Updates on IP news from our global team!

On December 3, 2024, the United States Patent and Trademark Office (“USPTO”) formally withdrew its highly controversial proposal to add a new requirement for terminal disclaimers. Terminal disclaimers are often filed during prosecution of U.S. patents to overcome non-statutory double patenting rejections. The proposal, published in May of 2024, would have imposed a new practice under which a patent in which a disclaimer is filed would be enforceable only if no claim in a patent to which it is tied by the terminal disclaimer has been found invalid. The proposal was roundly criticized as onerous, unnecessary, and disruptive to well-established practice.  

The U.S. Patent Trial and Appeal Board (PTAB) recently issued a post-grant review decision, denying a post-grant review challenge to U.S. Patent No. 11,696,545 submitted by Inari Agriculture, Inc. against the patent owner Pioneer Hi-Bred International, Inc. The Board ruled that because the claims cited representative seeds deposited at the National Center for Marine Algae and Microbiota (NCMA), the claim scope encompasses both the plant variety’s phenotype and genotype, even though the genotype is not explicitly recited in the claims. Thus, the post-grant review challenge was denied because the Board agreed with Patent Owner’s arguments that the claimed material was properly enabled by the specification and was also nonobvious. This decision raises more questions than it answers regarding claim construction.

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In a decision with significant implications for global patent licensing, the U.S. Court of Appeals for the Federal Circuit (CAFC) vacated a district court’s ruling in a dispute between Ericsson and Lenovo over Standard-Essential Patents (SEPs). Both companies are members of the European Telecommunications Standards Institute (ETSI), which requires members to license their SEPs under “fair, reasonable, and non-discriminatory” (FRAND) terms. After failing to obtain a global cross-license, Ericsson filed lawsuits in Colombia and Brazil, securing injunctions against Lenovo for allegedly infringing its SEPs. Lenovo, in turn, sought an “antisuit injunction” in the U.S. District Court for the Eastern District of North Carolina to prevent Ericsson from enforcing the foreign rulings, arguing that Ericsson had violated its FRAND obligations. The district court denied Lenovo’s request, reasoning that the U.S. case is not “dispositive” of the foreign disputes because it might not result in Lenovo obtaining a global cross-license. However, the CAFC held that determining whether Ericsson honored its FRAND obligations is dispositive because it could resolve key issues in the foreign disputes. The case was remanded to the district court to decide whether Lenovo is entitled to the antisuit injunction based on Ericsson’s FRAND commitments.

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After announcing an intention to exercise its fee setting authority in 2023, and following a public feedback process, the USPTO has finally announced fee increases and accompanying rules that will take effect on January 19, 2025.  The final changes deviate in several respects from the USPTO’s proposal of April 3, 2024, based on feedback the USPTO received during the public comment period.  

On September 4, 2024, the China National Intellectual Property Administration (“CNIPA”) issued an invalidation decision on a utility model patent (Pat. No. ZL201620610437.1, hereinafter referred to as “the Patent-in-Issue”) owned by Joyoung Co., Ltd. After reviewing the case, the panel concluded that some claims of the Patent-in-Issue lack inventiveness, and therefore the Patent-in-Issue is partially invalid.

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Sending our best wishes to you and yours this holiday season!

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