To help my clients and colleagues stay informed about the latest trends in patent litigation, I’ve begun gathering a collection of patent analyses and the most recent news from the patent sector. Be sure to look for updates on the major patent cases influencing the industry!
2024: Landmark Rulings on Patent Obviousness and Trademark Fair Use, While AI Continues to Reshape IP Law
The intellectual property landscape in 2024 was defined by pivotal court decisions that altered long-standing legal tests, significant legislative and administrative reforms, and the ever-growing influence of artificial intelligence on innovation and brand protection.
Biggest Patent News
- Major Patent Verdicts: Kove IO Inc. was awarded a staggering $525 million in a patent infringement verdict against Amazon Web Services after a Chicago jury found AWS infringed three of Kove’s patents related to cloud storage technology.¹ In another major verdict, Netlist secured a $445 million verdict against Micron when a Texas jury found the company willfully infringed two Netlist patents concerning memory-module technology.²
- Ongoing Tech Disputes: The legal battle between Google and Sonos over smart speaker patents continued to be a focal point, highlighting intense competition within the tech industry.³
- Unified Patent Court Developments: The UPC’s Court of Appeal made waves when it overturned a preliminary injunction in the closely watched biotech case, NanoString v. 10x Genomics, finding it likely that the patent-in-suit would be declared invalid in the main proceedings.⁴
- Pharmaceutical Litigation: Pharmaceutical giant Bayer saw its main U.S. patent for the blockbuster drug Xarelto expire in the spring of 2024, opening the door for generic competition.⁵ In a significant move for pharma exclusivity, following challenges by the Federal Trade Commission, Teva agreed to delist certain device patents for its asthma inhalers from the FDA’s Orange Book.⁶
Patent Law News
- Landmark Legal and Legislative Changes: In a major shift, the U.S. Court of Appeals for the Federal Circuit, in an en banc decision in LKQ Corp. v. GM Global Technology Operations, overruled the long-standing, rigid “Rosen-Durling test” for determining the obviousness of design patents.⁷ The court discarded this test in favor of the more flexible “Graham” analysis used for utility patents, as established in the Supreme Court’s KSR v. Teleflex decision.⁷
- End of Chevron Deference: The U.S. Supreme Court’s ruling in Loper Bright Enterprises v. Raimondo eliminated the Chevron deference doctrine, which had required courts to defer to federal agencies’ reasonable interpretations of ambiguous statutes. This decision gives courts more authority over statutory interpretation previously handled by agencies like the USPTO.⁸
- Obviousness-Type Double Patenting Clarified: Following the Federal Circuit’s impactful 2023 decision in In re: Cellect, which clarified how patent term adjustment affects obviousness-type double patenting, the USPTO issued guidance on the decision’s application in 2024.⁹
- Venue and Legislation: Patent filings saw a continued geographical shift, with Delaware’s new corporate disclosure rules influencing venue choices.¹⁰ In Congress, the PREVAIL Act was advanced to reform the PTAB,¹¹ alongside the RESTORE Act, which was introduced to strengthen patentee injunction rights.¹²
USPTO Developments and the Rise of AI
- Guidance on AI: The USPTO issued updated guidance clarifying that while an AI system cannot be an inventor, inventorship is not precluded for inventions created with the assistance of AI.¹³ The agency also released guidelines on the use of AI in submissions to the PTAB and Trademark Trial and Appeal Board (TTAB).¹⁴
- Proposed Fee Hikes: The USPTO proposed significant fee increases for 2025 aimed at shaping patent prosecution behavior, most notably a new surcharge for filing continuation applications more than five years after the earliest priority date.¹⁵
- Design Patent Bar: In an effort to broaden participation, the USPTO created a new “design patent bar,” admitting practitioners with backgrounds in fields like industrial design and architecture to practice in design patent matters.¹⁶
Trademark News
- Top Trademark Stories & Litigation Trends: Courts continued to interpret the Supreme Court’s 2023 ruling in Jack Daniel’s v. VIP Products. One key case, Diece-Lisa Industries Inc. v. Disney, explored the line between creative product use and expressive use of a mark in a dispute over the “Lots-o’-Huggin’ Bear” character from “Toy Story 3.”¹⁷ Luxury brand Chanel won a $4 million verdict against reseller What Goes Around Comes Around after a jury found the reseller liable for trademark infringement and selling counterfeit goods.¹⁸ In a case involving the band Earth, Wind & Fire, a Florida court found that a tribute band’s use of names like “Earth Wind & Fire Legacy Reunion” did not qualify for a nominative fair use defense because their advertising was misleading.¹⁹ Cases involving non-traditional trademarks, such as the launch of Tiger Woods’ “Sun Day Red” brand, also gained attention.²⁰
- International Developments: The European Union’s AI Act began its phased introduction on August 1, 2024, regulating AI systems offered or used within the EU.²¹
- USPTO Trends: The agency made progress on its backlog, with the average time for a first action on an application decreasing from 8.2 to 7.5 months.²² The USPTO also launched the integrated Intellectual Property Assignment System (IPAS) in February 2024 to modernize the process for recording assignments.²³
2023: Reshapes IP with Landmark Supreme Court Rulings on Trademarks and Patent Enablement
The IP landscape in 2023 was defined by two blockbuster U.S. Supreme Court decisions, the launch and rapid growth of Europe’s Unified Patent Court, and a continued focus on the legal implications of AI.
Biggest Patent News
- Launch of the Unified Patent Court (UPC): On June 1, 2023, the Unified Patent Court opened its doors, creating a single forum for patent litigation across 17 EU member states,²⁴ with over 100 actions filed in its first three months.²⁵
- Blackberry Patent Sale: BlackBerry sold a massive portfolio of its legacy patents to Malikie Innovations for $170 million in cash and a potential future $730 million.²⁶
- VLSI and Intel’s Ongoing Battle: The Federal Circuit upheld a $948.8 million verdict for VLSI in its long-running patent dispute with Intel.²⁷
- Moderna Sues Pfizer and BioNTech: High-profile litigation over COVID-19 vaccine technology moved forward as Moderna pursued patent infringement lawsuits against Pfizer and BioNTech in the U.S. and Europe.²⁸
- Amgen’s Billion-Dollar Tax Bill: Pharmaceutical giant Amgen was ordered to pay over $1.1 billion in back taxes and penalties following a U.S. Tax Court ruling that the company had improperly allocated profits to a subsidiary in Puerto Rico.²⁹
Patent Law News
- Supreme Court Rules on Patent Enablement in Amgen v. Sanofi: In a unanimous decision, the Supreme Court ruled that Amgen’s patents for its cholesterol drug Repatha were invalid. The Court held that the patents, which claimed a whole class of antibodies, did not adequately describe how to make and use the full scope of the invention without “undue experimentation.”³⁰
- Patent Eligibility Restoration Act: In Congress, a bill was reintroduced to abolish judicial exceptions from Section 101, seeking a broad reset of patent eligibility.³¹
- USPTO Developments: The USPTO issued guidance clarifying that while AI systems cannot be named as inventors, inventions created with significant human contribution are not automatically disqualified.¹³ The Federal Circuit affirmed the USPTO Director’s authority to unilaterally review decisions made by the PTAB.³²
Trademark News
- Supreme Court Sides with Jack Daniel’s in “Bad Spaniels” Case: The Supreme Court unanimously decided in Jack Daniel’s Properties, Inc. v. VIP Products LLC that a dog toy parodying a whiskey bottle was not automatically entitled to First Amendment protection when an alleged infringer uses a mark as a source identifier.³³
- Supreme Court Limits Lanham Act in Hetronic v. Abitron: The U.S. Supreme Court limited the extraterritorial reach of the Lanham Act to domestic activities.³⁴
- Hermès Wins MetaBirkins NFT Lawsuit: A federal jury found that artist Mason Rothschild’s “MetaBirkins” NFTs infringed on Hermès’ trademark rights, awarding the company $133,000.³⁵
- Lizzo’s “100% That Bitch” Trademark Dispute: Pop star Lizzo successfully defended her trademark registration for the phrase, with the TTAB ruling it functioned as a source identifier for her merchandise.³⁶
- Global Developments: The EUIPO celebrated reaching 5 million EUTM applications.³⁷ In Malaysia, a court decision in a case between Ferrari and an energy drink maker helped clarify standards of trademark confusion and infringement.³⁸
2022: Landmark Patent Eligibility Cases, the Rise of the UPC, and Major Trademark Disputes in the Metaverse
In 2022, the intellectual property world was shaped by critical court decisions on patent eligibility, the final preparations for Europe’s Unified Patent Court, and the first major trademark battles over digital assets.
Biggest Patent News
- Caltech Awarded Over $1.1 Billion from Apple and Broadcom: The U.S. Court of Appeals for the Federal Circuit upheld a massive 2020 jury verdict affirming that Apple and Broadcom had willfully infringed on the California Institute of Technology’s Wi-Fi patents.³⁹
- VLSI v. Intel: In a separate case from the 2021 verdict, VLSI won another verdict against Intel, this time for $948 million, related to microchip patents.⁴⁰
- Global FRAND Battles Conclude: Ericsson and Apple settled their multi-country disputes over standard-essential patents and 5G licensing rates.⁴¹
- VIFOR Loses Injectable Iron Patents: In a major win for generic drugmakers, a federal court invalidated five key patents held by Vifor Pharma for its blockbuster drug, Injectafer, opening the door for generic competition.⁴²
- Europe’s Unified Patent Court (UPC) Becomes a Reality: Germany deposited its instrument of ratification in the fall, triggering the final countdown for the court’s launch in mid-2023.⁴³
Patent Law News
- Supreme Court Declines to Hear American Axle: Despite widespread calls for clarity, the U.S. Supreme Court denied the petition to hear the American Axle case, leaving the Federal Circuit’s complex jurisprudence as the prevailing law on patent eligibility under Section 101.⁴⁴
- IPR Estoppel Expansion: In Caltech v. Broadcom, the Federal Circuit expanded PTAB estoppel, barring arguments that reasonably “could have been raised” (but weren’t) in an IPR.⁴⁵
- USPTO Director Actions & Initiatives: USPTO Director Kathi Vidal launched a new First-Time Filer Expedited Examination Pilot Program.⁴⁶ Director Vidal also asserted her authority to review PTAB decisions and sanctioned OpenSky for challenging patents in bad faith.⁴⁷
- The Patent Eligibility Restoration Act of 2022: Senator Thom Tillis introduced a bill aimed at clarifying Section 101 by explicitly defining what is and is not patent-eligible.⁴⁸
Trademark News
- Metaverse and NFT Trademark Battles Erupt: Hermès filed a high-profile lawsuit against artist Mason Rothschild over his “MetaBirkins” NFT collection.⁴⁹ Nike sued the online reseller StockX, alleging trademark infringement for selling NFTs of Nike sneakers without authorization.⁵⁰
- AI “Creativity Machine” Cannot Be an Inventor: The U.S. Copyright Office Review Board refused to register a work of art created by an AI algorithm, affirming the “human authorship” requirement.⁵¹
- USPTO Backlog and Reforms: The Office Action response window was reduced from six to three months for some filings.⁵² The USPTO also processed its first expungement and re-examination petitions for unused/fraudulent marks under the new TMA.⁵³
2021: Arthrex Saga Concludes, Big Tech Patent Battles Rage, and Trademark Modernization Act Takes Effect
The year 2021 was marked by a landmark Supreme Court decision that restructured the PTAB, epic patent disputes, and the implementation of the most significant piece of U.S. trademark legislation in decades.
Biggest Patent News
- VLSI Wins $2.18 Billion Verdict Against Intel: In one of the largest patent infringement awards in U.S. history, a federal jury in Texas found that Intel had infringed on two VLSI Technology patents.⁵⁴
- Apple and Ericsson’s 5G Patent War: A global legal battle erupted between Apple and Ericsson over the licensing of patents essential for 5G technology after negotiations broke down.⁵⁵
- Moderna’s COVID-19 Vaccine Patent Dispute: Moderna became embroiled in a dispute with the National Institutes of Health (NIH) over whether three NIH scientists should be named as co-inventors on a core patent for the Spikevax vaccine.⁵⁶
- Centripetal Networks’ $2.75 Billion Award Against Cisco Vacated: The Federal Circuit vacated a massive judgment after discovering the trial judge’s wife owned Cisco stock, creating a conflict of interest.⁵⁷
- Patent Milestone: The USPTO issued its 11 millionth patent for a heart valve device.⁵⁸
Patent Law News
- Supreme Court Reshapes PTAB in United States v. Arthrex: The Supreme Court addressed the constitutionality of PTAB judge appointments, granting the Director of the USPTO the authority to review and reverse final PTAB decisions.⁵⁹
- Supreme Court Curbs “Assignor Estoppel” in Minerva v. Hologic: The Court curtailed the doctrine of “assignor estoppel,” allowing inventors who assign their patents to later challenge the patent’s validity in some instances.⁶⁰
- Federal Circuit Rules on “Skinny Label” Drug Infringement: The full Federal Circuit, in GlaxoSmithKline v. Teva, ruled that generic drugmaker Teva was liable for inducing infringement of GSK’s patented use for the heart drug Coreg.⁶¹
Trademark News
- Trademark Modernization Act (TMA) Takes Effect: The most substantial changes to U.S. trademark law in years went into effect in December 2021, creating new ex parte expungement and reexamination proceedings and restoring the presumption of irreparable harm for injunctions.⁶²
- Major Trademark Loss for Chanel: Chanel lost a significant EU battle against Huawei over the similarity of their stylized logos.⁶³
- Banksy Loses Trademark for “Flower Thrower”: The EUIPO invalidated a trademark for Banksy’s famous artwork, ruling it was filed in bad faith to circumvent copyright law.⁶⁴
2020: Pandemic Verdicts, PTAB Procedures, and Landmark Trademark Changes Dominate IP Landscape
The year 2020 brought significant shifts to the IP world, driven by key court rulings, massive patent verdicts, and the passage of impactful U.S. trademark legislation.
Biggest Patent News
- Massive Verdicts Against Tech Giants: A Virginia federal judge ordered Cisco Systems Inc. to pay $1.9 billion for “egregious” willful misconduct in copying Centripetal Networks’ technology (this award was later vacated).⁶⁵ Apple and Broadcom were hit with a $1.1 billion judgment for infringing on Caltech’s Wi-Fi patents.⁶⁶ Apple also lost a $506 million verdict for infringing PanOptis’ 4G LTE patents⁶⁷ and a $502.8 million award to VirnetX for infringing network security patents.⁶⁸
- COVID-19 Innovation Boost: Patent activity surged in relevant sectors, and the USPTO granted hundreds of prioritized reviews for COVID-related patent applications by year’s end.⁶⁹
- Global FRAND and SEP Battles: In Unwired Planet v. Huawei, the U.K. Supreme Court affirmed that English courts have the power to set global licensing rates for multinational patent portfolios.⁷⁰ In Germany, a court in Sisvel v. Haier clarified FRAND obligations, placing the burden of offering fair licenses on the patent owner.⁷¹
- Major Pharmaceutical & Biotech Disputes: In the CRISPR gene-editing battle, the European Patent Office maintained a foundational patent for the University of California, Berkeley, while revoking a key patent for the Broad Institute.⁷²
Patent Law News
- Supreme Court Limits Appeals of PTAB Decisions: In Thryv v. Click-to-Call, the Supreme Court held that PTAB decisions on whether an IPR was filed in a timely manner cannot be appealed.⁷³
- PTAB Solidifies Fintiv Discretionary Denials: The PTAB made its decision in Apple v. Fintiv precedential, outlining six factors for denying IPR petitions based on a parallel district court case.⁷⁴
- Uncertainty Over PTAB Judge Appointments: The Federal Circuit’s 2019 ruling in Arthrex, Inc. v. Smith & Nephew, Inc.—finding the appointment of PTAB judges unconstitutional—loomed over the entire year as the case was appealed to the Supreme Court.⁷⁵
Trademark News
- Trademark Modernization Act of 2020 Signed into Law: The TMA was signed on December 27, 2020, designed to clear the register of unused marks by creating new, faster ex parte expungement and reexamination proceedings.⁷⁶
- Supreme Court Allows “Generic.com” Trademarks: In USPTO v. Booking.com, the Supreme Court ruled 8-1 that combining a generic term like “booking” with “.com” can create a protectable trademark if consumers perceive it as a brand name.⁷⁷
- Supreme Court Lowers Bar for Profit Awards: In Romag Fasteners, Inc. v. Fossil, Inc., the Supreme Court held that a trademark owner does not need to prove that an infringer acted willfully to be awarded the infringer’s profits as damages.⁷⁸
2019: Landmark Supreme Court Decisions, USPTO Policy Shifts, and a Focus on Eligibility
The year 2019 was characterized by influential Supreme Court rulings, significant policy adjustments at the U.S. Patent and Trademark Office (USPTO) concerning patent eligibility, and continued legislative reform efforts. Uncertainty in patent eligibility under the Alice framework remained a dominant theme, while the USPTO strengthened trademark filing rules to combat fraud.
Biggest Patent News: Eligibility, Damages, and Reforms
- Helsinn Healthcare S.A. v. Teva Pharmaceuticals USA, Inc.: The Supreme Court unanimously held that the on-sale bar, which prevents patenting an invention sold more than one year before the application filing, applies even if the sale was made confidentially.⁷⁹ This decision clarified that a private sale can trigger the on-sale bar and extinguished hopes that the America Invents Act (AIA) had changed this long-standing rule.⁷⁹
- Return Mail, Inc. v. United States Postal Service: The Supreme Court ruled that a federal government agency is not considered a “person” who can petition to institute an AIA review proceeding, such as an inter partes review (IPR).⁸⁰
- Athena Diagnostics v. Mayo: In a highly fractured decision, the Federal Circuit denied a rehearing of a case that found a diagnostic method patent ineligible. Several judges urged the Supreme Court to intervene to clarify patent eligibility law, but the court later declined to hear the case.⁸¹
- Power Integrations v. Fairchild: The Federal Circuit clarified the limits on extraterritorial damages in patent cases, reinforcing that damages must be directly tied to domestic infringement in the U.S.⁸²
- Apple v. Qualcomm Settlement: A major global patent war was resolved when Apple and Qualcomm reached a settlement, which included a significant payment from Apple to Qualcomm and a long-term chipset supply agreement.⁸³
Legislative Developments
- Section 101 Reform Efforts: Senators Tillis and Coons circulated draft legislation aimed at reforming Section 101 of the Patent Act to provide greater clarity on patent eligibility, especially for life sciences and software inventions. Though it did not pass, it signaled significant congressional interest in addressing the uncertainty created by court decisions.⁸⁴
Patent Office Developments (USPTO): Navigating Patent Eligibility
- Revised Patent Subject Matter Eligibility Guidance: The USPTO issued revised guidance for patent examiners on how to determine patent eligibility under Section 101.⁸⁵ This was a significant attempt to create a more predictable and consistent approach for inventions related to software and business methods following the Supreme Court’s Alice decision.⁸⁵
- PTAB Amendment Pilot Program: The USPTO launched a trial program to streamline the process for amending patent claims during AIA trials, addressing criticism that such amendments were nearly impossible to achieve.⁸⁶
Trademark Updates: Scandalous Marks and Filing System Modernization
- Iancu v. Brunetti: In a major First Amendment decision, the Supreme Court found the Lanham Act’s prohibition on registering “immoral” or “scandalous” trademarks to be unconstitutional.⁸⁷ This ruling allowed for the registration of marks, like the clothing brand “FUCT,” that might be considered offensive.⁸⁷
- U.S. Counsel Rule Implemented: To combat a surge in fraudulent foreign filings, the USPTO implemented a new rule effective August 3, 2019, requiring all foreign-domiciled trademark applicants and registrants to be represented by a U.S.-licensed attorney.⁸⁸
- Mandatory Electronic Filing: The USPTO made it mandatory for all trademark applications and related correspondence to be filed electronically through the Trademark Electronic Application System (TEAS) to modernize the registration process.⁸⁹
2018: Oil States, SAS Institute, and Continued Debates on Patent Eligibility
In 2018, the Supreme Court issued two major decisions that affirmed the constitutionality of inter partes reviews and altered the landscape of Patent Trial and Appeal Board (PTAB) proceedings. The debate over patent subject matter eligibility continued to be a central theme under the new USPTO Director.
Biggest Patent News: Supreme Court Upholds AIA Reviews and Changes PTAB Practice
- Oil States Energy Services, LLC v. Greene’s Energy Group, LLC: In a landmark decision, the Supreme Court held that IPR proceedings do not violate Article III or the Seventh Amendment of the Constitution. The ruling affirmed that patents are a public franchise and that the USPTO has the authority to reconsider and cancel issued patents through administrative review.⁹⁰
- SAS Institute Inc. v. Iancu: The Supreme Court ruled that when the PTAB institutes an IPR, it must decide the patentability of all claims challenged in the petition, not just some of them.⁹¹ This decision eliminated the PTAB’s practice of partial institution and required more comprehensive decisions.⁹¹
- Saint Regis Mohawk Tribe v. Mylan: The Federal Circuit rejected an attempt by Allergan to shield its patents from IPR by assigning them to a Native American tribe and claiming sovereign immunity.⁹²
Patent Office Developments (USPTO): Adjusting to Supreme Court Rulings
- Andrei Iancu Appointed Director: The new USPTO Director, Andrei Iancu, began initiatives aimed at bringing “clarity and predictability” to patent law, particularly in the area of Section 101 eligibility.⁹³
- Implementation of SAS Institute Decision: The PTAB moved quickly to implement the Supreme Court’s ruling in SAS Institute, changing its procedures to issue final written decisions addressing every challenged claim in an IPR.⁹¹
- Continued Focus on Section 101: The USPTO held numerous public roundtables and sought feedback on how to improve the examination process in the complex area of patent subject matter eligibility.⁹⁴
Trademark Updates: Battle Against Fraudulent Filings and Modernization
- Starbucks v. Wolfe’s Borough Coffee (“Charbucks” case): The Federal Circuit affirmed that the “Charbucks” brand did not dilute Starbucks’ famous trademark by blurring, a decision that helped clarify the limits of the dilution doctrine.⁹⁵
- Combating Fraudulent Solicitations: The USPTO increased its efforts to combat misleading solicitations from companies that impersonated the office to charge unnecessary fees to trademark owners.⁹⁶
- TEAS Modernization: The USPTO continued its multi-year project to modernize the TEAS and TEASi (Trademark Electronic Application System International) filing systems to improve user experience and efficiency.⁹⁷
2017: TC Heartland Reshapes Patent Litigation and Matal v. Tam Opens the Door for Disparaging Marks
The year 2017 saw a monumental shift in where patent infringement lawsuits could be filed, thanks to a Supreme Court decision that upended decades of established practice. The Court also issued a significant First Amendment ruling impacting trademark law.
Biggest Patent News: Supreme Court Narrows Patent Venue and Tackles Exhaustion
- TC Heartland LLC v. Kraft Foods Group Brands LLC: In a unanimous decision, the Supreme Court significantly restricted the venues for patent infringement lawsuits.⁹⁸ The Court held that for patent venue purposes, a domestic corporation “resides” only in its state of incorporation, making it more difficult to sue corporations in plaintiff-friendly jurisdictions like the Eastern District of Texas.⁹⁸
- Impression Products, Inc. v. Lexmark International, Inc.: The Supreme Court held that once a patented item is sold, the patent holder’s rights in that item are exhausted, preventing them from controlling its use or resale after the initial sale, both domestically and internationally.⁹⁹
- Matal v. Tam (formerly Lee v. Tam): In a landmark First Amendment trademark case, the Supreme Court ruled that the Lanham Act’s “disparagement clause” was unconstitutional.¹⁰⁰ This decision, involving the band “The Slants,” paved the way for the registration of marks that could be considered disparaging.¹⁰⁰
- Life Technologies v. Promega: The Supreme Court limited extraterritorial infringement liability, finding that supplying a single component of a multi-component invention from the U.S. for combination abroad was not sufficient to trigger liability.¹⁰¹
Patent Office Developments (USPTO): Adapting to New Legal Realities
- Post-TC Heartland Filing Shift: Following the Supreme Court’s decision, there was a dramatic geographical shift in patent infringement lawsuits, with a significant decrease in filings in the Eastern District of Texas and an increase in districts like Delaware.¹⁰²
- High Volume of PTAB Filings: The PTAB continued to be a popular forum for challenging the validity of patents, with a high number of IPR petitions being filed.¹⁰³
Trademark Updates: Disparaging Marks and Efforts to Combat Cluttering
- Matal v. Tam Ruling: The Supreme Court’s decision allowing the registration of marks that might be considered disparaging was the biggest trademark news of the year.¹⁰⁰
- Post-Registration Audit Program: The USPTO expanded its pilot program to audit trademark maintenance filings to ensure that registered marks were actually in use for all the goods and services listed, aiming to clear out “deadwood” registrations.¹⁰⁴
2016: Halo and Stryker Raise the Bar for Willful Infringement and the Defend Trade Secrets Act Creates a Federal Cause of Action
In 2016, the Supreme Court made it easier for patent holders to obtain enhanced damages for willful infringement. A major piece of legislation created a new federal framework for trade secret protection.
Biggest Patent News: Enhanced Damages and a New Era for Trade Secrets
- Halo Electronics, Inc. v. Pulse Electronics, Inc. and Stryker Corp. v. Zimmer, Inc.: In these consolidated cases, the Supreme Court rejected the Federal Circuit’s rigid two-part test for awarding enhanced damages in willful patent infringement cases. The Court gave district courts more discretion to award enhanced damages (up to three times actual damages) in egregious cases.¹⁰⁵
- Cuozzo Speed Technologies, LLC v. Lee: The Supreme Court’s first-ever review of an IPR proceeding upheld the PTAB’s practice of using the “broadest reasonable interpretation” (BRI) standard for claim construction.¹⁰⁶ The Court also affirmed that the PTAB’s decision to institute an IPR is not judicially reviewable.¹⁰⁶
- Federal Circuit Clarifies Alice: In a series of decisions including Enfish v. Microsoft and Bascom v. AT&T, the Federal Circuit provided some hope to patent owners by finding certain software patents eligible under the Alice framework, ruling they were directed to specific improvements in computer functionality rather than abstract ideas.¹⁰⁷
Legislative Developments
- Defend Trade Secrets Act (DTSA): Signed into law on May 11, 2016, the DTSA created a federal civil cause of action for trade secret misappropriation.¹⁰⁸ This was a significant development, as trade secret law had previously been governed almost exclusively by state law.¹⁰⁸
Patent Office Developments (USPTO): Focus on Patent Quality and PTAB Proceedings
- Enhanced Patent Quality Initiative: The USPTO continued its multi-year focus on improving patent quality through various initiatives aimed at enhancing the clarity and consistency of patent examinations.¹⁰⁹
- PTAB Trial Practice Guide Updates: The PTAB issued updates to its Trial Practice Guide to provide more clarity on various aspects of trial practice before the Board.¹¹⁰
Trademark Updates: Continued Modernization and International Developments
- Elliott v. Google: The 9th Circuit held that the “Google” trademark had not become generic, preserving one of the world’s most valuable brands from “genericide.”¹¹¹
- Record International Filings: The World Intellectual Property Organization (WIPO) reported record levels of international patent and trademark applications in 2016.¹¹²
2015: Commil v. Cisco, Kimble v. Marvel, and Williamson v. Citrix Reshape Patent Law
The year 2015 was marked by important Supreme Court decisions on induced infringement and patent licensing, as well as a significant Federal Circuit ruling on functional claiming that impacted patent prosecution and litigation.
Biggest Patent News: Key Rulings on Induced Infringement, Licensing, and Functional Claiming
- Commil USA, LLC v. Cisco Systems, Inc.: The Supreme Court held that a good-faith belief that a patent is invalid is not a defense to a claim of induced patent infringement.¹¹³ The Court clarified that induced infringement requires knowledge that the induced acts constitute patent infringement.¹¹³
- Kimble v. Marvel Entertainment, LLC: The Supreme Court reaffirmed its 50-year-old rule from Brulotte v. Thys Co., holding that a patentee cannot charge royalties for the use of an invention after its patent has expired.¹¹⁴
- Williamson v. Citrix Online, LLC: In an en banc decision, the Federal Circuit made it easier to treat a patent claim limitation as a “means-plus-function” limitation, even if the word “means” is not used.¹¹⁵ This overruled a previous standard and increased the risk that such claims could be found invalid as indefinite.¹¹⁵
- Teva Pharmaceuticals v. Sandoz: The Supreme Court changed the standard of review for claim construction, ruling that appellate courts must apply a “clear error” standard to a district court’s factual findings, rather than reviewing them de novo (from scratch).¹¹⁶
Patent Office Developments (USPTO): Grappling with Alice and Post-Grant Proceedings
- Alice Guidance: The USPTO issued interim guidance for its examiners on how to apply the Supreme Court’s 2014 decision in Alice Corp. v. CLS Bank International, which had a significant impact on the patentability of software and business method inventions.¹¹⁷
- Growth of AIA Post-Grant Proceedings: The use of IPRs and other post-grant proceedings continued to grow, providing a popular, faster, and less expensive alternative to district court litigation for challenging patent validity.¹¹⁸
Trademark Updates: Focus on Specimen Requirements and Modernization
- Increased Scrutiny of Specimens: The USPTO increased its examination of specimens submitted to show a trademark’s use in commerce, particularly from foreign applicants, to combat fraudulent or digitally altered submissions.¹¹⁹
- TEAS Plus Expansion: The USPTO expanded the types of trademark applications that could be filed using the lower-cost TEAS Plus application form.¹²⁰
Bibliography
- Reuters. (2024). “Amazon hit with $525 million jury verdict in data-storage patent trial.”
- Reuters. (2024). “Micron hit with $445 million US jury verdict in Netlist patent case.”
- The Verge. (2024). “The Google-Sonos patent war is a mess.”
- JD Supra. (2024). “UPC Court of Appeal Overturns Preliminary Injunction in 10x Genomics”
- Fierce Pharma. (2024). “Bayer’s Xarelto loses US patent protection, but generics have yet to launch.”
- Reuters. (2024). “Teva to pull some US patents for asthma inhalers after FTC challenge.”
- Reuters. (2024). “Design-patent ‘obviousness’ standard thrown out by US appeals court.”
- SCOTUSblog. (2024). “Supreme Court guts Chevron deference, curbing power of federal agencies.”
- U.S. Patent and Trademark Office. (2024). “Guidance on the Application of Obviousness-Type Double Patenting Following In re Cellect.”
- Bloomberg Law. (2023). “Delaware’s New Disclosure Rule Shakes Up Patent Litigation.”
- IPWatchdog.com. (2023). “PREVAIL Act Passes Unanimously Out of Judiciary Subcommittee.”
- IPWatchdog.com. (2023). “Coons, Tillis, Cotton and Hirono Introduce RESTORE Act to Strengthen Injunction Rights for Patentees.”
- U.S. Patent and Trademark Office. (2024). “Inventorship guidance for AI-assisted inventions.”
- U.S. Patent and Trademark Office. (2024). “USPTO issues guidance on use of artificial intelligence in PTAB and TTAB proceedings.”
- Federal Register. (2024). “Setting and Adjusting Patent Fees during Fiscal Year 2025.”
- U.S. Patent and Trademark Office. (2023). “USPTO finalizes rule to expand admission to practice in design patent matters before the Office.”
- Reuters. (2023). “Disney’s ‘Lots-o’-Huggin’ Bear’ can be trademarked, court says.”
- Reuters. (2024). “Chanel wins $4 million verdict against reseller WGACA in trademark trial.”
- The National Law Review. (2024). “Nominative Fair Use is No Defense to Misleading Advertising, Court Rules in Earth, Wind & Fire Tribute Band Case.”
- ESPN. (2024). “Tiger Woods, TaylorMade launch new apparel line, Sun Day Red.”
- Reuters. (2024). “EU’s AI Act to enter into force in stages from August.”
- World Trademark Review. (2024). “USPTO trademark applications on the rise, with office action response times dropping.”
- U.S. Patent and Trademark Office. (2024). “USPTO launches new Intellectual Property Assignment System.”
- Unified Patent Court. (2023). “The Unified Patent Court is open for business.”
- JUVE Patent. (2023). “UPC surpasses 100 cases three months after launch.”
- Reuters. (2023). “BlackBerry closes patent sale deal for $170 mln in cash.”
- Reuters. (2023). “Intel loses bid to nix $949 mln US patent verdict.”
- Reuters. (2022). “Moderna sues Pfizer, BioNTech for COVID-19 vaccine patent infringement.”
- Reuters. (2023). “Amgen owes $1.1 bln in back taxes, US Tax Court rules.”
- Supreme Court of the United States. (2023). “Amgen Inc. v. Sanofi.”
- IPWatchdog.com. (2023). “Tillis, Coons Reintroduce Controversial Patent Eligibility Restoration Act.”
- Reuters. (2023). “US patent chief has power to review board decisions, court says.”
- Oyez. (2023). “Jack Daniel’s Properties, Inc. v. VIP Products LLC.”
- SCOTUSblog. (2023). “Justices curtail the global reach of U.S. trademark law.”
- The New York Times. (2023). “Hermès Wins Lawsuit Against Artist Behind ‘MetaBirkins’ NFTs.”
- Billboard. (2023). “Lizzo Wins ‘100% That Bitch’ Trademark Dispute.”
- EUIPO. (2023). “5 million EUTMs and counting: a story of success.”
- Lexology. (2023). “High Court Dismisses FERRARI’s Trademark Infringement Claim.”
- Reuters. (2022). “Apple, Broadcom must face new trial over $1.1 bln Caltech patent verdict.”
- Law360. (2022). “VLSI Wins $948M Patent Verdict Against Intel.”
- Ericsson. (2022). “Ericsson and Apple sign global patent license agreement.”
- Reuters. (2022). “Generic drugmakers score win as U.S. court nixes Injectafer patents.”
- European Patent Office. (2022). “Germany ratifies the Agreement on a Unified Patent Court.”
- Reuters. (2022). “U.S. Supreme Court rejects American Axle’s patent eligibility appeal.”
- Finnegan. (2022). “California Institute of Technology v. Broadcom Limited.”
- U.S. Patent and Trademark Office. (2022). “USPTO launches new pilot program to expedite examination of patent applications for first-time filers.”
- U.S. Patent and Trademark Office. (2022). “Vidal Sanctions OpenSky.”
- Senator Thom Tillis Official Website. (2022). “Tillis, Coons, Hirono, Cotton Introduce The Patent Eligibility Restoration Act of 2022.”
- The New York Times. (2022). “Hermès Is Suing an Artist Over His ‘MetaBirkins’ NFTs.”
- CNBC. (2022). “Nike is suing StockX over sneaker NFTs, alleging it’s infringing on its trademarks.”
- U.S. Copyright Office. (2022). “Second Request for Reconsideration for Refusal to Register A Recent Entrance to Paradise.”
- U.S. Patent and Trademark Office. (2022). “Shorter period for responding to trademark office actions.”
- World Trademark Review. (2022). “Inside the first expungement and reexamination petitions at the USPTO.”
- The Wall Street Journal. (2021). “Intel Ordered to Pay $2.18 Billion in Patent-Infringement Case.”
- Reuters. (2021). “Apple sues Ericsson over 5G patents, Ericsson files its own suit.”
- The New York Times. (2021). “Moderna and U.S. at Odds Over Vaccine Patent Rights.”
- Reuters. (2021). “Cisco’s $2.75 bln patent loss to Centripetal vacated by U.S. appeals court.”
- U.S. Patent and Trademark Office. (2021). “USPTO issues 11 millionth patent.”
- Oyez. (2021). “United States v. Arthrex, Inc.”
- SCOTUSblog. (2021). “Justices curb but decline to eliminate “assignor estoppel” in patent cases.”
- Reuters. (2021). “Fed Circuit reinstates $235 mln GSK win over Teva in ‘skinny label’ case.”
- U.S. Patent and Trademark Office. (2021). “Trademark Modernization Act.”
- Reuters. (2021). “Chanel loses EU court fight against Huawei over logo.”
- The Guardian. (2021). “Banksy loses trademark for his Flower Thrower artwork.”
- Reuters. (2020). “Cisco ordered to pay $1.9 billion in Centripetal Networks patent trial.”
- Reuters. (2020). “Broadcom, Apple must pay Caltech $1.1 billion in patent case: U.S. jury.”
- Reuters. (2020). “U.S. jury says Apple must pay PanOptis $506.2 million in patent trial.”
- Reuters. (2020). “Apple hit with $503 million patent verdict in VirnetX case.”
- U.S. Patent and Trademark Office. (2021). “USPTO’s COVID-19 response.”
- The Supreme Court of the United Kingdom. (2020). “Unwired Planet International Ltd and another (Appellants) v Huawei Technologies (UK) Co Ltd and another (Respondents).”
- Kluwer Patent Blog. (2020). “Sisvel vs. Haier: German Federal Court of Justice strengthens SEP holders’ position.”
- STAT News. (2020). “In a pivotal ruling, European authority reverses a key CRISPR patent.”
- Oyez. (2020). “Thryv, Inc. v. Click-To-Call Technologies, LP.”
- IPWatchdog.com. (2020). “PTAB Designates Fintiv as Precedential, Institutes IPR in Related Case Based on Stipulation.”
- Federal Circuit Bar Association. (2019). “Arthrex, Inc. v. Smith & Nephew, Inc. (Fed. Cir. 2019).”
- Congress.gov. (2020). “H.R.6196 – Trademark Modernization Act of 2020.”
- Oyez. (2020). “United States Patent and Trademark Office v. Booking.com B. V.”
- Oyez. (2020). “Romag Fasteners, Inc. v. Fossil, Inc.”
- Venable LLP. (2019). “Supreme Court Unanimously Holds That On-Sale Bar Applies to Confidential Sales.”
- IPWatch. (2019). “Supreme Court Affirms Federal Circuit in Helsinn, Secret Sales Can Invalidate a Patent.”
- Oyez. (2019). “Return Mail, Inc. v. United States Postal Service.”
- Rockridge Law. (2020). “Major IP Law Decisions of 2019.”
- Law360. (2019). “Fed. Circ. Wipes Out Fairchild’s Win In Power Integrations Row.”
- NPR. (2019). “Apple And Qualcomm Settle Bitter Legal Fight.”
- IPWatch. (2019). “Supreme Court Affirms Federal Circuit in Helsinn, Secret Sales Can Invalidate a Patent.” (duplicate)
- IPWatchdog. (2019). “USPTO Releases Final Version of Section 101 Guidance.”
- U.S. Patent and Trademark Office. (2019). “USPTO launches new PTAB pilot program for motions to amend.”
- Rockridge Law. (2020). “Major IP Law Decisions of 2019.” (second occurrence)
- IPWatchdog. (2019). “Supreme Court Rules Lanham Act’s ‘Immoral or Scandalous’ Bar is Unconstitutional.”
- U.S. Patent and Trademark Office. (2019). “USPTO requires foreign-domiciled trademark applicants and registrants to use a U.S.-licensed attorney.”
- U.S. Patent and Trademark Office. (2019). “Mandatory electronic filing for trademark applications and correspondence rule.”
- Ladas & Parry LLP. (2018). “US Supreme Court Upholds Constitutionality of IPR Proceedings in Oil States.”
- Law360. (2018). “High Court Says PTAB Must Rule On All Claims In IPRs.”
- Reuters. (2018). “U.S. court rejects Allergan’s tribal patent deal with Mylan.”
- U.S. Patent and Trademark Office. (2018). “Andrei Iancu sworn in as the new Under Secretary of Commerce for Intellectual Property and Director of the USPTO.”
- U.S. Patent and Trademark Office. (2018). “USPTO holds first public roundtable on exploring the legal contours of patent subject matter eligibility.”
- Reuters. (2018). “Starbucks fails to block ‘Charbucks’ coffee seller at top U.S. court.”
- U.S. Patent and Trademark Office. (2018). “USPTO issues final rule to protect customers from misleading solicitations.”
- U.S. Patent and Trademark Office. (2018). “Trademarks fiscal year 2018 performance and accountability report.”
- Morse. (2017). “2017 Year in Review: The Biggest IP Stories.”
- Law360. (2017). “The Biggest Patent Rulings Of 2017.”
- Ladas & Parry LLP. (2018). “US Supreme Court Upholds Constitutionality of IPR Proceedings in Oil States.” (duplicate)
- Cleary Gottlieb. (2017). “2017 Developments in Intellectual Property Law.”
- Syracuse University College of Law. (2017). “Matal v. Tam.”
- Wikipedia. “Defend Trade Secrets Act.”
- Thomson Reuters Westlaw. “Defend Trade Secrets Act of 2016 (DTSA).”
- The Business Litigators. (2016). “The Defend Trade Secrets Act of 2016.”
- American Bar Association. (2016). “The Defend Trade Secrets Act.”
- Hughes Hubbard & Reed LLP. (2016). “Federal Defend Trade Secrets Act of 2016.”
- U.S. Patent and Trademark Office. (2016). “USPTO Releases Update on its Enhanced Patent Quality Initiative.”
- U.S. Patent and Trademark Office. (2016). “Updated PTAB Trial Practice Guide.”
- Reuters. (2017). “U.S. top court lets ‘Google’ trademark stand.”
- WIPO. (2017). “International Patent Filings Set New Record in 2016, Strong Growth for Trademark Applications.”
- The National Law Review. (2015). “2015 IP Year in Review: Top Patent, Trademark, Copyright Cases.”
- Justia. (2015). “Commil USA, LLC v. Cisco Systems, Inc.”
- IPWatchdog. (2015). “2015 in Review: The Top 10 Patent Stories of the Year.”
- Jones Day. (2015). “Supreme Court Adopts Deferential Standard of Review for Factual Findings Underlying Patent Claim Construction.”
- U.S. Patent and Trademark Office. (2015). “2014 Interim Guidance on Patent Subject Matter Eligibility (Interim Eligibility Guidance).”
- Northwestern Pritzker School of Law. (2016). “The AIA Trial System at Year Four.”
- World Trade\mark Review. (2017). “Exclusive: USPTO reveals evidence of fraudulent or inaccurate trademark submissions ‘not an isolated problem’.”
- U.S. Patent and Trademark Office. (2015). “TEAS Plus new option for filing certain requests.”
- Finnegan. (2015). “Williamson v. Citrix Online, LLC (Fed. Cir. 2015) (en banc).”
