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Jonathan DeFosse

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Jonathan DeFosse is a partner in the Intellectual Property Practice Group in the firm's Washington, D.C. office.

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December 1, 2020 marked the five-year anniversary of the Supreme Court’s abrogation of Form 18—the model complaint that provided the minimum requirements for stating a claim of direct infringement.  Following the abrogation of Form 18, patent infringement claims must satisfy the plausibility standard articulated in Bell Atlantic Corp. v. Twombly, 550 U.S. 544 (2007) and Ashcroft v. Iqbal, 556 U.S. 662 (2009).  Courts, however, have diverged in applying Iqbal and Twombly to patent cases.  As a result, pleading standards now vary from jurisdiction-to-jurisdiction (and even from judge-to-judge within the same jurisdiction).

In a series of blog posts, we are exploring how courts are applying the Iqbal/Twombly pleading standards to patent cases five years after Form 18 was abrogated.  In Part 1, we examined Federal Circuit opinions, including the seeming inconsistencies among those opinions.  In this installment, we look at how pleading standards have been applied in the District of Delaware.
Continue Reading Patent Infringement Pleading Standards Remain Unsettled Five Years After the Abrogation of Form 18 – Part 2: Pleading Standards in Delaware

December 1, 2020 will mark the five-year anniversary of the Supreme Court’s abrogation of Form 18—the model complaint that provided the minimum requirements for stating a claim of direct infringement.  Following the abrogation of Form 18, patent infringement claims must satisfy the plausibility standard articulated in Bell Atlantic Corp. v. Twombly, 550 U.S. 544 (2007) and Ashcroft v. Iqbal, 556 U.S. 662 (2009).  Courts, however, have diverged in applying Iqbal and Twombly to patent cases.  As a result, pleading standards now vary from jurisdiction-to-jurisdiction (and even from judge-to-judge within the same jurisdiction).

In a series of blog posts, we will explore how courts are currently applying the Iqbal/Twombly pleading standards to patent cases.  In this first installment, we look at Federal Circuit opinions issued since the abrogation of Form 18.  These decisions arguably raise as many questions as they answer.
Continue Reading Patent Infringement Pleading Standards Remain Unsettled Five Years After the Abrogation of Form 18 – Part 1: Inconsistent Federal Circuit Guidance

PART 4:  INTELLECTUAL PROPERTY LEGISLATION TO WATCH IN 2020

In this four-part series, we take a look forward at the cases, legislation, and other trends that are likely to have a significant impact on intellectual property law and practice in 2020.  In the first three parts of the series, we looked at the IP issues currently pending before the Supreme Court, possible changes to the law of patent eligibility, and hot topics surrounding inter partes review proceedings.  In this last part of our series, we look at proposed legislation related to intellectual property issues.  In particular, we consider:

  • The “Inventor Rights Act,” which would establish protections for “inventor-owned patents,” including a prohibition on USPTO reexamination of such patents without the patentee’s consent;
  • The Copyright Alternative in Small-Claims Enforcement (“CASE”) Act of 2019, which would establish a small claims tribunal within the Copyright Office to address copyright disputes involving less than $30,000 in damages;
  • The Counterfeit Goods Seizure Act of 2019, which would authorize the U.S. Customs and Border Protection Agency to seize counterfeit articles that infringe a design patent; and
  • The Trademark Modernization (“TM”) Act of 2020, which would establish new ex parte procedures in the USPTO to expunge trademarks obtained based on false claims that the marks were used in commerce.

Continue Reading Intellectual Property Outlook: Cases and Trends to Follow in 2020 — PART 4

In its March 13, 2020 decision in Communications Test Design, Inc. v. Contec, LLC, the Federal Circuit highlighted the obstacles that an accused infringer faces in filing a declaratory judgment action.  In particular, the Federal Circuit held that district courts may refuse to hear declaratory judgment actions filed while licensing negotiations are ongoing.  The court reasoned that dismissing such cases is consistent with the policy of promoting “extrajudicial dispute resolution.”  Ironically, however, the decision in Communications Test Design is likely to have the opposite effect—discouraging alleged infringers from entering into negotiations for fear of losing the ability to file a declaratory judgment action. The decision is also likely to place more control of both the negotiations and litigation in the hands of the patent owner.
Continue Reading Federal Circuit Makes It More Difficult for Accused Infringers to File Declaratory Judgment Actions

PART 3: HOT TOPICS RELATED TO INTER PARTES REVIEW

In this four-part series, we take a look forward at the cases, legislation, and other trends that are likely to have a significant impact on intellectual property law and practice in 2020.  In the first two parts of the series, we looked at the IP issues currently pending before the Supreme Court and possible changes to the law of patent eligibility.

In this third part of the series, we look at several issues related to inter partes review proceedings that we expect to be hot topics in 2020, including:

  • Whether the appointment of Administrative Patent Judges on the Patent Trial and Appeal Board (the “PTAB”) violates the Appointments Clause of the Constitution;
  • Whether the PTAB will allow a greater number of claim amendments under the Pilot Program announced in March 2019;
  • Whether the deadline to file an IPR petition should continue to run when an infringement case is dismissed without prejudice;
  • Whether invalidation of patent claims in an IPR should retroactively annul district court decisions on infringement and validity; and
  • Whether the PTAB will be able to coherently apply the new standard for identifying real-parties-in-interest.

Continue Reading Intellectual Property Outlook: Cases and Trends to Follow in 2020 — PART 3

PART 2: EFFORTS TO CLARIFY PATENT ELIGIBILITY UNDER § 101

In this four-part series, we take a look forward at the cases, legislation, and other trends that are likely to have a significant impact on intellectual property law and practice in 2020. The first part of the series – looking at IP issues currently pending before the Supreme Court – can be found here.

In this second part of the series, we look at possible developments in the law of patent eligibility under 35 U.S.C. § 101. Since the Supreme Court’s decisions in Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66 (2012), and Alice Corp. v. CLS Bank International, 573 U.S. 208 (2014), patent eligibility has likely been the single most confounding and controversial issue in the area of patent law. In this article, we consider:

  • The current state of patent eligibility since the decisions in Mayo and Alice;
  • Efforts to get the Supreme Court to address § 101 again;
  • The growing trend of avoiding § 101 issues through artful pleading;
  • Whether courts will return to a modified version of the “machine-or-transformation” test as a way to ensure patentability of “physical” inventions; and
  • Potential legislative “fixes” to patent eligibility.
    Continue Reading Intellectual Property Outlook: Cases and Trends to Follow in 2020 — PART 2

PART 1: IP ISSUES CURRENTLY PENDING BEFORE THE SUPREME COURT

In the first part of our series, we briefly summarize the intellectual property issues that the Supreme Court has already agreed to address in 2020. In particular, we provide a brief overview and key takeaways for the Supreme Court’s consideration of:

  • Whether adding “.com” to a generic mark creates a protectable trademark;
  • The scope of appeals from IPR proceedings;
  • The ability to copyright software interfaces;
  • Requirements for recovering an infringer’s profits in trademark cases;
  • State sovereign immunity from copyright infringement claims; and
  • Copyright protection for state law annotations.

Continue Reading Intellectual Property Outlook: Cases and Trends to Follow in 2020 – PART1