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Intellectual Property Report

Client Updates

2022 Intellectual Property Chambers USA Rankings

Our Intellectual Property lawyers and professionals have a deep commitment to exceptional client service. We are pleased to announce that the hard work and successes, on behalf of our clients, have been well recognized in Chambers USA this year. 

Our Intellectual Property lawyers and practices were recognized by Chambers USA Nationwide for IP, International Trade Commission, and Life Sciences, in addition to rankings in California, New York, Texas, and Washington, D.C. For a full list of rankings in Chambers USAclick here

With sincere appreciation, we want to thank you for supporting our lawyers and trusting the Baker Botts team with your legal matters. 


Revisiting American Axle: District Court Application of the Controversial Case

Andrew Grado

On July 31, 2020, the Federal Circuit in a 6-6 split denied en banc review in American Axle Manufacturing, Inc. v. Neapco Holdings LLC, instead withdrawing its previous opinion and issuing a modified opinion that drew a great deal of attention to 35 U.S.C. § 101 and its judicial exceptions. 1  Featuring a dissent by Judge Moore that warned of the “unfairness, confusion and uncertainty that will be caused by this opinion,”2 the modified opinion sparked debate about § 101, with many suggesting that this case offered a great opportunity for the Supreme Court bring clarity to § 101 caselaw that is rife with seemingly contradictory decisions and imprecise rules.  

To read the full article, click here.


No Bright-Line Rules for Jurisdiction: The Federal Circuit's Decision in Apple Inc. v. Zipit Wireless, Inc.

Lori Ding

The Court of Appeals for the Federal Circuit recently reversed and remanded a district court’s decision dismissing a complaint for declaratory judgment of noninfringement for lack of personal jurisdiction.  Apple Inc. v. Zipit Wireless, Inc., 30 F.4th 1368 (Fed. Cir. 2022).  According to the Federal Circuit, the district court wrongly concluded that patent-infringement notice letters and related communications can never form the basis for personal jurisdiction.  Patent owners and challengers should consider the extent to which their pre-suit communications can justify personal jurisdiction in a forum.

To read the full article, click here


Revisiting Spider-Man and Patent Licenses: 'Kimble v. Marvel'

Robert Maier

In 2015, the Supreme Court issued its decision in Kimble v. Marvel Entertainment, LLC, 576 U.S. 446 (2015), which upheld a prior decision of the court and provided clarity on a question that frequently arises in patent licenses: whether, and to what extent, is it proper to collect royalties for a license term that extends beyond the expiration date of a licensed patent? For in-house counsel and others regularly involved in licensing transactions, the decision is worth revisiting, as it provides helpful, practical guidance in the complex area of patent licensing. 

To read the full article, click here
*This article was previously published on May 25, 2022 in the New York Law Journal.


Webinar: IP & Antitrust: Hot Issues 2nd Edition

In partnership with Concurrences and Oxera, Baker Botts is pleased to participate in the second online edition of IP & Antitrust: Hot Issues  Tuesday, June 7th - Wednesday, June 8th at 11:00 a.m. (CST). The program will consist of two panel discussions. Baker Botts' partner Paul Lugard will participate in Panel One on Tuesday, June 7th -  SEPs: Is there a need to review the balance Intellectual Property and Antitrust Priorities? 

For more information on each panel and to register, please click here
Note: You will need to register for each panel separately. 


May 2022 Intellectual Property Report Recap

In case you missed it, here is a recap video of our May 2022 Intellectual Property Report that looked at:

  • Contracting Away the Right to File Inter Partes Review: Forum-Selection Clauses and the Federal Circuit's Decision in Nippon Shinyaku Co., Ltd. v. Sarepta Therapeutics, Inc. 
  • Understanding the Importance of Words in Design Patents
  • Decentralized Autonomous Organizations
  • A Crucial Element in Patent Prosecution: Examiner Experience

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