Since the inception of the Patent Trial and Appeal Board (“PTAB”) in 2012, design patents obtained a higher rate of favorable results in Inter Partes Reviews (“IPRs”) and Post Grant Reviews (“PGRs”) than utility patents. For...more
On May 21, 2024, the U.S. Court of Appeals for the Federal Circuit, sitting en banc, overruled more than 40 years of precedent defining the design patent obviousness standard. The decision eliminates the Rosen-Durling test,...more
For the first time in over five years, the US Court of Appeals for the Federal Circuit will be hearing a patent case en banc. The Court has agreed to hear LKQ Corporation v. GM Global Technology Operations LLC, which...more
Last year, in our inaugural issue of “The Year in Review,” we reported that since the landmark jury verdict in the IP litigation between Apple and Samsung in 2012, which awarded more than $1B to Apple for infringement of...more
2/22/2023
/ Appeals ,
Design Patent ,
Intellectual Property Litigation ,
Intellectual Property Protection ,
International Trade Commission (ITC) ,
Patent Applications ,
Patent Infringement ,
Patent Litigation ,
Patent Registration ,
Patent Trial and Appeal Board ,
Patents
Last year, in our inaugural issue of “The Year in Review,” we reported that since the landmark jury verdict in the IP litigation between Apple and Samsung in 2012, which awarded more than $1B to Apple for infringement of...more
2/21/2023
/ Anticipation ,
Appeals ,
Article of Manufacture ,
Australia ,
Chile ,
China ,
Claim Construction ,
Damages ,
Design Patent ,
EU ,
Exclusion Orders ,
Final Written Decisions ,
Foreign Patent Applications ,
India ,
Injunctive Relief ,
Intellectual Property Litigation ,
Intellectual Property Protection ,
Inter Partes Review (IPR) Proceeding ,
International Trade Commission (ITC) ,
Jury Verdicts ,
Likelihood of Success ,
Motion to Dismiss ,
Noninfringement ,
Obviousness ,
Patent Applications ,
Patent Infringement ,
Patent Invalidity ,
Patent Litigation ,
Patent Registration ,
Patent Trial and Appeal Board ,
Patents ,
Precedential Opinion ,
Prior Art ,
Remedies ,
Reversal ,
Section 337 ,
Settlement Agreements ,
Summary Judgment ,
The Hague System ,
Trade Dress ,
United Arab Emirates (UAE) ,
USPTO
This year, we will mark the 10-year anniversary of the first jury verdict in the landmark IP litigation between Apple and Samsung, which resulted in the jury awarding more than $1B to Apple. More than $500M of that award was...more
3/3/2022
/ Appeals ,
Corporate Counsel ,
Design Patent ,
Intellectual Property Litigation ,
Intellectual Property Protection ,
International Trade Commission (ITC) ,
Patent Infringement ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Utility Patents
This year, we will mark the 10-year anniversary of the first jury verdict in the landmark IP litigation between Apple and Samsung, which resulted in the jury awarding more than $1B to Apple. More than $500M of that award was...more
3/2/2022
/ Anticipation ,
Appeals ,
Article of Manufacture ,
Australia ,
Cease and Desist Orders ,
China ,
Design Patent ,
EU ,
Exclusion Orders ,
Final Written Decisions ,
Foreign Patent Applications ,
Injunctive Relief ,
Intellectual Property Litigation ,
Intellectual Property Protection ,
Inter Partes Review (IPR) Proceeding ,
International Trade Commission (ITC) ,
Korea ,
Nexus ,
Nonobvious ,
Ornamental Design ,
Patent Applications ,
Patent Filings ,
Patent Infringement ,
Patent Invalidity ,
Patent Litigation ,
Patent Registration ,
Patent Trial and Appeal Board ,
Patents ,
Post-Grant Review ,
Precedential Opinion ,
Prior Art ,
Remand ,
Reversal ,
Section 102 ,
Section 103 ,
Section 337 ,
Substantial Evidence ,
Summary Judgment ,
The Hague System ,
USPTO ,
Utility Patents ,
Vacated
In conjunction with the forthcoming release of the firm's inaugural year-in-review report, speakers will offer case summaries and analysis of particularly significant design patent updates and trends. Specifically, the...more
2/23/2022
/ Design Patent ,
Intellectual Property Protection ,
International Trade Commission (ITC) ,
Patent Applications ,
Patent Infringement ,
Patent Litigation ,
Patent Prosecution ,
Patent Trial and Appeal Board ,
Patents ,
USPTO ,
Webinars
While petitioners are successful at least 60% of the time in getting the PTAB to institute trial on patents in the biotech, chemical, electrical/computer, mechanical, and business method arts, that is not the case for design...more
Powerful. Resilient. Ever-evolving. These characteristics of the Patent Trial and Appeal Board (PTAB) were on full display in 2019. This past year the PTAB received more than 1,300 inter partes review (IPR), post grant review...more
3/5/2020
/ Claim Construction ,
Concurrent Litigation ,
Constitutional Challenges ,
Corporate Counsel ,
Covered Business Method Proceedings ,
Design Patent ,
Estoppel ,
Evidentiary Standards ,
Inter Partes Review (IPR) Proceeding ,
Motion to Amend ,
Motion To Stay ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Post-Grant Review ,
Trial Practice Guidance
The July 2018 issue of Sterne Kessler's The Goods on IP® discusses developments on copyright infringement lawsuit timing, prosecuting consumer product claims that include conjunctive limitations, and an update on membership...more
8/1/2018
/ Canada ,
Claim Construction ,
Consumer Product Companies ,
Copyright ,
Copyright Infringement ,
Design Patent ,
Foreign Patent Applications ,
Patent Applications ,
Patent Trial and Appeal Board ,
Patents ,
The Hague System ,
USPTO
The April 2018 issue of Sterne Kessler's The Goods on IP® discusses prosecuting consumer product claims that include “process” limitations, the doctrine of aesthetic functionality in design patents, and issues with licensee...more
The aesthetic-functionality doctrine is a concept in trademark law that can preclude trademark protection for elements of trade dress deemed to be aesthetically pleasing; the doctrine can come into play when a trade dress...more
The January 2018 issue of Sterne Kessler's The Goods on IP® discusses interesting patent marking considerations for consumer product companies, including a recent Federal Circuit case involving licensee marking. This issue...more
While petitioners are successful over 60% of the time in getting the PTAB to institute trial on patents in the biotech, chemical, electrical/computer, mechanical, and business method arts, that is not the case for design...more
The PTAB Strategies and Insights Newsletter is designed to be a valuable resource for all stakeholders in the global patent arena throughout the patent life cycle. To that end, articles will provide perspectives from both...more
1/18/2018
/ § 315(b) ,
Administrative Procedure Act ,
Appeals ,
Design Patent ,
Due Process ,
En Banc Review ,
Inter Partes Review (IPR) Proceeding ,
Non-Appealable Decisions ,
Notice Requirements ,
Patent Trial and Appeal Board ,
Patents ,
Real Party in Interest ,
Time-Barred Claims ,
USPTO
Proving that damages for design patent infringement can still be significant, Columbia Sportswear Co. was awarded more than $3 million last month by a California jury in a design patent infringement lawsuit against Seirus...more
The October 2017 issue of Sterne Kessler's The Goods on IP® discusses using your utility patent portfolio to expand design protection, tips for aligning your consumer product European patent portfolio with U.S. best...more
Just when it seemed that we might have finally reached the end of the epic battle between Apple and Samsung in what was once called the “patent trial of the century,” the District Court for the Northern District of California...more
8/4/2017
/ 35 U.S.C. § 289 ,
Apple v Samsung ,
Article of Manufacture ,
Calculation of Damages ,
Damages ,
Design Patent ,
Disgorgement ,
Patent Infringement ,
Patent Litigation ,
Patents ,
Remand
The July 2017 issue of Sterne Kessler's The Goods on IP discusses thinking like an Examiner to move prosecution forward, the wide variety of consumer product companies using design patents to protect their valuable product...more
As of January 2017, the institution rate for Patent Trial and Appeal Board trials involving design patents was 37 percent. That is significantly lower than every other technology area and makes design patents the only...more
5/25/2017
/ Biotechnology ,
Design Patent ,
Obviousness ,
Patent Examinations ,
Patent Trial and Appeal Board ,
Patent Validity ,
Patents ,
Pharmaceutical Patents ,
Post-Grant Review ,
Prior Art ,
Priority Patent Claims ,
USPTO
In 2011, Apple sued Samsung in the U.S. District Court for the Central District of California (Apple Inc. v. Samsung Electronics Co., Ltd.) alleging that several Samsung smartphones infringed utility and design patents owned...more
5/23/2017
/ Apple v Samsung ,
Article of Manufacture ,
Calculation of Damages ,
Cell Phones ,
Component Parts Doctrine ,
Consumer Product Companies ,
Damages ,
Design Patent ,
Disgorgement ,
Patent Infringement ,
Patent Litigation ,
Patents ,
Profits ,
Remand ,
SCOTUS ,
Smartphones
The July 2016 issue of Sterne Kessler's Mark It to MarketTM newsletter discusses an upcoming SCOTUS design patent case, In One Nation Enterprises and stylization of a descriptive term, and currently open gTLD Sunrise...more
Decision Date: August 7, 2015 -
Court: U.S. Court of Appeals for the Federal Circuit -
Patent: D661,801; D661,802; D661,803; D661,804 -
Holding: Summary judgment of invalidity REVERSED; claim construction...more
The September issue of Sterne Kessler's MarkIt to Market™ newsletter discusses considerations when filing a petition under the USPTO pilot program, outlines what you should know when protecting a trademark for wearable...more