Damages experts in patent cases have a tough task. They must construct a hypothetical negotiation between the parties that would have taken place just before the alleged infringement started. And the goal of this hypothetical negotiation is to determine a reasonable royalty upon which both parties would have agreed. Over the years, the Federal Circuit
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Warner Chappell Music, Inc. v. Nealy: Supreme Court Allows Retrospective Copyright Damages Beyond 3 Years Based on Discovery Rule
Ruling in favor of a Miami music producer, Sherman Nealy, over a song by rapper Flo Rida, the Supreme Court held on May 9 that there is no time limit for recovering monetary damages in copyright cases that are otherwise timely filed; therefore, a copyright owner possessing a timely claim for infringement is entitled to past…
<i>IOENGINE v. Ingenico</i>: Are Electronic Communications Fair Game for the Printed Matter Doctrine?
In IOENGINE, LLC v. Ingenico Inc.,2021-1227 (Fed. Cir. May 3, 2024), the Federal Circuit reversed a Patent Trial and Appeal Board (PTAB) determination that certain claim features did not carry patentable weight under the printed matter doctrine. This decision is notable, as it concerns the application of the printed matter doctrine to a digital communication.…
The End of the Fight Against <i>Fintiv</i>
Inter partes reviews (IPRs) and post-grant reviews (PGRs) are proceedings in front of the Patent Trial and Appeal Board (PTAB) that allow a petitioner to challenge a patent’s validity and a patent owner to defend that patent’s validity after the patent has been issued. IPRs and PGRs were created by the Leahy-Smith America Invents Act…
USPTO Requests Public Comments on Patentability in View of AI Advancements
The USPTO published a request for comments (RFC) on April 30th, focusing on how advancements in artificial intelligence (AI) may impact the USPTO’s assessment of patentability governing (i) what may qualify as prior art and (ii) determining the level of skill of a person having ordinary skill in the art (PHOSITA).[1] Accordingly, the USPTO…
<i>In re Post Foods, LLC</i>: TTAB Denies Color Mark for Post’s Fruity Pebbles
The Trademark Trial and Appeal Board’s (Board) precedential decision to uphold a refusal to register a proposed color mark in In re Post Foods, LLC[1] highlights the strategic and technical aspects involved in registering a color trademark as applied to a product.
Color marks are considered inherently nondistinctive for the purpose of eligibility for…
Federal Circuit Addresses Personal Jurisdiction and Amazon’s Patent Dispute Procedure: What to Know Going Forward
On May 2, the United States Court of Appeals for the Federal Circuit (CAFC) issued a precedential opinion in SnapRays, d/b/a SnapPower v. Lighting Defense Group, discussing personal jurisdiction and – for the first time – Amazon’s “low-cost procedure … ‘[t]o efficiently resolve claims that third-party product listings infringe utility patents,’” called Amazon Patent Evaluation…
World IP Day – Celebrating Innovation and Creativity to Build Our Common Future
IP is again being celebrated this year on April 26, with the World Intellectual Property Organization paying homage to the intersection of IP and the Sustainable Development Goals (SDGs) and “[b]uilding our common future with innovation and creativity.”[1] As a brief history lesson, in 2015, all United Nations Member States adopted the 2030 Agenda…
The End of Judge-Shopping in Patent Cases
A major change to the patent landscape is coming. On March 12, 2024, the Judicial Conference of the United States announced that it will change how cases are assigned to judges, which will limit the ability of litigants to choose which judge is assigned to their case. Specifically, patent infringement cases will now be randomly…
USPTO Delivers Inventorship Guidance on AI-Assisted Inventions
Further to President Biden’s 2023 executive order (EO) on the safe, secure and trustworthy development and use of artificial intelligence (AI) last year (see https://www.bakerlaw.com/insights/white-house-instructs-uspto-to-provide-guidance-on-ai/), the U.S. Patent and Trademark Office (USPTO) released its much anticipated Inventorship Guidance on AI-Assisted Inventions (“Guidance”).[1] The Guidance is retroactive, meaning it applies to all patent applications…