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The top five intellectual property traps in M&A transactions

  • McDermott Will & Emery
  • -
  • USA
  • -
  • August 31 2010

In M&A transactions, many lawyers assume that intellectual property (IP) rights will automatically transfer with the purchase and that IP issues can be cured by general representations and warranties

Two-way test for obviousness type double patenting narrowly applied

  • McDermott Will & Emery
  • -
  • USA
  • -
  • June 30 2009

The U.S. Court of Appeals for the Federal Circuit determined that the two-way test for obviousness-type double patenting is applicable when the claims could have been presented in an earlier application in the family

Teachings incorporated by reference for anticipation purposes need not be individually named

  • McDermott Will & Emery
  • -
  • USA
  • -
  • September 28 2009

Finding that material not explicitly contained in the single, prior art document may still be considered for purposes of anticipation if incorporated by reference into the document, the U.S. Court of Appeals for the Federal Circuit reversed and remanded a district court’s summary judgment that patents were not invalid for anticipation

Massachusetts attorney’s lien statute applies to patent prosecution costs

  • McDermott Will & Emery
  • -
  • USA
  • -
  • August 31 2009

The Supreme Judicial Court of Massachusetts determined, in a case of first impression, that Massachusetts’s attorney’s lien statute permits placing a lien on a patent (and any proceeds later derived from that patent) for legal fees earned while representing a client before the U.S. Patent and Trademark Office (USPTO

Postal Service’s use of photo of Korean war veterans memorial on postage stamp not a fair use

  • McDermott Will & Emery
  • -
  • USA
  • -
  • March 31 2010

Considering whether the U.S. government is liable for copyright infringement, the U.S. Court of Appeals for the Federal Circuit reversed the decision of the U.S. Court of Federal Claims and answered in the affirmative, holding that the U.S. Postal Service’s use of a photograph depicting a national memorial was not a fair use of the underlying sculptural works

Federal Circuit limits recovery of damages and attorneys’ fees awards

  • McDermott Will & Emery
  • -
  • USA
  • -
  • January 30 2010

In reducing a $1.425 million award, the U.S. Court of Appeals for the Federal Circuit recently ruled (in a non-precedential opinion) that a district court erred in calculating both damages and attorneys’ fees

Patent assignment recorded at USPTO creates a rebuttable presumption of a valid assignment

  • McDermott Will & Emery
  • -
  • USA
  • -
  • April 28 2010

Addressing the burdens of proof associated with a standing challenge based on the validity of an assignment, the U.S. Court of Appeals for the Federal Circuit upheld the U.S. International Trade Commission’s (USITC’s) determination that the recordation of a patent assignment at the U.S. Patent and Trademark Office (USPTO) created a rebuttable presumption of a valid assignment which shifted the burden to rebut that presumption to the party challenging standing

Clear and unmistakable disavowal of claim scope required for prosecution history estoppel

  • McDermott Will & Emery
  • -
  • USA
  • -
  • December 28 2007

Overturning a district court’s finding of prosecution history estoppel, the U.S. Court of Appeals for the Federal Circuit held that an allegedly disclaiming statement made during prosecution was not a “clear and unmistakable” disclaimer to one skilled in the art

Exercise of supplemental jurisdiction to entertain claims alleging infringement of a foreign patent was an abuse of discretion

  • McDermott Will & Emery
  • -
  • USA
  • -
  • February 28 2007

The U.S. Court of Appeals for the Federal Circuit, in a rare interlocutory appeal, found the district court lacked supplemental jurisdiction under 35 U.S.C. 1367 to entertain a claim for infringement of a foreign patent

License to “make” includes an inherent right to “have made”

  • McDermott Will & Emery
  • -
  • USA
  • -
  • June 30 2009

The U.S. Court of Appeals for the Federal Circuit recently held that a license to make a patented article includes an inherent right to have a third party make the article absent express language to the contrary