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. This “substantial similarity” test has been applied in cases like Brooktree Corp. v. Advanced Micro Devices, Inc., 977 F.2d 1555 (Fed. Cir. 1992). In Brooktree, the court stated that “If the copied portion [of the mask work] is qua ..read more

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). The SCPA legally protects layouts of integrated circuits upon registration, making them illegal to copy without permission. Under the SCPA, a mask work is a series of related images that forms a design or part of a design used to produce an integrated circuit. Registration of a mask work with the Copyright Office provides certain legal benefits, including the ab ..read more

In its recent decision in Caltech v. Broadcom Limited, et al,[1] the Federal Circuit expanded the scope of Inter Partes Review (“IPR”) estoppel “to all claims and grounds… which reasonably could have been included in [an IPR] petition.” (emphasis added). In its decision, the court overruled Shaw Industries Group, Inc. v. Automated Creel Systems, Inc.,[2] which previously explained the meaning of “during an IPR” when analyzing the scope of IPR estoppel. According to Shaw, because an IPR “does not begin until it is instituted,” the statutory scope did not cover grounds that are only raised or re ..read more

I. Introduction This is the second article of the multi-part series discussing benefits of prosecuting patents under Patent Prosecution Highway or PPH. The first article can be accessed here [please add a hyperlink to the first blog post]. To recap, PPH is a set of initiatives promulgated by participating patent offices around the world to accelerate patent prosecution in countries of the participating patent offices. PPH allows participating patent offices to share information and to benefit from work performed by other participating patent offices, thereby reducing examination workload and i ..read more

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. On October 22, 2021, the United States Court of Federal Claims released an opinion awar ..read more

I. Introduction Patent Prosecution Highway or PPH is a set of initiatives promulgated by participating patent offices around the world to accelerate patent prosecution in countries of the participating patent offices. PPH allows the participating patent offices to share information and to benefit from work performed by other participating patent offices, and thereby reducing examination workload and improving quality of patents. Under PPH, prosecution of a patent application previously filed with a participating patent office can be fast-tracked in another participating patent office if the pa ..read more

This post originally appeared as an article (“Stakeholders Should Not Miss Congress’s Invitation for Feedback on Patent Eligibility”) on Law.com on October 7, 2021. The Federal Circuit created controversy in 2020 over its application of the Supreme Court’s subject matter eligibility jurisprudence by finding a method of manufacturing an automobile propshaft ineligible for patent protection. See American Axle & Manufacturing, Inc. v. Neapco Holdings LLC, 966 F.3d 1347 (Fed. Cir.2020). According to the opinion, the claimed method was directed to an application of Hooke’s law, and thus patent ..read more

At least three different types of marketplaces facilitate the sale and/or resale of NFTs. These include open marketplaces, curated marketplaces and proprietary marketplaces. Other variations do exist, however, and it is likely that other alternatives will be developed. In the attached article, we examine some of the differences between these types of marketplaces and business models, highlight some of the varying license terms of these marketplaces and discuss why IP owners who license their IP for NFTs often are best served by developing their own licenses to be used in connection with sale o ..read more

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). F ..read more

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 ..read more