SCOTUS IP
In this Supreme Court opinion, Justice Gorsuch, who delivered the opinion for the Court, opined that if an inter partes review proceeds to a final decision, the PTAB must issue a final written decision with respect to every claim challenged by the petitioner.
What is SAS Institute Inc. v. Iancu, 584 U.S. ___ (2018)?
When a group borrows the opening musical tag and words (but not the melody) from the first line of another song, but the rest of the lyrics and music were original.
What is Fair Use?
Campbell v. Acuff-Rose Music, 510 U.S. 569 (1994).
In this case, the Supreme Court replaced the established precedent of granting a permanent injunction when a patentee proved infringement of a valid patent with a four-part test similar to the requirement for an injunction in other areas of the law.
What is EBay Inc. v. MercExchange, L.L.C., 547 U.S. 388 (2006)?
The one year IPR rule (35 USC §315(b)) applies to the petitioner and these two others.
Who are the privy of the petitioner and the real party in interest?
Within 24 months of the Initial Scheduling Conference.
When will the court schedule a patent infringement trial?
L.R., D. Mass. 16.6(c)(1).
A description of an event made while the speaker observed that event or immediately thereafter.
What is a present-sense impression?
In this case, the Supreme Court held that the IPR process, which Congress enacted and authorizes the United States Patent and Trademark Office to reconsider or cancel an issued patent claim, is constitutional and does not violate either Article III of the Constitution or the Seventh Amendment.
What is Oil States Energy Services, LLC v. Greene's Energy Group, LLC, 584 U.S. ___ (2018)?
When a company makes a single volume encyclopedia containing all the characters, unique terms, and pivotal scenes from a book series by verbatim use of text from the original book series.
What is Not Fair Use?
Warner Bros. Entertainment, Inc. v. RDR Books, 575 F. Supp. 2d 513 (S.D.N.Y. 2008). (Pertaining to the Harry Potter series.)
In this case, the Supreme Court reversed a decision in which the Fed. Cir. en banc had reversed a Fed.Cir. panel. SCOTUS held that induced infringement cannot occur without direct infringement and said, "The Federal Circuit’s analysis fundamentally misunderstands what it means to infringe a method patent."
What is Limelight Networks, Inc. v. Akamai Techs., Inc., 572 U.S. 915 (2014)?
In this Federal Circuit decision, the court held that tribal sovereign immunity cannot be asserted in an IPR.
What is Saint Regis Mohawk Tribe v. Mylan Pharmaceuticals Inc., No. 18-1638?
The later of 15 months after the initial Scheduling Conference or 60 days after the Markman ruling.
When is the close of fact discovery?
L.R., D. Mass. 16.6(c)(4).
A statement by a dying person about the cause or circumstances of what the declarant believed to be impending death.
What is a dying declaration?
In Impression Products, Inc. v. Lexmark International, Inc. (2017), the Supreme Court held that this doctrine “reflects the principle that, when an item passes into commerce, it should not be shaded by a legal cloud on title as it moves through the marketplace.”
What is patent exhaustion?
When a biographer paraphrases large portions of unpublished letters written by a famous author. The letters are the backbone of the biography but can also be read at a university library.
What is Not Fair Use?
Salinger v. Random House, 811 F.2d 90 (2nd Cir. 1987).
In this Supreme Court decision, the court reversed the Federal Circuit and held that naturally occurring segments of DNA which have been isolated from the rest of the genome are not patent eligible subject matter under 35 U.S.C. § 101; however, synthetically created DNA (known as cDNA) is not a product of nature and is patent eligible.
What is Association for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576 (2013)?
As of January 16, 2018, this is the total in fees a Petitioner must pay the Patent Office when filing a petition for inter partes review challenging up to 15 claims.
What is $30,500?
[Petitioner pays a $15,500 IPR request fee (up to 20 claims) and a $15,000 post-institution (up to 15 claims).]
A different claim construction, late discovery of material prior art, or late discovery of nonpublic information about the alleged infringement are examples of this.
What is good cause to amend or supplement preliminary patent disclosures?
L.R., D. Mass. 16.6(d)(5).
A record of a regularly conducted non-law-enforcement activity might fall within this hearsay exception.
What is a business record exception?
These two Supreme Court decisions were decided on the same day and changed the legal standard and standard of review for exceptional case determinations under 35 U.S.C., Section 285.
What are Octane Fitness, LLC v. ICON Health & Fitness, Inc., 572 U.S. 545 (2014) and Highmark Inc. v. Allcare Health Mgmt. Sys., Inc., 572 U.S. 559 (2014)?
When reproducing concert posters within a book by reducing the posters to thumbnail size in the context of a timeline to commemorate events in the band’s history.
What is Fair Use?
Bill Graham Archives v. Dorling Kindersley Ltd., 488 F.3d 605 (2nd Cir. 2006).
In this case, the Supreme Court decided 7 to 1 that the equitable defense of laches cannot be invoked against claims for infringement occurring during the statutory period.
What is SCA Hygiene Products Aktiebolag v. First Quality Baby Products, LLC, 580 U.S. ___ (2017)?
File these within 10 business days of institution, or forever hold your peace about them.
What are objections to evidence presented before IPR institution?
37 CFR § 42.64(b)(1)
This won't invalidate a patent, but might immolate a patent practitioner.
What is knowingly failing to disclose the Best Mode?
A statement relating to a startling event made while the speaker was under the stress of excitement caused by that event is called this.
What is an excited utterance?
In this case, the Supreme Court ruled that secret sales do qualify as prior art under the AIA.
What is Helsinn Healthcare S.A. v. Teva Pharmaceuticals USA Inc., No. 17-1229 (2019)?
When making a book of trivia questions about a television series, including questions based upon events and characters from nearly all of the then-existing episodes and using actual dialogue from the show.
What is Not Fair Use?
Castle Rock Entertainment, Inc. v. Carol Publ. Group, 150 F.3d 132 (2nd Cir. 1998).
[“The book draws from 84 of the 86 Seinfeld episodes that had been broadcast as of the time The SAT was published.”]
The legal standard for exceptional case determinations in this Federal Circuit decision was expressly rejected by the United States Supreme Court in Octane Fitness, LLC v. ICON Health & Fitness, Inc. (2014).
What is Brooks Furniture Mfg., Inc. v. Dutailier Int'l, Inc., 393 F.3d 1378 (Fed. Cir. 2005)?
In August 2018, this replaced a patent owner's observations on cross-examination testimony as patent owner’s opportunity to respond to new evidence in a petitioner’s reply.
What is a sur-reply?
August 2018 Trial Practice Guide Update
Effective December 7, 2017, the USPTO amended the privilege rule to include these.
What are communications between a client and a patent agent or foreign jurisdiction patent practitioner?
A statement illustrating the declarant’s mental state or being offered to show the effect of the statement on the declarant might be admissible under this hearsay exception.
What is the state of mind hearsay exception?