Burden Of Proof To Establish Infringement Remains With The Patentee Even In Declaratory Judgment Action Brought By Licensee

Medtronic, Inc v Mirowski Family Ventures, LLC, 134 S Ct 843 (US 22 January 2014) Abstract The US Supreme Court unanimously reversed a previous determination by the US Court of Appeals for the Federal Circuit, holding that, even in a declaratory judgment action brought by a licensee, the burden of proving patent infringement remains with […]

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U.S. Supreme Court Holds That Claim Construction Is A Question Of Law But Underlying Factual Questions Are Subject To Clear Error Review

On January 20, 2015, the U.S. Supreme Court in Teva Pharms. USA, Inc. v. Sandoz, Inc., No. 13-854, vacated and remanded the Federal Circuit’s judgment related to the meaning of the term “molecular weight” in the patent-at-issue.  The Supreme Court upheld its previous holding in Markman v. Westview Instruments, Inc., 517 U.S. 370 (1996) that […]

US Supreme Court Relaxes Standards for Awarding Attorney Fees Under 35 USC 285 In Patent Suits

Octane Fitness, LLC v ICON Health & Fitness, Inc, 134 S Ct 1749 (US 2014) and Highmark Inc v Allcare Health Mgmt Sys, 134 S Ct 1744 (US 2014) Abstract On 29 April 2014 the US Supreme Court issued two companion decisions which overturned the long-standing jurisprudence of the US Court of Appeals for the […]

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Normalization of US Relations With Cuba Opens New Possibilities and Dangers to US Brand Owners

(December 19, 2014).  On December 17, 2014, President Obama announced that the United States would begin to normalize its diplomatic relations with Cuba.  This dramatic reversal of the more than 50 years of hostility between the two countries has not been completely unheralded.  For example, following the withdrawal of subsidies from the Soviet Union after […]

ARE Patent Law Alert: USPTO Issues Preliminary Examination Instructions In View of Supreme Court Decision in Alice Corporation Pty. Ltd. v. CLS Bank Int’l, et al.

In view of the U.S. Supreme Court’s recent decision in Alice Corporation Pty. Ltd. v. CLS Bank Int’l, et al., No. 13-298, 573 U.S. __ (June 19, 2014), holding that the claims of a computer-implemented invention drawn to nothing more than an abstract idea are not patent-eligible under 35 U.S.C. § 101, the United States […]

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USPTO Issues Interim Guidance on Patent Subject Matter Eligibility

The U.S. Patent and Trademark Office has finally issued its new 2014 Interim Guidance on Patent Subject Matter Eligibility (Interim Eligibility Guidance). (See http://www.uspto.gov/patents/law/exam/interim_guidance_subject_matter_eligibility.jsp). This Interim Eligibility Guidance is subject to notice and comment, but supersedes prior guidance issued after the Mayo and Myriad decisions and supplements the prior Preliminary Instructions issued after the Alice […]

ARE Copyright Law Alert: Supreme Court Finds Aereo Performs Copyrighted Works Publicly As Prohibited Under The Copyright Act

On June 25, 2014, the U.S. Supreme Court, in a 6-3 decision, reversed the Court of Appeals for the Second Circuit and found that Aereo, Inc.’s system of rebroadcasting television over the internet was a “public performance” of copyrighted works and a violation of the Copyright Act of 1976.  American Broadcasting Companies, Inc., et al. […]

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International Trade Commission ALJ Finds No Standing For Non-Practicing Entity With Only Revenue Driven License Agreements

In a recent Initial Determination, an administrative law judge (“ALJ”) of the International Trade Commission held that a non-practicing entity did not meet the domestic industry requirement necessary to maintain an ITC proceeding where its business model revolves solely around licensing of its patents for revenue.  In the Matter of Certain Optical Disc Drives, Components […]

ARE Patent Law Alert:Federal Circuit In Lighting Ballast Confirms De Novo Claim Construction Standard of Review

For the first time in over 8 years since the court’s decision in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc), the full United States Court of Appeals for the Federal Circuit has issued an en banc decision on claim construction. In Lighting Ballast Control LLC v. Philips Elecs. N. Am. […]

Brief of New York Intellectual Property Law Association as Amicus Curiae in Support of Neither Party: Highmark Inc.,. v. Allcare Health Management Systems, Inc., (U.S. Dec. 09, 2013)

Click to download PDF: "Brief of New York Intellectual Property Law Association as Amicus Curiae in Support of Neither Party: Highmark Inc.,. v. Allcare Health Management Systems, Inc., (U.S. Dec. 09, 2013)"