From judicial retirements to global crises, 2022 was an exceptionally busy year at the International Trade Commission compared to previous years. In an article for IPWatchdog, Principal Daniel Tishman and Associate Joshua Rosefelt assessed the landscape at the ITC and reviewed a few developments and important decisions from 2022. Read the full article at IPWatchdog. This year was a busy one for the International Trade Commission (ITC) compared to the last few years. As of December 15, 2022, there were 56 complaints filed, compared to 50 in all of 2021. The Commission also instituted more inves ..read more

The update for December 2022 summarizes three patent decisions that issued from the Western District of Texas. These three decisions all evaluated challenges to venue in patent suits. In the end, the court transferred two of the cases to an out-of-state court and kept one in WDTX. Below we will review the factual background and analysis that led to the differing outcomes in each of these three cases. Parus Holdings, Inc. v. Microsoft Corp., No. 6:21-CV-00570-ADA, 2022 WL 17420391 (W.D. Tex. Dec. 4, 2022) – granting transfer to Western District of Washington. Parus Holdings filed a lawsuit asse ..read more

Fish & Richardson is proud to announce the elevation of 15 attorneys to principals at the firm, effective January 1, 2023. The new principals are Ashley Bolt (Atlanta), Chet Campbell (Boston), Rae Crisler (Dallas), Sara Fish (Atlanta), Jared Hartzman (Washington, D.C.), Joel Henry (Washington, D.C.), Lawrence Jarvis (Atlanta), Joy Kete (Boston), April Park (Washington, D.C.), Eric Peng (Shenzhen), Liz Ranks (Boston), Oliver Richards (San Diego), Jared Smith (San Diego), Karrie Wheatley (Houston), and Chris Wright (Atlanta). This class represents a broad range of interdisciplinary expertise ..read more

In December, six complainants filed three Section 337 complaints with the International Trade Commission (ITC): Samsung Electronics, America, Inc. f/k/a Samsung Telecommunications America, LLC; Samsung Electronics Co., Ltd.; Samsung International, Inc.; and Samsung Research America, Inc., filed a complaint against Manufacturing Resources International, Inc., in Components for Certain Environmentally-Protected LCD Digital Displays and Products Containing Same, Inv. No. 337-TA-3658; Realtek Semiconductor Corp. filed a complaint against Advanced Micro Devices, Inc., in Certain Integrated Circuit ..read more

In an article for IPWatchdog Senior Principal John Dragseth gave a nod to the holidays and the culmination of the calendar year while outlining the seven Federal Circuit cases from 2022 that, despite not being high-profile, included important nuggets for practitioners. Read the full article at IPWatchdog. These seven Federal Circuit cases from 2022 have important nuggets in them, even though they weren’t high-profile or didn’t involve billions in damages. [To the tune of Rudolph]: You know Mayo and Markman and Alice and Fintiv; Juno and Axle (American) and Amgen and Teva. But do you recall … t ..read more

The implementation of the America Invents Act in 2012 significantly changed patent practice in the United States, in part by creating an avenue to challenge a patent’s validity at the Patent Trial and Appeal Board (PTAB) without enduring the time and expense of district court litigation. At the forefront of the industry’s efforts to adapt to the new scheme were the co-chairs of Fish & Richardson’s post-grant practice, Dorothy Whelan and Karl Renner, who helmed Fish’s efforts to become a dominant force in post-grant practice. Under their co-leadership, Fish has become the most act ..read more

The United States Patent and Trademark Office (USPTO) has updated the deadline to respond to Office Actions for trademark applications. As of December 3, 2022, trademark applicants now have three months (instead of the previous six months) to respond to Office Actions issued during the examination of trademark applications. This change applies only to Office Actions issued on or after December 3, 2022. The new response period applies to the following application filing bases: Use in commerce ( 1(a)) Intent to use ( 1(b)) Foreign applications (§ 44(e) and 44(d)) It does not apply to: Applica ..read more

November saw seven complainants file four Section 337 complaints with the International Trade Commission (ITC): Dometic Corporation and Dometic Sweden, AB, filed a complaint against Shanghai Hopewell Industrial Co., Ltd., Shanghai Hehe Industrial Co., Ltd., CitiMarine, LLC, and Mabru Power Systems, Inc., in Certain Marine Air Conditioning Systems, Components Thereof, and Products Containing the Same, Dkt. No. 3564; AGIS Software Development, LLC, and Advanced Ground Information Systems, Inc., filed a complaint against numerous respondents in Certain Location-Sharing Systems, Related Software ..read more

On 5 December 2022, the president of the Unified Patent Court (UPC) Court of Appeal, Klaus Grabinski, and the acting chairman of the Administrative Committee of the UPC, Johannes Karcher, announced an adjustment of the timeline of the UPC. According to the announcement, the start of the Sunrise Period is postponed by two months to 1 March 2023. The initial roadmap foresaw 1 January 2023 as the beginning of the Sunrise Period, with an entry into force of the UPCA on 1 April 2023. The additional time is intended to allow future users to prepare themselves for the strong authentication which will ..read more

Principal Michael Shepherd authored Expert Analysis for Law360 examining the declining reversal rate on Step 2B of subject matter eligibility rejections at the Patent Trial and Appeal Board, hypothesizing how a shift in standards caused this occurrence and offering solutions to address the problem. Read the full article on Law360. PDF copy available. Something surprising has happened with the way the Patent Trial and Appeal Board is deciding ex parte appeals of subject matter eligibility rejections under Section 101 of the Patent Act. Namely, reversals have become vanishingly rare on the secon ..read more