Patent Apportionment: Anything You Say in a License Agreement May Be Used Against You in a Court of Law
Connor Roddy
Key Takeaway: 
The case law surrounding patent apportionment has evolved significantly, with the Federal Circuit increasingly scrutinizing patent litigants’ reliance on “comparable licenses” as a means for calculating a reasonable royalty. With EcoFactor, Inc. v. Google LLC pending before the Federal Circuit, the court's full stance on this issue remains to be seen.
Read the full article on our website.

When Can District Courts Cancel Trademark Applications?
Matt Williams, Christopher Palermo
Key Takeaway: 
While district courts have clear statutory authority to cancel registered trademarks, courts are divided on whether they may cancel unregistered trademark applications.  One year ago, the Ninth Circuit upheld a decision canceling four trademark applications, further complicating an existing circuit split concerning the authority of district courts over pending trademark applications.
Read the full article on our website.

The Impact of Prosecution Length on Infringement Outcomes in Patent Litigation
Matthew Avery, Arya Moshiri
This article continues our analysis of over 89,000 patents to determine how the number of office actions to allowance during prosecution impacts litigation outcomes. Last month we discussed how prosecution length impacts invalidity rates during litigation. Now we discuss how it impacts findings of infringement. 
Almost every practitioner would hypothesize that a patent with a longer prosecution history will be less likely to be found infringing. Presumably, the longer a patent was in prosecution, the more likely the applicant will have narrowed the claims to avoid the art found by the examiner. Thus, more office actions should lead to narrower allowed claim scope, lessening the chance of the claims successfully reading on a potential infringer’s product or process. The analysis of litigation outcomes over a twenty-year period confirms this popular assumption – the more office actions a patent application receives before allowance, the less likely the issued patent will be found infringing during litigation. However, this trend varies based on examiner toughness. Surprisingly, there is almost no correlation between the likelihood of infringement and the number of office actions for patents examined by the toughest examiners. These results are discussed in detail here.
*This article is excerpted from the authors’ recent article in volume 38, issue 1 of the Harvard Journal of Law & Technology titled “The Myth of 'Bad' Patents: Impact of Prosecution Length on Patent Litigation Outcomes.”

AWS Servers Alone Won’t Establish Patent Venue in Virginia, Court Rules
Eileen Hyde, Lauren Dreyer, Cailyn Reilly Knapp, Jamie Lynn, Tommy Martin
Key Takeaway: 
Northern Virginia is home to datacenters that power roughly 70% of global internet traffic, including Amazon Web Services (AWS), which supports around 1.45 million businesses. However, a recent ruling offers crucial clarity for companies relying on AWS: simply using AWS servers in the region does not automatically establish venue for patent infringement cases in the Eastern District of Virginia.
Read the full article on our website.

Tech M&A in the Digital Age: Navigating Regulatory and Strategic Challenges
Khoa D. Do, Jonathan Gordon, Henry S. Klimowicz
In our digital economy—where technological innovation and global interconnectedness drive business value—tech transactions are becoming increasingly challenging. To help dynamic enterprises capture the immense growth opportunities in the technology sector, lawyers must navigate a complex landscape shaped by evolving regulatory regimes and cross-border challenges, as well as shifting standards in data privacy, cybersecurity, and intellectual property valuation frameworks. Whether advising a startup or a multinational tech titan, integrating regulatory foresight with a robust transactional strategy is essential.
Read more here.
*This article was previously published in the New York Law Journal on March 7, 2025.

Liability for Patent Infringement: System vs. Method Claims
Rob Maier, Matthew Thompson
The recent Federal Circuit decision in CloudofChange, LLC, v. NCR Corp. shed light on the differences between the element-based analysis for assessing vicarious liability for patent infringement in the case of method claims on one hand, and the whole-system based analysis for system claims on the other. Plaintiff CloudofChange asserted a direct infringement theory against defendant NCR, based only on use of a claimed system, and a theory of vicarious liability based on that same alleged direct infringement.
For a complete copy of this article, click here.
*This article was previously published in the New York Law Journal on March 19, 2025.

This Month: Our Take on AI
Joseph Cahill
Virginia Takes Lead in State AI Regulation: Virginia has become the first state in 2025 to pass comprehensive AI legislation with the "High-Risk Artificial Intelligence Developer and Deployer Act" (HB 2094). The bill establishes regulatory frameworks for AI systems making consequential decisions across critical sectors including education, employment, financial services, healthcare, and legal services. If signed by Governor Youngkin before March 24, the law would take effect July 1, 2026. The legislation requires developers to disclose risks, limitations, and intended purposes of high-risk AI systems, alongside performance evaluation summaries and measures to mitigate algorithmic discrimination. Deployers must exercise a "reasonable duty of care" and implement risk management policies, with violations potentially carrying civil penalties between $1,000 and $10,000. Compliance with established standards like NIST's AI risk management frameworks or ISO/IEC 42001 would satisfy the bill's requirements. This development can be explored in further detail here: "Virginia Legislature Passes First AI Bill of 2025--Now Awaits Governor's Approval."

AI Funding Trends in Biotechnology: Recent developments show significant venture capital investment flowing into AI applications for biotechnology. Leading TechBio VCs are increasingly funding of AI-related projects with promising potential to impact both healthcare outcomes and financial returns, particularly in drug discovery and cancer research. This trend highlights the growing intersection of technological innovation and healthcare advancements and may serve to create novel IP concerns moving forward. Partner Ali Dhanani explores this development further in "TechBio VCs Surge in Funding."

AI Counsel Code Podcast
In the latest episode, "Understanding AI Legal Structures within a Tech Giant," Partner Mark Speegle hosts a discussion with Jesse Adland, Director in the Law Department at AMD. They explore AI legal challenges, the role of AMD's AI group, industry trends, and the dynamic nature of AI's legal landscape. Listen to the full episode here.

March 2025 Intellectual Property Report Recap
In case you missed it, here is a link to our March 2025 Intellectual Property Report that looked at:

• The Impact of Prosecution Length on Invalidity Outcomes in Patent Litigation
• The Federal Circuit Tackles the Role of Expert Opinions in Patent Damages in EcoFactor Inc. v. Google, LLC
• Maximizing Patent Term in the United States: Patent Term Adjustment, Patent Term Extension, and the Evolving law of Obviousness-Type Double Patenting
• This Month: Our Take on AI

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