2018
Patents

Oil States Energy Services, LLC v. Greene’s Energy Group, LLC

An inter partes review (IPR) procedure by the U.S. Patent and Trademark Office (PTO) does not violate Article III or the Seventh Amendment of the Constitution.  This decision re-affirmed the PTO’s authority to conduct IPR procedures.

See amicus brief

2017
Copyright

Star Athletica, LLC v. Varsity Brands, Inc.

The Court created a two-part test for determining the copyright eligibility of “a feature incorporated into the design of a useful article.

Test:  the feature is copyright eligible “if the feature (1) can be perceived as a two- or three-dimensional work of art separate from the useful article and (2) would qualify as a protectable pictorial, graphic, or sculptural work—either on its own or fixed in some other tangible medium of expression—if it were imagined separately from the useful article into which it is incorporated.”

2017 Patents

SCA Hygience Products Aktiebolag v. First Quality Baby Products, LLC

Laches cannot be used as a defense against damages within six years of the filing of a patent infringement complaint (35 U.S.C. §286).

2017
Patents

Life Technologies Corp. ET AL. v. Promega Corp.

The “substantial portion” language of §271(f)(1) of the Patent Act of 1952 refers to a quantitative measurement, not a qualitative measurement.  Therefore, a single component of a multi-component invention does not constitute a “substantial portion” of the patented invention under §271(f)(1), and therefore supplying a single component of a patented multi-component invention does not infringe on the patent.

Impression Products, Inc. v. Lexmark International, Inc.

When a patentee sells his/her patented product, he/she cannot subsequently enforce the patent on that sold product regardless of any restrictions that the patentee attempts to impose on a subsequent user/purchaser.  The patent is said to be exhausted for that sold product, and the purchaser may use or sell that product without fear of infringing on the previous patent of the sold product.

TC Heartland v. Kraft Foods

For domestic corporations, civil actions for patent infringement requires the case to be brought in the state of incorporation of the defendant corporation under 28 U.S.C. § 1400(b).

See amicus brief

SAS Institute v. Lee

Once an IPR is initiated, the PTAB must rule on all challenged claims.

Matal, Interim Director, United States Patent and Trademark Office v. Tam

The federal law 15 U.S.C. §1052(a), which prohibits the registration of trademarks that use disparaging language, is a violation of the Free Speech Clause of the First Amendment.

Cuozzo Speed Technologies, LLC v. Lee

The broadest reasonable construction standard is a valid standard in an IPR proceeding and, pursuant to 35 U.S.C. §314(d), the determination by the Director [of the Patent Office] whether to institute an IPR is final and non-appealable.

See amicus brief

Samsung Electronics Co., LTD. ET AL. v. Apple Inc.

Damages in a design infringement suit may be based on an individual component of the design invention as opposed to the entire design invention.

Alice Corporation PTY. LTD.  v. CLS Bank International ET AL.

An intermediated settlement implemented by a practitioner on a generic computer, is not patent eligible under 35 USC §101 because it is an abstract idea.  The mere act of using a generic computer to implement the intermediated settlement does not transform the abstract idea into a patent eligible invention.An intermediated settlement implemented by a practitioner on a generic computer, is not patent eligible under 35 USC §101 because it is an abstract idea.  The mere act of using a generic computer to implement the intermediated settlement does not transform the abstract idea into a patent eligible invention.

AMP v. Myriad

The Supreme Court unanimously held that human genes cannot be patented, even when isolated from the body, a ruling expected to quickly expand access to genetic testing while potentially allowing inventors to retain rights to artificially created DNA. Read the decision.

AUTM's Position — AUTM agrees with both parties and the Court that diagnostic tests should be available for the benefit of the public. It supports the encouragement of rapid medical innovation, applied and practical biotechnology, university basic genetic research, collaboration among universities and the medical community and translation of genetic discoveries into tangible medical tests. AUTM believes in the importance of intellectual property protection and remaining competitive with other countries in developing lifesaving technologies. Read more.

• The AMP v. USPTO Remand:  Déjà Vu as Federal Circuit Majority Reaffirms that Myriad’s Isolated DNA Sequences Are Patent-Eligible,  Read the full analysis by Eric W. Guttag, Eric W. Guttag IP Law Office.
• Supreme Court Says Human Genes Aren't Patentable by Jess Bravin and Brent Kendall of the Wall Street Journal, 13 June 2013. Read more.
• A U.S. federal appeals court has once again affirmed the right of Myriad Genetics Inc to patent two genes linked to breast and ovarian cancer, Reuters, Aug. 16. Read more. 

See amicus brief

Mayo v. Prometheus

The Supreme Court’s March 20, 2012 decision in Mayo v. Prometheus, 566 U.S. (2012), invalidates patent claims when they invoke a law of nature but do not “confine their reach to particular applications of those laws."

See amicus brief

Microsoft v. i4i

Under the Patent Act of 1952, a patent is presumed valid. If someone challenges the validity, they must show that it is invalid; the person or company that has the patent does not have to show that it is valid.  The U.S. Supreme Court held that invalidity defense be proved by clear and convincing evidence.

See amicus brief

Stanford v. Roche

The Court held that title in a patented invention vests first in the inventor, even if the inventor is a researcher at a federally funded lab subject to the Bayh-Dole Act. Inventors originally own inventions they make, and contractual obligations to assign those rights to third parties are secondary.

See amicus brief