Quarterly Federal Circuit and US Supreme Court Review – Impacts on Intellectual Property

Monday, March 27, 2017

At the end of each quarter, the speakers will review the appellate decisions during the quarter that will have the greatest impact on Intellectual Property law.

Since the last quarterly webinar, the Supreme Court and Federal Circuit have issued several significant IP rulings, including decisions that will affect on-going discussions concerning two important patent issues.

Our speakers will review and provide practical guidance on:

  • Damages in Design Patent Cases: In Samsung Electronics Co. v. Apple Inc., 137 S. Ct. 429 (Dec. 6, 2016) the Supreme Court vacated a $399 million damage award and ruled that damages for design patent infringement under 35 U.S.C. § 289 can be limited to the defendant’s “total profits” from the “article of manufacture” containing the patented design, which may be only one component of a complex product, rather than the entire product. The decision is likely to force a reevaluation of damages in some design patent cases and a reassessment of the strategic value of design patents in client IP portfolios.
  • Claim definiteness: In two recent cases, the Federal Circuit evaluated whether patent claims were indefinite under 35 U.S.C. § 112(b). Tinnus Enterprises, LLC v. Telebrands Corp., 846 F.3d 1190 (Fed. Cir. Jan. 24, 2017), and Sonix Technology Co., Ltd. v. Publications International, Ltd., 844 F.3d 1370 (Fed. Cir. Jan. 5, 2017). The decisions raise important issues concerning the application of the definiteness requirement, and suggest possible new strategies for both patent prosecution and litigation.