We are excited to share Sheppard Mullin’s inaugural quarterly report on key Federal Circuit decisions. The Spring 2023 Quarterly Report provides summaries of most key patent law-related decisions from January 1, 2023 to March 31, 2023.Continue Reading 2023 Federal Circuit Case Summaries
IP and Technology Transactions
Protecting Semiconductor Chip Design under the Semiconductor Chip Protection Act of 1984 (SCPA) – Part II (Infringement and Defense)
Mask Work Infringement
In analogizing semiconductor chips to traditional areas of copyright law, the legislative history notes that, just as a plagiarist who copies only one chapter of a book may be held liable for infringement, a person may be liable for copying a part of a mask work if it is a qualitatively important portion that results in substantial similarity.Continue Reading Protecting Semiconductor Chip Design under the Semiconductor Chip Protection Act of 1984 (SCPA) – Part II (Infringement and Defense)
Protecting Semiconductor Chip Design under the Semiconductor Chip Protection Act of 1984 (SCPA) – Part I (Registration and Inspection)
Understanding Mask Work
Mask work is a type of intellectual property protection designed to protect layout designs (topographies) of integrated circuits. It is authorized by the federal Semiconductor Chip Protection Act of 1984 (SCPA).Continue Reading Protecting Semiconductor Chip Design under the Semiconductor Chip Protection Act of 1984 (SCPA) – Part I (Registration and Inspection)
Historic $130m+ Patent Infringement Award Against the United States of America
A Sheppard Mullin trial team led by partners Brad Graveline and Laura Burson obtained one of the largest patent infringement damages awards against the United States of America for client SecurityPoint Holdings, Inc (SecurityPoint). Sheppard Mullin partner Don Pelto and associates Kazim Naqvi, Rebecca Mackin, and Tom Carr were also key members of the trial team. In addition, the Sheppard Mullin team included trial specialist Stephanie Limbaugh and legal assistants Dori Dellisanti and Ann Castro.
Continue Reading Historic $130m+ Patent Infringement Award Against the United States of America
Artificial Intelligence And Subject Matter Eligibility In U.S. Patent Office Appeals – Part Three Of Three
Note: First published in The Intellectual Property Strategist and Law.com.
This article is Part Three of a Three-Part Article Series
Artificial intelligence is changing industry and society, and metrics at the US Patent and Trademark Office (USPTO) reflect its impact. In a recent publication, the USPTO indicated that from 2002 to 2018 the share of all patent applications relating to artificial intelligence grew from 9% to approximately 16%. See “Inventing AI, Tracing the diffusion of artificial intelligence with U.S. patents,” Office of the Chief Economist, IP Data Highlights (October 2020). For the foreseeable future, patent applications involving artificial intelligence technologies, including machine learning, will increase with the continued proliferation of such technologies. However, subject matter eligibility can be a significant challenge in securing patents on artificial intelligence and machine learning.Continue Reading Artificial Intelligence And Subject Matter Eligibility In U.S. Patent Office Appeals – Part Three Of Three
Artificial Intelligence And Subject Matter Eligibility In U.S. Patent Office Appeals – Part Two Of Three
Note: First published in The Intellectual Property Strategist and Law.com.
This article is Part Two of a Three-Part Article Series
Artificial intelligence is changing industry and society, and metrics at the US Patent and Trademark Office (USPTO) reflect its impact. In a recent publication, the USPTO indicated that from 2002 to 2018 the share of all patent applications relating to artificial intelligence grew from 9% to approximately 16%. See “Inventing AI, Tracing the diffusion of artificial intelligence with U.S. patents,” Office of the Chief Economist, IP Data Highlights (October 2020). For the foreseeable future, patent applications involving artificial intelligence technologies, including machine learning, will increase with the continued proliferation of such technologies. However, subject matter eligibility can be a significant challenge in securing patents on artificial intelligence and machine learning.Continue Reading Artificial Intelligence And Subject Matter Eligibility In U.S. Patent Office Appeals – Part Two Of Three
Artificial Intelligence And Subject Matter Eligibility In U.S. Patent Office Appeals – Part One Of Three
Note: First published in The Intellectual Property Strategist and Law.com.
This article is Part One of a Three-Part Article Series
Artificial intelligence is changing industry and society, and metrics at the US Patent and Trademark Office (USPTO) reflect its impact. In a recent publication, the USPTO indicated that from 2002 to 2018 the share of all patent applications relating to artificial intelligence grew from 9% to approximately 16%. See “Inventing AI, Tracing the diffusion of artificial intelligence with U.S. patents,” Office of the Chief Economist, IP Data Highlights (October 2020). For the foreseeable future, patent applications involving artificial intelligence technologies, including machine learning, will increase with the continued proliferation of such technologies. However, subject matter eligibility can be a significant challenge in securing patents on artificial intelligence and machine learning.Continue Reading Artificial Intelligence And Subject Matter Eligibility In U.S. Patent Office Appeals – Part One Of Three
Waiver Of Intellectual Property Protections For COVID-19 Vaccine Unlikely To Have Meaningful Impact In Short Term
On Wednesday, May 7, 2021, the United States officially endorsed waiving intellectual property protections for COVID-19 vaccines. While the United States has taken the opposite position in recent months, the administration asserts that its departure is guided, at least in part, by the goal “to get as many safe and effective vaccines to as many people as fast as possible.”[1] That goal, however, is unlikely to be affected by such a waiver in the short term due to uncertainty in World Trade Organization (“WTO”) politics, ongoing shortages on raw materials and equipment, and lag-time in retrofitting potential manufacturers.
Continue Reading Waiver Of Intellectual Property Protections For COVID-19 Vaccine Unlikely To Have Meaningful Impact In Short Term
FTC v. Actavis: What Does It Mean for Reverse-Payment Settlements?
On June 17, 2013, the United States Supreme Court announced a rule that blurs the lines between antitrust and patent law in the context of Hatch-Waxman litigation. In FTC v. Actavis, 570 U.S. 756 (2013), the Federal Trade Commission (“FTC”) prevailed when the Supreme Court held in a 5-to-3 decision [1] that reverse payment settlements in Hatch-Waxman cases are subject to antitrust scrutiny, resolving a circuit split and impassioned debate among antitrust lawyers. This is only the second antitrust case in 20 years where the enforcers have prevailed. The Court, however, rejected the FTC’s position that reverse-payment settlements were presumptively illegal, ruling that they are subject to scrutiny under the rule of reason.Continue Reading FTC v. Actavis: What Does It Mean for Reverse-Payment Settlements?
Limiting Liability in Clinical Trials: Non-Lawyers, Lawyers Beware
Clinical trials are the lifeblood of biotech. Finding the right service providers (CROs, safety, IVRS, consultants, contract manufacturers and many others), as well as the right clinical investigators and sites, results in a complex web of legal obligations and potential liabilities. Limitation of liability clauses can reduce a party’s exposure if a contractual obligation is breached. More often, limitations of liability provisions are used to shift risk to the sponsor of the clinical trial. But, if your contracts are well negotiated and drafted, the risks can be carefully and fairly allocated between the parties in a balanced and reasonable manner. Because of the complexity of the legal relationships and liabilities found in clinical trials, this article is limited to a brief description of limitation of liability clauses, and their general strengths and weaknesses.Continue Reading Limiting Liability in Clinical Trials: Non-Lawyers, Lawyers Beware
For Artists with Original Works, It’s Buy Now or Pay Later
The pressure to cut production costs for media works is larger than ever. One expense that should not be slashed, however, is the expense of registering a copyright in the work soon after it is created — whether that work is a written script, motion picture, a television episode, a commercial or a song. Considering that the standard Copyright Office filing fee for registration is between $35 (if filing electronically) and $45 (if filing the old fashion way on paper, which many still do), registration arguably provides a substantial dollar- to-dollar return on investment.Continue Reading For Artists with Original Works, It’s Buy Now or Pay Later