Litigation – IP Law Watch

Federal Circuit Clarifies the “Dispositive” Requirement of the Foreign Antisuit-Injunction Framework

Nov 11 2024

On 24 October 2024, the Federal Circuit issued a precedential decision in Telefonaktiebolaget LM Ericsson v. Lenovo (U.S.), Inc.¹ concluding that the threshold “dispositive” requirement of the foreign-antisuit-injunction framework can be met if a foreign antisuit injunction would resolve a foreign injunction, even if it would not resolve the entire foreign proceeding. The Federal Circuit also clarified that whether a party satisfies the good-faith-negotiating obligation of a fair, reasonable, and non-discriminatory (FRAND) commitment is dispositive of the party’s ability to pursue foreign injunctions.

Upcoming Patent and Design Fee Changes, Including Important Excess Claim Fee Modifications: Australia

Sep 04 2024

IP Australia has updated its practice for the calculation and processing of excess claim fees. Currently, excess claim fees are charged at acceptance, on the basis of the final claim set as accepted, regardless of the number of claims examined during examination. Therefore, the applicant can often have a large claim set examined but avoid excess claim fees by amending to reduce the claim set prior to acceptance.

Federal Circuit Clarifies Scope of Estoppel Provision and Provides Guidance on “Patentably Distinct” Claims

Jul 30 2024

On 26 July 2024, the Federal Circuit entered its decision in SoftView LLC, v. Apple Inc.¹ holding that patent owner estoppel² applies to newly presented and amended claims, but does not apply to issued claims. The Federal Circuit also confirmed that patent owner estoppel prevents a patent applicant from later obtaining a patent claim that is “not patentably distinct” from a finally refused or cancelled claim, but that patent owner estoppel does not apply to defending issued, unamended claims.

US$18.3 million Wearable Blanket Infringement Award Stands Despite Newly Announced Design Patent Standard

Jul 08 2024

An Arizona federal judge denied Top Brand LLC’s motion for a new trial following an US$18.3 million jury award to Cozy Comfort Co. for infringement of two Cozy Comfort design patents and the “Comfy” trademarks used in connection with “The Comfy” hooded wearable blanket, which was featured on the television program “Shark Tank”.

UK Supreme Court Judgment Finds Directors may not be Liable for IP Infringement Without Knowledge of Essential Facts

May 30 2024

Earlier this month in Lifestyle Equities CV and another v Ahmed and another the Supreme Court of the United Kingdom held that the company directors of Hornby Street Limited, siblings Kashif and Bushra Ahmed, were not jointly liable with their company for trade mark infringement.

Federal Circuit Relaxes Standard for Design Patent Obviousness Challenges

May 23 2024

On 21 May 2024, the Federal Circuit overturned the Rosen-Durling test used to assess non-obviousness of design patents. In LKQ Corporation v. GM Global Technology Operations LLC, the Court en banc ruled the same conditions for patentability that apply to utility patents apply to design patents, specifically holding the obviousness rationale articulated in KSR International Co. v. Teleflex Inc., 550 U.S. 398 (2007), will now apply to design patents. LKQ Corp. v. GM Glob. Tech. Operations LLC, No. 2021-2348, 2024 WL 2280728, at 1 (Fed. Cir. May 21, 2024) (en banc).

US Supreme Court Rules No Three-Year Limit for Copyright Damages

May 20 2024

On 9 May 2024, the US Supreme Court (the Court) held that there is no three-year limit on monetary damages for timely filed copyright infringement claims. The 6–3 decision resolves a circuit split, opens the doors to larger potential damages awards for plaintiffs, is likely to lead to increased litigation over older infringements, and leaves open the question of whether the “discovery rule” applies to copyright infringement claims. Warner Chappell Music, Inc. v. Nealy, No. 22-1078, 601 U.S. – (2024).

USPTO Considering Changes to Enforceability of Patents Subject to a Terminal Disclaimer

May 15 2024

On 10 May 2024, the United States Patent and Trademark Office (USPTO) published a Notice of Proposed Rulemaking aimed at changing the current practices surrounding terminal disclaimers. The proposed change could have substantial effects on the enforceability of patents that are subject to a terminal disclaimer.

Levi Strauss Settles Trademark Dispute Over Pocket Tab on Jeans

May 13 2024

Levi Strauss continues enforcement of its Tab trademark against other fashion companies. On May 7, 2024, just a couple months after filing suit against Brunello Cucinelli, Levi Strauss voluntarily dismissed its lawsuit. Levi’s filed suit against the Italian luxury fashion brand in the Northern District of California in January 2024 alleging infringement of Levi’s rectangular pocket tab trademark. Levi’s dismissed the suit after reaching a confidential settlement.

Federal Circuit Finds Declaratory Judgment Jurisdiction Over Patent Owner Through Amazon APEX Agreement

May 03 2024

On 2 May 2024, the US Court of Appeals for the Federal Circuit (the Federal Circuit) entered its decision in SnapRays, dba SnapPower v. Lighting Defense Group,¹ holding the submission of an Amazon Patent Evaluation Express (APEX) Agreement against infringing third-party product listings is a “purposefully directed extra-judicial patent enforcement activit[y]” subjecting the patent owner to personal jurisdiction in the alleged infringer’s home state.²

Tag:Litigation