Thought Leadership

Intellectual Property Report: February 2020

Client Updates

Venue Via the Cloud: Venue for Patent Lawsuits Based on Network Servers
Emmanuel Azih
Almost every modern business today makes use of servers in some capacity to deliver goods or services. These servers (whether hosted locally or in a cloud) are the hidden backbone behind many software, web, and entertainment experiences. Given the prevalence of servers to every major business, companies must consider whether they expose themselves to being sued in a particular jurisdiction merely by maintaining and using servers there. The Federal Circuit in In re Google will likely further explore that question. This article reviews the history of case law in this area along with an in-depth analysis of the recently concluded oral arguments before the Federal Circuit.
To read the full article, click here.

Inventor Rights Act Proposes Sweeping Changes to Patent Law – Not Just for Inventors
Fred Carbone
The Inventor Rights Act of 2019 (the Act), as introduced to the House of Representatives on December 18, 2019, could bring monumental change to the practice of patent law. Mainly, the Act attempts to provide greater protections to inventors who own their own patents while offering none of the proposed benefits to entities that own patents invented by others, including inventors’ employers. Due to the number and extent of the benefits the Act provides, companies that practice their patents as well as non-practicing entities (NPEs), such as universities, and patent-assertion entities (PAEs) may attempt to circumvent the requirements in order to take advantage of the Act. As written, there are ambiguities and broad definitions that create potential loopholes in the Act, and Congress will likely need to revise certain provisions to reach its stated goal of limiting the benefits to the inventors themselves. But due to the nature of the business of PAEs, there may not be a complete fix to these potential loopholes that would exclude PAEs.
To read the full article, click here.

January 2020 Intellectual Property Report Recap
In case you missed it, here is a recap video of our December 2019 Intellectual Property Report that looked at:
Lone Star Silicon Innovations LLC v. Nanya Technology Corporation
• The Hottest Food and Beverage IP Topics of 2019
• Supreme Court Rules that USPTO is not entitled to attorneys' fees
• U.S. Department of Commerce issues proposed regulations to conduct national security reviews of transactions involving the information and communications technology and services supply chain

Courts Rule on Attorney Fee Awards in Patent Cases
Robert Maier
Just before the holidays, the Supreme Court and Federal Circuit issued three opinions related to the award of attorney fees in patent cases. The decisions confirm that the “American Rule”—under which each side in a case pays its own attorney fees—remains the norm, unless a statutory or contractual exception applies. These opinions also confirm that appellate courts will continue to carefully scrutinize these fee awards, but will also uphold them when appropriate.
To read the full article, click here.
*This article was previously published in the New York Law Journal on January 21, 2020.

Proving Printed Publication As Prior Art In IPR Proceedings
Paul Ragusa, Daniel Rabinowitz
Over the past seven years, inter partes review proceedings have become an increasingly popular tool with which to challenge the patentability of one or more claims of a patent. IPR proceedings are limited to patentability challenges based solely on novelty or obviousness grounds “only on the basis of prior art consisting of patents or printed publications.”
To read the full article, click here.
*This article was previously published in Law360 on January 15, 2020.

Fourth Quarter 2019 Federal Circuit Law Update
Michael Hawes
Since serving as a Federal Circuit clerk, Mr. Hawes has monitored that court's precedential opinions and prepares a deeply outlined index by subject matter (invalidity, infringement, claim construction, etc.) of relevant legal points - in order to assist clients seeking to identify recent law relevant to a particular problem.
To read the full document, click here.

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