On February 9, 2018, the Court of Appeals for the Federal Circuit handed down Polaris Indus., Inc. v. Arctic Cat, Inc.,[1] where a Fed Circuit panel criticized the invalidation of all 38 claims of Polaris’ patent as obvious under 35 U.S.C. §103 over different combinations of prior art based on the PTAB’s messy §103 analysis. …
No Tribal Sovereign Immunity in IPR
On February 23, 2018, the Patent Trial and Appeal Board of the U.S. Patent and Trademark Office issued a decision denying the St. Regis Mohawk Tribe’s various motions to terminate several inter partes review proceedings based on the theory of tribal sovereign immunity. The consolidated case was Mylan Pharmaceuticals Inc., et al. v. Saint Regis …
Embedded Tweet Can Be Copyright Infringement, According to NY Court
On February 15, 2018, a federal judge sitting in the Southern District of New York issued an opinion that could have profound ramifications for the average Internet user. In the case, Goldman v. Breitbart News Network LLC,[1] Judge Katherine Forrest ruled that the linking party responsible for a tweet with an embedded photo had committed …
Fed Circuit Watch: Fed Circuit Lacks Jurisdiction to Review Antitrust Claim
On February 9, 2018, the Court of Appeals for the Federal Circuit issued a short order refusing jurisdiction over a Walker Process antitrust claim, and transferred the case, Xitronix Corp. v. KLA-Tencor Corp., to the Court of Appeals for the Fifth Circuit. As a preliminary note, a Walker Process claim is a federal claim under …
Fed Circuit Watch: Another §101 Decision, Different Rationale, May Signal Future Changes to Patent-Eligibility Analysis
As of February 14, 2018, at last count, there have been six substantive opinions rendered by the Court of Appeals for the Federal Circuit relating to 35 U.S.C. §101, creating an unusually large body of §101 jurisprudence within only six weeks of the calendar year. Two of these opinions, Move, Inc. v. RE/MAX Int’l, Inc., …
Fed Circuit Watch: Distribution Agreement Is Offer for Sale for On-Sale Bar Analysis
On February 6, 2018, an interesting ruling was handed down by the Court of Appeals for the Federal Circuit. In The Medicines Co. v. Hospira, Inc.,[1] the Fed Circuit held that a distribution agreement could constitute an on-sale bar for purposes of §102 invalidation. This appeal is a further remand of an earlier en …
IP Practicum: Failure to Check Box on USPTO Form Can Affect Patent Term
On February 6, 2018, the Court of Appeals for the Federal Circuit ruled in Actelion Pharm., Ltd. v. Matal.[1] This case deals with the sometimes mundane aspects of filling out the proper forms required for filing with the USPTO, and failure to do so can have major impacts downstream during and post-prosecution. The facts of …
Fed Circuit Watch: Pre-Institution Disclaimer Creates Estoppel for Patent Owner
On January 24, 2018, the Court of Appeals for the Federal Circuit ruled on Arthrex, Inc. v. Smith & Nephew, Inc.,[1] holding that the patent owner’s pre-IPR-institution statutory disclaimer resulting in an adverse judgment has the effect of estoppel against the patent owner. The facts are as follows. Smith & Nephew filed an IPR against …
New Deposit Requirement Rule for Copyright Registrations
On January 17, 2018, the United States Copyright Office issued a final rule simplifying the deposit requirements for certain literary works and musical compositions. Specifically, during copyright registration, an applicant had to submit two copies of the best edition of the printed format of the creative work, one to satisfy the registration requirement and the …
Fed Circuit Watch: Improved Smartphone Display Interface Found Patent-Eligible
On January 25, 2018, the Court of Appeals for the Federal Circuit ruled claims directed to improved display interface for cell phones was patent-eligible under 35 U.S.C. §101 in Core Wireless Licensing S.a.r.l. v. LG Electronics, Inc.[1] This case represents the second precedential one of the year where claims have been found patent-eligible by a …