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Intellectual Property Report

Client Updates

Retroactive Authorization of Sales and the Doctrine of Patent Exhaustion
Matthew Chuning
Many of us are familiar with the old adage “forgive and forget,” but when it comes to settlement agreements and the doctrine of patent exhaustion, the trend seems to be “forgive and go after the downstream entities.” Recently courts have embraced the idea that sales cannot be retroactively authorized by agreement (for example by release, license, covenant not to sue, etc.) for purposes of patent exhaustion. The United States District Court for the Southern District of New York recently denied a motion for summary judgement in Jonathan Berall, M.D., M.P.H. v. Teleflex Medical Inc., et al that addressed this issue. The decision rejected an argument that patent exhaustion applied to patent claims asserted against a distributor of an accused product when a settlement agreement had released the manufacturer of that product. The doctrine of patent exhaustion provides that “the initial authorized sale of a patented item terminates provides all patent rights to that item.” In Berall, the court reviewed the settlement agreement between the patent owner and manufacturer and found that, at the time the sales to the distributor were made, the sales were not authorized and the doctrine of patent exhaustion did not apply.
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The Federal Circuit’s Service Record: The Court Allows Plaintiff to Bypass Hague Convention to Serve Foreign Defendant
Daniel Weiss
Service of process can be a contested issue at the outset of a lawsuit, particularly when the lawsuit involves foreign defendants. Recently, the Federal Circuit ruled on a procedural approach to service of process for a foreign defendant in In re OnePlus Tech. (Shenzhen) Co., Ltd. In OnePlus, the Federal Circuit denied Defendant OnePlus’s petition for a writ of mandamus to the United States District Court for the Western District of Texas, holding that the district court was within its discretion to allow Plaintiff Brazos to effect service of process against OnePlus without resort to the Hague Convention.
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Standard Essential Patents and the Internet of Things—The Evolving Patent Litigation Landscape
Paul Ragusa, Keith Jurek
Historically, patent litigation involving Standard Essential Patents (SEPs) was mainly confined to the telecommunications and consumer electronics industries.1 However, with the maturation of the Internet of Things (IoT)—the network of connected people and objects, such as smart thermostats, vehicle-to-vehicle communications, and item trackers—SEP litigation has spread beyond traditional boundaries to industries often unfamiliar with SEPs. Companies involved in making “smart” consumer or industrial products are now often forced to become familiar with the nuances of SEPs, often due an unwelcomed patent assertion from a Non-Practicing Entity (NPE). This article addresses important issues involving SEPs to assist those involved in industries unfamiliar with litigation involving patents that seek to cover industry and other standards.
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*This article was published in IP Litigator in December 2021.

USPTO’s Gift for the Holidays: Implementation of Trademark Modernization Act
Tyler Beas
On December 27, 2020, Congress passed the Trademark Modernization Act (“Act”) which brought about a number of trademark rule changes, including new mechanisms for removing Federal trademark registrations (or goods/services within them). These changes, while not particularly controversial (other than the fact that federal trademark law isn’t frequently amended), represent the USPTO’s efforts to stay in-line with developing trademark application/registration trends (e.g. fraudulent trademark registrations, inaccurate description of goods/services, cluttered register with non-use of marks, increased number of applications and therefore delays), and to streamline and speed up the overall process when possible.
To read the full article, click here.

December 2021 Intellectual Property Report Recap
In case you missed it, here is a recap video of our December 2021 Intellectual Property Report that looked at:
- Probing the Gap Filled by the Kessler Doctrine
- Damages Period for Patented Trade Secrets
- Third Quarter 2021 Federal Circuit Law Update
- Federal Circuit Confirms ANDA Notice Letter Are
- Not Acts of Infringement for Venue Purposes
- Cryptocurrency and the Future of Law Firm Payments

 

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