Thought Leadership

Intellectual Property Report

Client Updates

Baker Botts Intellectual Property Practice COVID-19 Report
As IP entities throughout the world respond to the COVID-19 pandemic and adjust their operations accordingly, we want to keep our clients informed so that they do not miss any deadlines or obligations during this tumultuous time. We will continue to update this report as the situation develops.
Read the latest update here. To read more Baker Botts COVID-19 coverage, click here.

Supreme Court Bars Appeal of PTAB Time-Bar Decisions
Michael Hawes
On Monday, April 20th, the Supreme Court ruled in Thryv, Inc. v. Click-To-Call Techs., LP, No. 18-916, 590 U.S. __ (2020), that decisions by the Patent Trial and Appeal Board finding that petitions for inter partes review are timely filed can no longer be appealed. The Court’s decision restricts the arguments patent owners can make and reverses the Federal Circuit’s prior ruling on the issue.
To read the full article, click here.

Supreme Court Holds That “Willfulness” is Not a Prerequisite to an Award of Profits in Trademark Infringement Actions
Elizabeth Rucki, Emily Felvey, Meghna Prasad*
On April 23, 2020, the Supreme Court of the United States issued a unanimous opinion in Romag Fasteners Inc. v. Fossil Inc. et al., holding that a showing of willfulness is not a precondition to the recovery of profits in trademark infringement cases, but noting “that a trademark defendant’s mental state is a highly important consideration” in such determinations. With this ruling, the Court vacated and remanded the lower court’s decision, which denied an award of profits to Romag on grounds that Fossil’s conduct was not willful.
To read the full article, click here.
*Meghna Prasad, a Baker Botts Law Clerk, assisted in the preparation of this article.
First Quarter 2020 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 view this update, click here.

Open to Close: Empirical Study of Patent Case Termination Times
Emily Felvey
Over the past decade, both Congress and the Supreme Court have instigated a series of substantial changes to the United States patent system. For instance, Congress passed the America Invents Act (“AIA”) in 2011, and the Supreme Court revitalized the patentable subject matter requirement of Section 101 and altered the indefiniteness standard of Section 112 in its 2014 Alice vs. CLS Bank and Nautilus v. Biosig Instruments decisions. Furthermore, 2017 saw a shift in the previously established jurisdictional distribution of patent cases with the TC Heartland v. Kraft Food Group Brands decision. These catalysts have combined to alter a variety of aspects of patent litigation. In light of this, the ability to better understand certain aspects of the current landscape — such as the potential length of a case — may facilitate informed strategic decision making and more cost-effective case management by counsel. This article examines patent case termination and time-to-milestone data collected from Lex Machina and Docket Navigator to provide a recent picture of the progression of patent cases. Not only does the data suggest that patent case milestone times have decreased during the last decade, several factors have also been found to affect case duration, such as the jurisdiction in which suit is brought, the industry involved, and the number of patents-at-issue.
To read the full article, click here.

Damages in Hatch-Waxman: What’s at Risk From an At-Risk Launch After the Market is Created?
Dr. Alex Piala
April is the 5-year anniversary of AstraZeneca, a comprehensive effort by the Federal Circuit to address damages resulting from an at-risk generic launch. While at-risk launches of generic pharmaceuticals are not uncommon, opinions addressing damages resulting from those launches are. It is that discrepancy that motivates this review. Below, I briefly introduce at-risk generic pharmaceutical launches, then discuss some of the factors courts consider when determining damages from an at-risk launch of an infringing compound.
To read the full article, click here.

Inline Linking: Embedded Content Might Violate Copyright
Katherine Burgess
Inline linking is a method of embedding content hosted on a third-party server and integrating it into a website. The embedded link retrieves the content and displays it on the website, operating much like a window into the other location. Many believed that inline linking did not infringe the copyright of the content hosted at the other location, but that assumption may have changed. The European Union’s directive on copyright law includes a provision that requires content aggregators to negotiate license fees for display of content through an embedded link, directly targeting inline linking with what has been colloquially referred to as a “link tax.” In the United States, two recent cases have declined to follow a previously-created test for determining copyright infringement of content displayed on a website. The test, dubbed the “server test,” effectively held that inline linking is not copyright infringement so long as the displayed content remained hosted by its originating third-party location because no physical “copy” of the content was created by the alleged infringer. New cases test that assumption by questioning whether the hosted location of the content matters when determining whether it has been “displayed” on a website within the meaning of the Copyright Act.
To read the full article, click here.

Federal Circuit Overturns Trademark Board, Green Lights Color Product Packaging Trade Dress as Being Capable of Inherent Distinctiveness
Tyler Beas, Meghna Prasad*
On April 8, 2020, a three-judge panel of the U.S. Court of Appeals for the Federal Circuit (“CAFC”) in In re: Forney Industries, Inc., Case No. 19-1073 (Fed. Cir. April 8, 2020) vacated and remanded for further proceedings a 2018 Trademark Trial and Appeal Board (“TTAB”) decision that had prevented Forney Industries, Inc. (“Forney”) from registering a black, yellow and red design on its product packaging as inherently distinctive trade dress. In doing so, the CAFC noted that neither the Supreme Court, nor the CAFC, had directly addressed whether multi-color product packaging trade dress can be inherently distinctive, and held that trade dress in the form of colors applied to product packaging can indeed be inherently distinctive depending upon the specifics of the color design.
To read the full article, click here.
*Meghna Prasad, a Baker Botts Law Clerk, assisted in the preparation of this article.


Webinar: Impact of COVID-19 on Intellectual Property Practice in the U.S. and Japan
The Baker Botts team usually visits Japan to present live seminars multiple times each year. In view of the COVID-19 pandemic, instead of our usual Spring visit, we held this “virtual seminar” on Thursday, April 23rd for our Japanese clients and contacts, to keep in touch and share potentially helpful information during this unprecedented time.
To view a recording of this webinar, click here.

Webinar: Intellectual Property Issues Arising Due to COVID-19—Reductions in Force and the Remote Office
Baker Botts partners David Wille and Brian Johnston discussed the realities of COVID-19 including huge numbers of employees working at home as well as substantial layoffs of employees. These particular aspects of COVID-19 present both an increase in challenges and opportunities for those tasked with protecting the intellectual property aspects of a business.
To view a recording of this webinar, click here.

April 2020 Intellectual Property Report Recap
In case you missed it, here is a recap video of our April 2020 Intellectual Property Report that looked at:
  - Global Overview of IP Entity Responses to COVID-19 Crisis
  - May the Government’s Response to COVID-19 Affect Patent Owners?
  - How To Conduct Depositions Remotely
  - Impact of the January 2019 USPTO Guidance: One Year Later
  - Federal Circuit Clarifies §287’s Infringement Damages Marking
  - 9th Circuit Finds for Led Zeppelin After Long Climb Up The Stairway to Heaven
  - Standard Essential Patents and FRAND Licensing
  - A Third Round on the CCPA Carousel

Baker Botts is an international law firm whose lawyers practice throughout a network of offices around the globe. Based on our experience and knowledge of our clients' industries, we are recognized as a leading firm in the energy, technology and life sciences sectors. Since 1840, we have provided creative and effective legal solutions for our clients while demonstrating an unrelenting commitment to excellence. For more information, please visit