Thought Leadership

Intellectual Property Report: November 2018

Client Updates

Counsel Liability for Excessive Costs in Patent Litigation Under 35 U.S.C. § 1927

Neal Larson

Non-practicing entities often pursue a common strategy to obtain payments for their patents: obtain a low-cost patent with wide exposure, hire a law firm on a contingency fee basis, sue a large number of companies in a favorable venue, and accept low and early settlements. In Gust, Inc., v. Alphacap Ventures, LLC, the Federal Circuit in effect considers whether attorneys for a non-practicing entity took this strategy too far. Specifically, the court determines whether the claims advanced by the attorneys were “without color” and made in bad faith such that the attorneys themselves should be held liable under 28 U.S.C. § 1927 for costs incurred by the sued company. In holding that the attorneys were not liable, the Federal Circuit sheds light on the application of 28 U.S.C. § 1927 for patent suits.
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Priority in Prior Art: Requirements for Using Priority Dates of § 102(e) References

Clarke W. Stavinoha

Many issued patents are still governed by pre-America Invents Act (“AIA”) statutes. Among them is pre-AIA 35 U.S.C. § 102(e), which allows issued U.S. patents and certain published patent applications to be used as prior art as of their respective U.S. filing dates. When challenging validity using prior art under § 102(e), challengers often rely on a prior art reference’s claim of priority to a provisional application filed before the earliest filing date of the challenged patent. Although practitioners are generally aware that the disclosure relied on in the prior art reference must be supported by the description of the earlier-filed provisional application, it may be less widely known that the Federal Circuit has imposed an additional requirement -- the earlier-filed application also must support the claims of the prior art reference (whether an issued patent or published patent application). Failure to show the requisite support of the reference’s claims can doom an invalidity challenge. This article examines the Federal Circuit decisions on the issue, a pending petition for certiorari that could impact the current rule, and best practices where prior art under § 102(e) is at issue.
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Response to The Treasury Select Committee Report on Regulation of Crypto-Assets

Neil Foster, Daniel Green 

The parliamentary report published by the UK Treasury Select Committee on 19 September 2018 (the "Report") advocates that the crypto-asset sector must be regulated as a matter of urgency in order to protect consumers. It states that the "current ambiguity" surrounding the regulation of crypto-assets is unsustainable.
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