Knobbe/Martens: Intellectual Property Law

Legal Alert

Legal Alert
Issue Preclusion at the ITC: New Developments for Trademark-Based Claims Published
Tuesday, August 20, 2019
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Investigations at the International Trade Commission (“ITC”) often involve intellectual property disputes that may also be the subject of parallel litigation in district court.  This parallel litigation is often stayed pending completion of the ITC investigation. 

Legal Alert
Common Forum Selection Clause in License Agreement Prevents Patent Validity Challenge at PTAB Published
Monday, April 22, 2019
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On April 18, 2019, the Federal Circuit issued a non-precedential opinion that is making stakeholders in the patent licensing community sit up and take note.  The case was Dodocase VR, Inc. v. MerchSource, LLC, holding that a boilerplate forum selection clause in a licensing agreement can prevent a validity challenge at the U.S. Patent and Trademark Office Patent Trial and Appeal Board (PTAB), even though the clause makes no mention of PTAB proceedings.

 

Legal Alert
The Supreme Court limits the scope of "full costs” in the Copyright Act fee-shifting provision Published
Monday, March 11, 2019
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The U.S. Supreme Court on Monday, March 4, 2019, held in a 9-0 decision that the term “full costs” in § 505 of the Copyright Act is limited by the general “costs” statute (28 U.S.C. §§ 1821 and 1920). For example, § 505 does not allow courts to shift expenses such as expert witness fees, e-discovery fees, or jury consulting fees. The case, Rimini Street, Inc. v. Oracle USA, Inc, now returns to the U.S. Court of Appeals for the Ninth Circuit for further proceedings. 

Legal Alert
The Supreme Court holds that a copyright claimant may not sue for infringement until the Copyright Office has granted or refused registration of the work at issue Published
Wednesday, March 6, 2019
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On Monday, March 4, 2019, the U.S. Supreme Court held in a unanimous decision that, under § 411(a) of the Copyright Act, a claimant may not bring suit for copyright infringement until the Copyright Office has either granted or refused the copyright claimant’s application for registration. Fourth Estate Public Benefit Corp. v. Wall-Street.com, LLC. The Court’s decision affirmed the dismissal of a copyright suit on the grounds that the plaintiff did not comply with § 411(a) prior to filing the suit.

 

Legal Alert
The Supreme Court Holds that Non-Public Sales May Trigger the On Sale Bar Under the America Invents Act Published
Tuesday, January 22, 2019
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On Tuesday, January 22, 2019, the U.S. Supreme Court held in a unanimous decision that, even where the details of the invention are kept confidential, a commercial sale may place the invention “on sale” under the Leahy-Smith America Invents Act (“AIA”).  Helsinn Healthcare S.A. v. Teva Pharmaceuticals USA, Inc.

Legal Alert
Clarity and Progress at the USPTO: The USPTO Publishes Revised Guidance on Patent Eligible Subject Matter Published
Monday, January 7, 2019
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On Monday, January 7, 2019, a revised guidance for subject matter eligibility (USPTO Section 101 Revised Guidance) will take effect at the USPTO. With the newly revised guidance, the USPTO aims to clarify and standardize the patent eligibility analysis under the Alice/Mayo framework. 

Legal Alert
Supreme Court Allows for Patent Damages Incurred Outside the United States Published
Tuesday, June 26, 2018
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The Supreme Court issued an important pro-patent-owner decision affecting multinational corporations.  In WesternGeco LLC v. ION Geophysical Corp., in a 7-2 decision, the Supreme Court held that a patentee may recover foreign lost profits from an infringer who violates 35 U.S.C. § 271(f)(2) by exporting from the United States a component especially adapted for use in a patented invention.  

Legal Alert
Supreme Court Issues Two Important Decisions Affecting Inter Partes Review Patent Challenges Published
Wednesday, April 25, 2018
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The Supreme Court has issued two important decisions affecting Inter Partes Review (“IPR”) and other post-grant patent challenges conducted by the Patent Trial and Appeal Board (“PTAB”).

Legal Alert
Three Statistics Every ANDA Filer Needs To Know About Orange Book Patent Trials At the USPTO Published
Tuesday, March 27, 2018
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On March 13, 2018 the United States Patent and Trademark Office (USPTO) released the results of its study on inter partes review (IPR) and post-grant review (PGR) proceedings involving Orange Book patents.

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