In 2010, Trading Technologies International, Inc. (“TT”) filed suit against IBG LLC and its subsidiary Interactive Brokers LLC for patent infringement. The four patents in question, U.S. Patent Nos. 6,766,304; 6,772,132; 7,676,411; and 7,813,996 — were related and directed to graphical user interfaces used by commodity traders. TT alleged that IBG’s software, TWS BookTrader, which is used by traders to buy and sell on exchanges, infringed its patents.Continue Reading Federal Circuit Applies WesternGeco Framework to Expert’s Effort to Seek Royalties Flowing from Customers Overseas

In CyWee Group LTD. V. ZTE (USA), Inc., No. 21-1855 (Fed. Cir. 2024), ZTE filed an IPR petition against U.S. Patent No. 8,441,438 (the ’438 patent) owned by CyWee, which the Patent Trial and Appeals Board (“the Board”) instituted. LG later filed a separate IPR petition also challenging the ’438 patent and moved to join ZTE’s IPR. LG acknowledged that its IPR petition was untimely under 35 U.S.C. § 315(b) because CyWee sued LG more than a year before LG filed its petition. LG premised its request for joinder on several limitations, the most relevant of which was that LG would act only as a passive understudy and not assume an active role in the IPR unless ZTE ceased to participate in the instituted IPR.Continue Reading Navigating Revised Motions to Amend in Inter Partes Review as a Non-active, Joined Party

In recent years, a substantial number of “Schedule A” trademark infringement cases have been filed in the Northern District of Illinois. In such a case, the trademark owner may file a trademark infringement complaint against a number of defendants, with the complaint identifying the defendants as “The Individuals, Corporations, Limited Liability Companies, Partnerships and Unincorporated Associations Identified on Schedule A hereto.” [See, e.g., Opulent ComplaintContinue Reading How to Recover Attorneys’ Fees in a Schedule A Trademark Case in the Northern District of Illinois

In BBK Tobacco & Foods LLP v. Cent. Coast Agric., Inc., 97 F.4th 668 (9th Cir. 2024), the Ninth Circuit Court of Appeals held that federal district courts have power to adjudicate trademark applications pursuant to the Lanham Act, 15 U.S.C. § 1119, provided that the litigation involves infringement of a registered trademark.Continue Reading Divided 9th Circuit Says District Court Has Power to Adjudicate TM Applications

The USPTO issued guidance on February 6, 2024 that clarified existing rules and policies and discussed how to apply them when AI is used in the drafting of submissions to the Patent Trial and Appeal Board (PTAB) and Trademark Trial and Appeal Board (TTAB). As a follow up, the USPTO has now published additional guidance in the Federal Register on some important issues that patent and trademark professionals, innovators, and entrepreneurs must navigate while using artificial intelligence (AI) in matters before the USPTO. The guidance recognizes that practitioners use AI to prepare and prosecute patent and trademark applications. It reminds individuals involved in proceedings before the USPTO of the pertinent rules and policies, identifies some risks associated with the use of AI, and provides suggestions to mitigate those risks. It states that while the USPTO is committed to maximizing AI’s benefits, the USPTO recognizes the need, through technical mitigations and human governance, to cabin the risks arising from the use of AI in practice before the USPTO. The USPTO has determined that existing rules protect the USPTO’s ecosystem against such potential perils and thus no new rules are currently being proposed.Continue Reading USPTO Issues Additional Guidance on Use of AI Tools in Connection with USPTO Matters

The United States Patent and Trademark Office (“USPTO”) and the United States Copyright Office (“USCO”) delivered a report to Congress entitled Non-Fungible Tokens and Intellectual Property on March 12, 2024 (“Report”). While the Report is comprehensive, it does not recommend any new action to address IP issues with NFTs.Continue Reading The USPTO and USCO Delivered a Report to Congress on IP Issues with NFTs – Maintains Existing IP Regime

In University of South Florida Board of Trustees v. United States,[1] the Federal Circuit rejected a strict temporal limitation on when the Government’s license rights in patents stemming from federally funded research is triggered under the Bayh-Dole Act. Specifically, where a recipient of federal funds subcontracts out work to be performed using those federal funds and the subcontractor reduces an invention to practice, the Government’s license rights can be triggered by that reduction to practice even if no formal subcontractor agreement was in place between the fund recipient and subcontractor at the time of reduction to practice.Continue Reading Federal Circuit Weighs in on Temporal Rigidity of the Bayh-Dole Act’s Licensing Provisions

In Weber, Inc. v. Provisur Techs., Inc., Nos. 2022-1751, 2022-1813 (Fed. Cir. Feb. 8, 2024), the Federal Circuit reversed the Patent Trial and Appeal Board’s legal conclusion that Weber’s operating manuals were not prior art printed publications based on the public accessibility of the operating manuals.Continue Reading Federal Circuit Concluded that Operating Manuals Subject to Confidentiality Restrictions are Prior Art Printed Publications

EcoFactor, Inc. is the holder of U.S. Patent No. 8,498,753, titled “System, Method and Apparatus for Just-In-Time Conditioning Using a Thermostat,” which focuses on optimizing climate control systems, particularly HVAC systems, in residential and commercial buildings. The patented technology utilizes a thermostat that considers external weather conditions and the thermal characteristics of individual structures to dynamically adjust temperature settings, aiming to improve energy efficiency and comfort. Within Claim 1, a method is outlined for decreasing the cycling time of a climate control system, comprising steps such as accessing historical temperature data, determining thermal performance values, and calculating the optimal activation time for the system based on various inputs.Continue Reading Federal Circuit Rules on when the Patent Trial and Appeal Board is Engaging in Erroneous Claim Construction