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IP Newsletter - June/July 2020

Ideas on Intellectual Property Law

Look before you leap
Foreign publication leads to patent invalidation
Even after a patent is granted, an owner can find the patent’s validity challenged if it hasn’t thoroughly searched for “prior art.” That’s what happened to one telecommunications company: in an inter partes review (IPR) proceeding, the competitor alleged that prior art anticipated the invention, invalidating the patent. This article highlights a case that illustrates the low standard for the admission of late evidence in IPR proceedings and provides guidance on when a printed publication qualifies as potentially invalidating prior art. A short sidebar discusses the plaintiff’s claim that, even if the prior art was publicly available at the relevant time, it actually “taught away” from the patented invention.
Telefonaktiebolaget LM Ericsson v. TCL Corp., No. 18-801, Nov. 7, 2019, Fed. Cir.

Prescription for copyright protection: Register stat!
Copyright protection generally takes effect as soon as an original work is created, but it might not be as extensive as some think. To get the full protection, including the ability to sue for infringement, the work must be registered with the U.S. Copyright Office — ASAP. This article covers a recent case in which the copyright holder learned the risks of delaying registration the hard way.
Southern Credentialing Support Svcs., LLC v. Hammond Surgical Hosp., LLC, No. 18-31169, Jan. 9, 2020, 5th Cir.

Attorneys’ fees awards in trademark cases
Appellate court lowers the bar
When most people think about what it takes to qualify as “exceptional,” they probably imagine a fairly high bar. That’s not how the U.S. Court of Appeals for the Seventh Circuit sees it, though — at least when it comes to the standard for awarding attorneys’ fees to prevailing defendants in trademark litigation. This article discusses a recent trademark law case, in which the court joined most federal courts of appeal in applying a looser test in the wake of a 2014 U.S. Supreme Court ruling, which had arisen in a patent case.
LHO Chicago River, LLC v. Perillo, No. 19-1848, Nov. 8, 2019, 7th Cir.

Supreme Court slaps down PTO pursuit of attorneys’ fees
The U.S. Supreme Court has weighed in on a new U.S. Patent and Trademark Office (PTO) practice when patent applicants appeal adverse decisions in district court. This article reviews why the Court’s conclusion is welcome news for applicants who want to go this route to contest the denial of their applications.
Peter v. NantKwest, Inc., No. 18-801, Dec. 11, 2019, U.S.

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