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Design Patent Obviousness - Federal Circuit Update

The Federal Circuit is set to decide en banc whether its design patent obviousness framework was overruled or abrogated by the Supreme Court’s seminal obviousness decision in KSR International Co. v. Teleflex Inc. Over 15 years ago, the Supreme Court in KSR instructed against applying a rigid approach to obviousness in favor of a more flexible and expansive approach. While KSR addressed utility patent obviousness, according to appellants in LKQ Corp. v. GM Glob. Tech. Operations LLC, KSR’s holdings are equally applicable to design patent obviousness. Particularly, the LKQ appellants contend that the Federal Circuit’s design patent obviousness framework requires exactly the kind of rigid and restrictive approach explicitly rejected in KSR. The Federal Circuit recently granted the LKQ appellants’ petition for rehearing en banc to decide this and other related issues. Interested parties have an opportunity for amicus briefing and should follow the outcome of this case to stay abreast of design patent validity requirements.
To read the full article, click here.
Product of IPR Estoppel: A District Court Split
Inter partes review (IPR) is an administrative trial proceeding developed under the American Invents Act (AIA) and is conducted at the Patent Trials and Appeals Board (PTAB) to review the patentability of one or more claims in a patent only on a ground that could be raised under §§ 102 or 103, and only on the basis of prior art consisting of patents or printed publications. 35 U.S.C. § 311. Yet filing an IPR comes with a trade-off, an IPR proceeding has the benefit of efficiency and success, but the underlying statute restricts the ability for a patent challenger to raise challenges to patents in district courts that have been or reasonably could have been raised in the IPR proceeding. As such, a defendant in patent litigation needs to carefully consider whether to challenge patent validity in the district court or in an IPR proceeding. This article analyzes how district courts have restricted (or not) invalidity proceedings in view of a co-pending or previously litigated IPR proceeding.
To read the full article, click here.
Bringing Home the Bacon: The Federal Circuit Clarifies Threshold for Joint Inventorship
A recent decision from the U.S. Court of Appeals for the Federal Circuit provides guidance on a fundamental issue of patent law commonly faced by patent prosecutors and litigators alike: who can be an inventor, and what kind of contribution is required for inventorship under the law? In HIP, Inc. v Hormel Foods Corp., 66 F.4th 1346 (Fed. Cir. 2023), the Federal Circuit analyzed these issues, and held that an individual may only be considered an inventor if the contribution to the claimed invention is deemed to be of sufficient significance. 
To read the full article, click here.
This article was previously published in the New York Law Journal on July 25, 2023. 
Second Quarter 2023 Federal Circuit Law Update
Since serving as a Federal Circuit clerk, Michael 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 article, click here.
Baker Botts Webinar: The U.S. Supreme Court's Impact on IP
July 19, 2023
The Supreme Court Term came to an end in June and it was another busy year for developments in intellectual property law. All told, the Supreme Court took up four IP addressing several important issues, including copyright’s fair use doctrine, the patent enablement requirement, trademark infringement claims challenging so-called expressive works, and the extraterritorial reach of the Lanham Act to provide civil remedies for the infringement of trademarks.
With the current Term concluding, our panel of former Supreme Court and Federal Circuit clerks and in-house counsel took a hard look at Supreme Court IP decisions. They also examined other IP cases to watch in 2023, and the current composition of the Court.
Michael Hawes, Partner and Practice Group Chair - Federal Circuit Appeals, Baker Botts 
Suzanne Hengl, Partner and Department Co-Chair - Branding, Advertising and Copyright, Baker Botts 
Aaron Streett, Partner and Practice Group Chair - Appellate and Supreme Court, Baker Botts 
Matthew Kelly, President, Chief Intellectual Property Counsel LLC
To view a recording of the Webinar, click here.
July 2023 Intellectual Property Report Recap
In case you missed it, here is a video recap of our July 2023 Intellectual Property Report that looked at: 
The Battle of the Duties: Navigating Confidential Documents and the U.S. Patent Office’s Duty of Disclosure
Strategic Considerations In Light Of The New “Skilled Searcher” Standard For IPR Estoppel
Rachael Lamkin Joins Baker Botts
Baker Botts Webinar: The U.S. Supreme Court's Impact on IP
2023 Intellectual Property Chambers USA, The Legal 500 US, and IAM Patent 1000 Rankings

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