Hottest IP Topics of 2024
Hottest IP Topics of 2024
(1) No more agency deference. The Loper Bright Enterprises v. Raimondo Supreme Court decision made headlines by overruling what was known as Chevron deference, where courts would give deference to Federal agencies’ permissible statutory interpretations. How this plays out regarding ITC and USPTO interpretations remains to be seen, but count on this: The challenges are coming.
(2) Design patents are now subject to the KSR obviousness test. In the en banc case of LKQ Corp. v. GM Global Technology Operations LLC, the Federal Circuit overruled the previous Rosen-Durling test that required a primary reference in the obviousness analysis to be “basically the same” as the claimed design. Instead, the Federal Circuit adopted a more flexible approach, influenced by the Supreme Court’s KSR International Co. v. Teleflex Inc. decision, which advocates for a less rigid analysis in patent obviousness cases. The LKQ analysis still begins with identifying a “primary reference,” which is the closest prior art to the claimed design. But the Federal Circuit discarded the requirement that the primary and secondary references must be “so related.” Instead, courts can now consider secondary references instead if there is a reasoned justification, supported by the record, that an ordinary designer would have combined the features from these references to achieve the claimed design. This change aims to align the obviousness tests for design patents with the utility patents test, emphasizing an evaluation of obviousness based on the overall visual impression created by the design.
(3) Striking a blow in favor of patentable subject matter. In Contour IP Holding LLC v. GoPro, Inc., the Federal Circuit reversed a district court’s finding that Contour’s patent claims were ineligible under 35 U.S.C. § 101. The issue revolved around Contour’s claims for point-of-view (POV) cameras, which included a technology allowing cameras to simultaneously generate and transmit two streams of video: a high-quality version saved locally and a lower-quality version transmitted to a remote device for real-time adjustments. The district court originally ruled these claims as patent ineligible, asserting they were directed towards the abstract idea of creating and transmitting video at two resolutions.
The Federal Circuit disagreed, emphasizing that the claims involved a specific technological improvement rather than a mere abstract idea. The court highlighted that the dual-streaming feature addressed specific issues like bandwidth limitations in real-time video transmission, thereby providing a concrete technological solution to a technological problem. This decision underscores the value in adopting a problem solution-drafting framework in both application and response drafting, explicitly arguing how the claimed improvements improve upon the prior art.
(4) Even continuation claims require a full claim construction. A district court relied on expert testimony to determine that it could interpret claims in a continuation application in the same way they’d been interpreted in an earlier litigation. The Federal Circuit reversed, stating, “[T]he district court erred by ignoring the relevant intrinsic evidence and turning directly to the extrinsic evidence in determining that the receiver claims asserted in this case have materially the same scope as the claims that were at issue in [the earlier case].” The lesson here: Every court case or claim chart needs to undergo the same rigorous intrinsic evidence inquiry when interpreting the claims.
(5) Proper names can’t be trademarked: “Trump too small.” This unanimous Supreme Court case was not controversial but serves as a good reminder. The First Amendment isn’t an exception to the Lanham Act’s names clause: “No trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it… [c]onsists of or comprises a name, portrait, or signature identifying a particular living individual except by his written consent, or the name, portrait, or signature of a deceased President of the United States during the life of his widow, if any, except by the written consent of the widow.” Stated simply, you can’t register trademarks that include other people’s names, even famous ones, and even government actors.
(6) Changes in patent laws proceeding slowly. The PREVAIL act advanced out of committee, while the RESTORE and PERA acts are now (and still) in committee. The PREVAIL Act aims to reform the Patent Trial and Appeal Board (PTAB) procedures to better protect patent owners from repetitive and potentially harassing challenges to their patents. The proposed legislation requires that challengers to patents have standing, meaning they must have been sued or threatened with a lawsuit over the patent before they can file a challenge at the PTAB. It also seeks to restrict the filing of multiple challenges against the same patent, align the burden of proof at the PTAB with that in federal district courts, and enhance transparency in PTAB operations. The act aims to make the patent dispute process fairer, reduce the invalidation rate of patents at PTAB, and encourage investment in innovation by securing patent rights.
The RESTORE act would partially reverse eBay Inc. v. MercExchange, L.L.C., that required courts to apply a four-factor test considering irreparable harm, adequacy of monetary damages, balance of hardships, and the public interest in determining whether to enter an injunction upon finding infringement. Under the RESTORE act, infringers must show how the factors do not apply, shifting the burden from patent holders to infringers.
The PERA act continues to try to bring order to the Force, and restore patentable subject matter eligibility to, if not something like its pre-Alice standard, then at least more like what the European Patent Office has adopted. Fingers crossed.