Before the United States Supreme Court (Opinion by Justice Kagan) on Writ of Certiorari to the United States Court of Appeals for the Federal Circuit.
Summary: The Lanham Act’s prohibition on registering immoral or scandalous trademarks violates the First Amendment because it discriminates on the basis of viewpoint.
GAME AND TECHNOLOGY CO., LTD. v. ACTIVISION BLIZZARD INC.
Before Prost, Lourie, and Wallach. Appeal from the Patent Trial and Appeal Board (PTAB).
Summary: A single prior art reference can render a patent obvious if it would have been obvious to modify that reference to arrive at the claimed invention.
The Federal Circuit’s 2018 decision in Berkheimer v. HP Inc. was likely the most consequential development in patent eligibility since the Supreme Court introduced its two-part eligibility framework in Alice Corp. v. CLS Bank and Mayo Collaborative Services v. Prometheus Laboratories. Alice and Mayo had a dramatic impact on patent law, paving the way for lower courts to invalidate thousands of claims from hundreds of patents for failure to claim patent-eligible subject matter under 35 U.S.C. § 101. Berkheimer tempers Alice and Mayo by imposing procedural requirements that may insulate patent claims from § 101 challenges.
A new bill introduced in Congress last week may limit the ability of branded pharmaceutical companies to extend the period of exclusivity products beyond the term of a single patent.
The bill, titled “Terminating the Extension of Rights Misappropriated Act of 2019” or “TERM Act of 2019,” places greater scrutiny on the practice of obtaining multiple patents with overlapping terms to cover a single drug product or biological product.
FORUM US, INC. v. FLOW VALVE, LLC
Before Reyna, Schall and Hughes. Appeal from the U.S. District Court for the Western District of Oklahoma.
Summary: The original patent on which a broadening reissue patent is based must clearly and unequivocally disclose the invention claimed in the reissue patent.
Before Dyk, Clevenger, and O’Malley. Appeal from the International Trade Commission.
Summary: Past investments can satisfy the ITC’s domestic industry requirement if (1) the investments pertain to products covered by an asserted patent and (2) the complainant continues to make other investments relating to such products at the time the complaint is filed.
REGENTS OF THE UNIV. OF MINN. v. LSI CORPORATION
Before Dyk, Wallach, and Hughes. Appeal from the Patent Trial and Appeal Board.
Summary: State sovereign immunity does not apply to IPR proceedings asserted against patents owned by or assigned to states, regardless of whether the state has asserted the patent claims in a district court litigation.
POWER INTEGRATIONS, INC v. SEMICONDUCTOR COMPONENTS
Before Prost, Reyna, and Stoll. Appeal from the Patent Trial and Appeal Board.
Summary: An IPR is time-barred under 35 U.S.C. § 315(b) if, at the time of institution, the petitioner is in privity with a party who was served with a complaint for patent infringement over a year before the petition was filed.
SAMSUNG ELECTRONICS CO., LTD. v. ELM 3DS INNOVATIONS, LLC
Before Moore, Reyna, and Chen. Appeal from the Patent Trial and Appeal Board.
Summary: If the technology is complex, a party may be required to provide more evidence of a reasonable expectation of success for obviousness.
A federal court in Wisconsin recently awarded Ultratec, Inc. and Captel, Inc. more than $5.4 million in damages, based on a patent infringement claim brought against Sorenson Communications and CaptionCalls.
