May 22

MPH Sponsors CIPLA Judge’s Dinner

MPH Sponsors CIPLA Judge’s Dinner
May 11, 2017
Quinnipiack Club, New Haven, CT

McCormick, Paulding & Huber was pleased to sponsor the Connecticut Intellectual Property Law Association’s Judge’s Dinner on May 11, 2017 honoring Judge Jimmy Reyna of the Court of Appeals for the Federal Circuit.

April 29

MP&H Presenter of the 2017 Connecticut Invention Convention Patent Award

McCormick, Paulding & Huber was again the presenter of the Connecticut Invention Convention Patent Award to a deserving student inventor. Olivia Mullings (center) winner of the 2017 Patent Award, proudly poses with John Linderman of McCormick, Paulding & Huber right, and Deanne Bell, founder of the nonprofit Future Engineers and co-host of the CNBC TV show “Make me a Millionaire Inventor” left.

 

April 10

Supreme Court Declares Laches is Not a Defense to Patent Infringement Claims

Authors: Scott Lydon and Justin Durelli.

On March 21, 2017, the Supreme Court issued its opinion in SCA Hygiene Products Aktiebolag et al. v. First Quality Baby Products, LLC et al., 2017 U.S. LEXIS 2023 (2017), holding that the equitable defense of laches is not available as a defense against patent infringement claims. Until now, defendants were permitted to assert the laches defense against plaintiffs that unreasonably delayed bringing their lawsuit to the detriment of defendants.

SCA manufactures and sells adult incontinence products and owns U.S. Patent No. 6,375,646 (“the ‘646 patent”). In October of 2003, SCA sent a letter to First Quality alleging that First Quality was making and selling products that infringed the ‘646 patent, after which First Quality replied that the ‘646 patent was likely invalid over a prior art reference not cited during the prosecution of the ‘646 patent. In July of 2004, SCA voluntarily requested reexamination of the ‘646 patent in view of the recently discovered prior art. In March of 2007, the USPTO issued a certificate confirming the validity of the ‘646 patent. However, SCA did not file for patent infringement against First Quality until August of 2010, over three years after USPTO confirmed patentability of the patent and over six years after first communicating with First Quality about the ‘646 patent.

During the trial at the district court, First Quality successfully asserted the defense of laches against the claim of infringement of the ‘646 patent. SCA appealed to the Federal Circuit, where a panel of the Federal Circuit upheld the district court judgment that laches barred suit against First Quality. The full Federal Circuit agreed to hear the case en banc, and again the Federal Circuit affirmed the district court decision by a vote of 6-5.

The Supreme Court heard the case and reversed the Federal Circuit. In coming to its decision, the Supreme Court followed very similar reasoning as the reasoning the Court set forth in Petrella v. Metro-Goldwyn-Mayer, Inc., 134 S. Ct. 1962 (2014), which resolved the same laches issue presented in this case, but for copyright claims. The Court essentially found that Congress left no room for the “gap-filling” defense of laches when it enacted the six-years statute of limitations provision contained in 35 U.S.C. § 286 for patent claims. Rather, the Court held that Congress has already provided a rule for determining when a claim for infringement is timely and there is no authority for the availability of the laches defense.

The takeaway from this decision is that patentees are no longer under the threat of losing their claim against infringers simply because they waited too long to bring suit. While patentees will still be limited to collecting only the previous six years worth of damages, it may be in their best interest to wait to bring suit until it is more convenient or advantageous to do so. Accordingly, infringers will need to be more cautious of older patents or else risk liability.

April 10

Supreme Court Limits Exporting Liability Under the Patent Act for Component Suppliers

Authors: Scott Lydon and Justin Durelli.

On February 22, 2017, the Supreme Court issued its opinion in Life Technologies Corporation, et al. v. Promega Corporation, 137 S. Ct. 734 (2017), holding that exporting a single component of a multicomponent invention from the United States does not trigger patent infringement liability under 35 U.S.C. § 271(f)(1). § 271(f)(1) of the Patent Act creates liability for infringement for whoever “supplies or causes to be supplied in or from the United States all or a substantial portion of components of a patented invention” and actively induces the combination of those components outside the United States such that the combination would infringe the patent if it were combined within the United States.

Promega was the exclusive licensee of U.S. Reissue Patent No. 37,984 (“the Tautz patent”), which covers a kit including five components for testing DNA, and sublicensed the Tautz patent to Life Technologies for law enforcement fields only. Life Technologies manufactured one of the five components of the Tautz patent, the Taq polymerase, in the United States and then exported the single component to its manufacturing facility in the United Kingdom where it was combined with the remaining four components for assembly.

After learning that Life Technologies was selling the patented DNA testing kits in fields not authorized under the license agreement, Promega sued Life Technologies for infringement of the Tautz patent under § 271(f)(1). Although the jury returned a verdict for Promega, the district court granted Life Technologies’s motion for judgement as a matter of law on the basis that infringement cannot be had under § 271(f)(1) when only one component of the asserted patent is supplied from the United States. The district court ruled that § 271(f)(1)’s language of “a substantial portion of components” does not extend to a single component.

On appeal, the Federal Circuit reversed the district court’s ruling. The Federal Circuit reasoned that the term “substantial” in § 271(f)(1) may include qualitative meanings such as “important” or “essential.” Thus, the Federal Circuit held that § 271(f)(1) could impose liability on suppliers of even a single component in or out of the United States if the component was an important component of the patented invention.

However, the Federal Circuit’s interpretation of § 271(f)(1) was short-lived as the Supreme Court heard the case and reversed the Federal Circuit decision. The Supreme Court agreed with the Federal Circuit that the term “substantial” in isolation could have a quantitative or qualitative meaning, but decided that the term “substantial” has a quantitative meaning in the context of statute. The Supreme Court also held that the supplying of a single component of a multicomponent invention can never be a substantial portion of components within the meaning of § 271(f)(1).

The takeaway from the Court’s decision is that suppliers of only a single component of patented inventions into and out of the United States may continue to operate without fear of being held liable for infringement under § 271(f)(1). Suppliers of more than a single component will need to remain cautious that the quantity of supplied components does not amount to a substantial portion of components of patented inventions. Conversely, patent applicants may want to consider changing their prosecution strategy to remove any non-essential components from their claims so that it may be easier to show that components supplied by suppliers constitute a substantial portion of components of the claimed invention.

April 10

Supreme Court Uses its Imagination and Holds that Designs on Cheerleading Uniforms are Eligible for Copyright Protection

Authors: Scott Lydon and Christopher Messina.

In a 6-2 decision with Justice Thomas delivering the majority opinion, the Supreme Court held in Star Athletica LLC v. Varsity Brands, Inc., Varsity Spirit Corporation, and Varsity Spirit Fashions & Supplies, Inc., No. 15-866 that “pictorial, graphic, or sculptural features” as defined in 17 U.S.C. § 101 are eligible for copyright protection only if the feature:

1. can be perceived as a two- or three-dimensional work of art separate from the useful article; and
2. would qualify as a protectable pictorial, graphic, or sculptural work—either on its own or fixed in some other tangible medium of expression—if it were imagined separately from the useful article into which it is incorporated.

Because Varsity Brands’ uniform decoration designs would qualify as two-dimensional works of art if conceptually separated from the uniform and applied in another medium, such a painter’s canvas, they are protectable by copyright. Accordingly, while industrial designs, the uniforms themselves or other utility focused articles, like shovels, are not eligible for copyright protection—the combination, positioning and arrangement of the surface decorations, including chevrons, lines curves, stripes, angles, diagonals, inverted chevrons, coloring and shapes, satisfy the above eligibility test for copyright protection. The majority opinion also distinguished the protectable designs from the non-protectable shape, cut, and dimensions of a cheerleading uniform.

In concurring in the judgement but not the opinion, Justice Ginsburg held that the designs at issue are not designs of useful articles but rather copyrightable pictorial or graphic works reproduced on useful articles.

In dissent, Justice Breyer, joined by Justice Kennedy, expressed that Varsity Brands’ designs cannot be perceived as two- or three-dimensional works of art separate from the useful cheerleader uniform because the design elements make up the shape of the uniform. For articles where the form and function are inseparable, a design patent, and not copyright, would be a more appropriate means of protection.

A key takeaway from this case is that designs incorporated into useful articles can qualify for copyright protection. This may result in increased efforts to seek copyright protection for designs in the fashion and apparel industry.

May 11

Federal Trade Secret Protection – A New IP Regime

Authors: Scott Lydon and Christopher Messina.

Until now, trade secret cases have exclusively been decided under the laws of each state. However, the Defend Trade Secrets Act of 2016 (“DTSA”), signed into law today by President Obama, provides new federal protection for trade secrets. Going forward, this new federal protection should result in a national standard providing greater predictability of legal outcomes for trade secret cases.

While the new DTSA does not preempt existing state law, it provides additional federal protections in the form of ex-parte seizure orders, injunctive relief and monetary damages. The DTSA also provides safeguards against claims made in bad faith, and immunity to parties who disclose a trade secret to the government or an attorney for reporting a suspected violation of law.

May 11

Supreme Court Grants Review in Two IP Cases

Authors: Scott Lydon and Christopher Messina.

The Supreme Court decided to consider the following two intellectual property cases: (1) the patent case SCA Hygiene Products v. First Quality Baby Products, to determine whether latches remains a defense under the Patent Act; and (2) the copyright case Star Athletica LLC v. Varsity Brands, Inc., to determine whether stripes, chevrons, zigzags and color blocks on apparel can be protected by copyright law.

May 11

Recent Supreme Court Oral Arguments

Authors: Scott Lydon and Christopher Messina.

The Supreme Court heard oral arguments in Cuozzo Speed Technologies, LLC v. Michelle K. Lee, No. 15-446 on April 25th.

At issue is whether the Patent Trial and Appeal Board (“PTAB”) is correctly construing claims in an issued patent using their broadest reasonable interpretation rather than their plain and ordinary meaning. The narrower plain and ordinary meaning standard is used when construing claims in District Court litigation. A second issue, as a matter of separation of powers, is whether the Federal Circuit correctly held that PTAB decisions to institute inter partes review (IPR) are not judicially reviewable, even if the PTAB exceeds its statutory authority in instituting such proceedings. Currently, only a final written decision of the PTAB is reviewable by the Federal Circuit. 35 U.S.C. § 141(c).

May 10

MP&H and The Connecticut Invention Convention

McCormick, Paulding & Huber is proud to be a sponsor of The Connecticut Invention Convention (CIC).

The CIC is an organization that encourages critical thinking and creativity in grade schools throughout the State of Connecticut and beyond.  Each year students are requested to make an invention as a school project.  The top inventors from the participating schools attend a state convention to display their inventions in a friendly competition and receive awards recognizing their achievements.

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McCormick, Paulding & Huber has participated in the CIC since its inception over 30 years ago by providing judges for the competition and awarding a free patent search, patent filing and prosecution of a patent application for the recipient as pictured above.  MPH has procured patents for multiple CIC inventors, some of whom have started businesses based upon their invention.