner’s amendment entered in order to overcome an indefiniteness rejection under 35 U.S.C. § 112(b). Judge Newman, writing for the majority, found that deference should be applied…
Publications
Irwin IP Publications is the go-to resource for the latest updates and insights in the world of intellectual property. Over 250 articles are published on cases addressing unique issues, all of which can be found using the search tool below. Additionally, there is a collection of articles/papers and presentations that cover a wide range of topics. Whether you’re a legal professional, business owner, or simply someone passionate about IP, our publications page will provide you with all the knowledge needed to navigate this dynamic field.
The Federal Circuit recently affirmed the District Court for the Central District of California’s decision to issue a preliminary injunction on Masimo’s trade secret claims, finding that the district court did not err in determining that (1) Masimo was likely to establish that TSS was a trade secret, and…
The Trademark Trial and Appeal Board (TTAB) issued the first precedential opinion of 2022 refusing registration of POTIFY and POTIFY (design) based on dilution by blurring of the mark SPOTIFY. The TTAB did not reach the alternate grounds of likelihood of confusion or dilution by tarnishment. Applicant sought registration…
On January 3, 2022, the Court of Appeals of the Federal Circuit (“CAFC”) affirmed a Delaware ruling finding that a patent on a multibillion-dollar multiple sclerosis drug was not invalid and did have an adequate written description as to no-loading-dose and 0.5 mg daily dosage limitations despite the fact…
The Federal Circuit (“CAFC”) continues to define when a party has standing to appeal the final written decision of an inter partes review (“IPR”) proceeding from the Patent Trial and Appeal Board (“PTAB”). On December 28, 2021, the CAFC ruled in a pair of precedential decisions (Nos. 2020-1664 and…
Recently, the Second Circuit held that it was not fair use for an artist (“Andy Warhol”), who was licensed to create an artist reference for a 1984 Vanity Fair article based on an iconic photograph of Prince, to also create a 15-work series based on the iconic photograph. Andy…
On November 24, 2021, the Court of Appeals of the Federal Circuit (“CAFC”) affirmed a Patent Trial and Appeal Board (“PTAB”) decision invalidating most of the claims of a patent on opioid addiction treatment because the amounts of compounds described in the patent and ranges listed in the claims…
Recently, the Court of Appeals for the Federal Circuit (“CAFC”) took the rare opportunity to describe the pleading requirement as it relates to direct patent infringement. Plaintiff Bot M8 LLC (“Bot M8”) sued Sony Corp. of America (“Sony”) alleging that Sony’s products, including its Playstation 4 videogame console (the…
In a 363-page final initial determination of a Section 337 of the Tariff Act of 1930, as amended (19 U.S.C. § 1337), action, publicly released on October 13, 2021, Administrative Law Judge (“ALJ”) David P. Shaw addressed a number of arguments with respect to several patents owned by Overhead…
The Supreme Court’s 2014 decision in Alice Corp. v. CLS Bank International continues to trip up patentees, as the Federal Circuit, (“CAFC”), and the District of Arizona invalidated two separate patents for claiming unpatentable subject matter last week. Cardionet involved U.S. Patent No. 7,099,715 (“the ’715 patent”), which was…
The Federal Circuit (“CAFC”) affirmed an award of exceptional case attorneys’ fees under 35 U.S.C. § 285 (“§ 285”) over Appellant Heat On-The-Fly (“HOTF”)’s arguments that the district court erred in failing to consider certain factual findings, and that it mis-weighed the strength of HOTF’s litigation positions and a purported lack…
On October 13, 2021, the Federal Circuit (“CAFC”) held that any financial interest administrative patent judges (“APJs”) have in instituting AIA proceedings did not violate a patentee’s due process rights. Mobility Workx (“Mobility”) brought an infringement suit against T-Mobile and Verizon Wireless, shortly afterwards Unified Patents LLC (“Unified”) filed…
On September 28, 2021, the Federal Circuit, (“CAFC”), reinstated an enhanced damages award against Cisco Systems Inc. (“Cisco”), holding that both substantial evidence supports the jury’s finding of Cisco’s willful infringement after May 8, 2012, and that Cisco’s conduct rises to the level of “wanton, malicious, and bad-faith behavior”…
On August 23, 2021, the 9th Circuit found that under California common law and statutory copyright law, owners of pre-1972 sound recordings do not have an exclusive ownership right in public performances. This holding means that owners of pre-1972 sound recordings are entitled only to royalties for the public…
Covers select developments in patent and trade secret law between 2014 and 2016, including changes to the standard of patentability and patent infringement damages, as well as the federal Defend Trade Secrets Act….
On September 23, 2021, the Third Circuit reversed dismissal of a newscaster’s statutory Pennsylvania Right of Publicity claim. It held that there was no immunity under the Communications Decency Act (“CDA”) for said claim because the CDA’s carve out for intellectual property protections are not limited to federal intellectual…
On September 9, 2021, the Court of Appeals for the Federal Circuit (“CAFC”) found that use of a catalog description of a prior art product as a prior art reference in an IPR proceeding does not create 35 U.S.C. § 315(e)(2) estoppel as to the underlying prior art product. Further,…
On September 8, 2021, the Federal Circuit, (“CAFC”), found that the Patent Trial and Appeal Board’s (“PTAB”) decision to institute inter partes review (“IPR”) of four MaxPower patents, despite an agreement to arbitrate disputes regarding those patents, was unappealable. The CAFC also denied granting a writ of mandamus to…
Artificial Intelligence (“AI”) has come a long way in recent years and has allowed people to automate many tasks, but one task AI cannot do is be a named inventor on a patent, at least not yet. Stephen Thaler tried to file a patent application naming his AI machine…
The Court of Appeals for the Federal Circuit (the “CAFC”) recently held, again, that the Patent Trial and Appeal Board (“PTAB”) erred in finding U.S. Design Patent Nos. D612,646 and D621,645, directed to gravity feed soup can dispensers, not obvious. The decision underscores that design patents are subject to…