United States

Case summaries and articles about intellectual property that are relevant to the United States of America.

November 16, 2023
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Will the Third Time Be the Charm in This Design Patent Saga?

Fed. Cir. No. 2021-2299, 2021-2338: This is the second time the Court of Appeals for the Federal Circuit has reversed a finding of infringement and sent the design patent back to lower courts.
October 17, 2023
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To Claim (Broadly), or Not to Claim? The Double-Edged Sword of Patents

Fed. Cir. 2022-1387, 2022-1492: In a recent decision, the Court of Appeals for the Federal Circuit cautioned patent holders against broadening amendments.
August 30, 2023
Photograph of a doctor holding a syringe full of an injectable filler

US Court Rules That Free Samples Don’t Count Towards Commercial Success

Fed. Cir. 2021-2063, 2021-2065: Sales of a product can be used to prove the inventiveness of a patent, but a US court warns that free samples are not relevant to patentability.
May 11, 2023
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Federal Circuit Re-Opens Challenge to the Fintiv Rule

Since 2020, the USPTO has been denying requests for post-grant validity challenges based on the controversial Fintiv rule.
January 20, 2023
Photograph of assorted blister packs containing pharmaceuticals in pill form.

Past Conduct Deemed Relevant to Infringement in ANDA Proceedings

CAFC No. 22-1595: In this precedential decision on induced infringement, the Federal Circuit clarified that “past conduct is relevant to what will happen in the future”.
January 5, 2023
In a hospital room, a woman in a white lab looks at a computer monitor.

USPTO to Launch Cancer Moonshot Expedited Examination Pilot Program

Starting on February 1st, the US Patent and Trademark Office (USPTO) will offer accelerated examination for patent applications aimed at preventing cancer and cancer mortality.
December 22, 2022
circuit board

Federal Circuit Applies Collateral Estoppel in IPR Proceedings

The Court of Appeals for the Federal Circuit found that dependent claims invalidated by collateral estoppel also invalidated the parental independent claim.
May 12, 2022
Engineer at an oil refinery inspects centrifuge equipment.

Federal Circuit Narrows Application of the Experimental Use Exception

Under the “on-sale bar”, privately offering to sell an invention before filing a patent application can void the patent rights in all but a few permissible scenarios.
November 2, 2021
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Apple and Visa Persuade Federal Circuit to Invalidate Patents for Secure-Payment

Fed. Cir. No. 2020-2044: The Federal Circuit found that the patents were directed to an abstract idea, with no additional elements to transform them into patentable subject-matter.
October 5, 2021
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United States Court of Appeals Clarifies “Actual Notice” Under § 287

Fed. Cir. No. 19-2286: The actual notice requirement of § 287 is only satisfied when the recipient is informed of the identity of the patent and the allegedly infringing activity.
July 7, 2021

CAFC Invalidates a Camera Patent, Blurring Lines in the Patent Eligibility Inquiry

Fed. Cir. No. 2020-1760: The CAFC sided with Apple and Samsung, finding a patent for an “improved” digital camera to be an abstract idea and not patent-eligible subject matter.
April 22, 2021
Image of the Android logo beside a smartphone against a black background.

US Supreme Court Sides With Google to End Oracle’s Monopoly Over Java

No. 18-956: In ruling that Google's copying of Java code amounted to fair use, the court adapted traditional copyright laws to software, which is primarily functional in nature.
April 20, 2021
Canadian flag waving in front of the Parliament buildings in Ottawa.

Canadian Innovation Deserves Robust Roster of Canadian Patent Agents Registered Before the USPTO

This paper uses publicly available filing statistics and a professional survey in an attempt to gather empirical data on the work done by Canadian Patent Agents in the Canadian Intellectual Property Office (“CIPO”) versus the United States Patent and Trademark Office (“USPTO”).
March 3, 2021
Model of a human brain photographed in an anatomy lab.

A Closer Look: CAFC Finds Immersion Photography Claims Are Obvious

Fed Cir, 2019-1927: The CAFC overturned a finding of non-obviousness by the US Patent Trial and Appeal Board on a patent owned by Melanoscan, LLC.
December 2, 2020
Close-up photograph of a fountain pen writing words in ink on paper.

Written Description Particularly Important if Amending Claims in Response to Competitor

Fed. Cir. 2018-1779: A patent for testing fetal DNA was found to be unpatentable because the claims were not fully supported by the written description.
September 10, 2020
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Identical Preambles: Limiting in One Patent, Not Another

Fed. Cir. 2019-1622: The CAFC found the same preamble created different limitations for different patents, limiting one patent but not the other.
August 10, 2020
Macro photograph of a computer keyboard with black keys.

Infringer Uses Marking Requirement to Escape Pre-Suit Damages

Fed. Cir. 2019-2041 - The CAFC held that Packet Intelligence was precluded from claiming $3.5M in pre-suit damages because the marking requirement was not met.
July 7, 2020
Basketball player holding an orange basketball with a Nike swoosh logo in one hand

Hands Off! Nike Wins Battle Over Claw Logo Against Kawhi Leonard

An Oregon court ruled that Nike owns the Claw logo that includes a sketch of Leonard's hands that famously earned him the nickname “The Claw.”
April 16, 2020
Photograph of white pharmaceutical pills on a blue background.

Prima Facie Obviousness Established From Similar Compounds, Overlapping pH

Fed. Cir. 2018-2097 — The CAFC ruled that Valeant's patent for Relistor(R) is prima facie obvious based on similar compounds with overlapping pH ranges.
January 17, 2020
Photo of two jars of weed for sale in a cannabis store.

Beat the Weeds: File Your Cannabis Trademarks in Canada

Because of the status of cannabis and trademark laws in the US, brand owners are looking to Canada to register their cannabis trademarks.