Calling IP Attorneys — Come Judge our 14th Annual Patent Moot Court Competition taking place via Zoom on April 14th and 16th, 2025. This is a memorable capstone experience for the students but it requires your expertise. This year’s group is larger than usual and that means I need more judges. No Presidential Appointment is necessary, but you do need a JD, IP law experience, and most importantly passion for supporting the next generation of attorneys. Connect with talented law students and other judges passionate about patent and IP law; Engage with complex, current issues in patent law; etc. I have modeled the competition after a recent pair of PTAB final written decisions in Meta v. VL (VideoLabs), both of which include a dissenting opinion by Judge McKone.  The appeals are currently pending before the Federal Circuit with both sides expected to file cross appeals. I’ll provide a comprehensive judge’s brief and preparation meeting so that you don’t have to. Multiple time slots available (evenings on April 14th and 16th) Interested? Sign up here: https://lnkd.in/gZPG8Us9 Please share with colleagues who might be interested in contributing to legal education. Continue reading this post on Patently-O.

by Dennis Crouch McGucken v. Valnet, Inc., No. 24-1040 (Supreme Court 2025) Photographer Elliot McGucken has petitioned the Supreme Court to review a Ninth Circuit decision involving what has become known as the “Server Test” in copyright — law has permitted websites to avoid copyright infringement by embedding images hosted on third-party servers rather than storing and hosting them directly.  Another name for this may be the “Embedding Liability Shield.” Embedded images and video can appear seamlessly on a website even though the media is not served by the site’s servers. In McGucken v. Valnet, Inc., the basic setup is that Valnet embedded on its thetravel.com site a number of links to McGucken’s Instagram posts.  To be clear, the Instagram posts are authorized by the photographer, but he argues that others should not be permitted to embed his Instagram posts into their sites. The Ninth Circuit sided with Valnet, but McGucken has now petitioned the Supreme Court for review. To continue reading, become a Patently-O member. Already a member? Simply log in to access the full post. Continue reading this post on Patently-O.

by Dennis Crouch Last week, Acting USPTO Director Coke Morgan Stewart granted Director Review and vacated the PTAB’s decision instituting several inter partes reviews (IPRs) in Motorola Solutions, Inc. v. Stellar, LLC. [IPR2024-01205, -01206, -01207, -01208 Director Review Decision] Stewart’s March 28 decision applies the Fintiv factors more aggressively than the Board, signaling a shift toward increased discretionary denials under 35 U.S.C. § 314(a). This is a situation where denial seems appropriate in my opinion. The Stellar’s infringement lawsuit was filed in August 2024, with Motorola waiting 11 months to file IPR petitions.  District Court Judge Sam Jordan (E.D.Tx) has has already issued Markman orders and parties have filed their summary judgment. A jury trial is set for July 2025. To continue reading, become a Patently-O member. Already a member? Simply log in to access the full post. Continue reading this post on Patently-O.

by Dennis Crouch The Federal Circuit’s March 2025 decision in Wash World v. Belanger, attempts to clarify an important distinction between apportionment and convoyed sales in patent damages jurisprudence, dissolving nearly $2.6 million from a jury’s $9.8 million lost profits award. Wash World Inc. v. Belanger Inc., No. 2023-1841, slip op. at 26 (Fed. Cir. Mar. 24, 2025). A jury found that Wash World’s “Razor EDGE” car wash system infringed Belanger’s U.S. Patent No. 8,602,041, which claimed a vehicle spray washer with lighted spray arms.  Adding lights is a simple transformation, but apparently the particular arrangement of flashing lights running down the length of each during vehicle entry to create a “goalpost effect” that guides drivers to position their vehicles. The infringed claim covers a “a spray-type car wash system” that expressly recites a carriage and spray arms with their lighting system. Although other components such as dryers are traditionally part of the wash system and sold together, the claims themselves do not recite anything about the dryers or additional components. In denying JMOL, the district court analyzed the damage award under the apportionment standards of Panduit Corp. Continue reading this post on Patently-O.

by Dennis Crouch The Federal Circuit has ordered sua sponte en banc review in Lesko v. United States, No. 2023-1823. The case presents important questions about statutory interpretation in the wake of the Supreme Court’s decision in Loper Bright Enterprises v. Raimondo, 603 U.S. 369 (2024), and could significantly impact the ability of the Office of Personnel Management (OPM) to determine the scope of its own power.  Although this is not a Department of Government Efficiency (DOGE) case, DOGE has utilized OPM as a central conduit of its RTO and RIF initiatives. This is a very interesting situation because there are almost 70 years of cases interpreting a specific statutory provision about overtime being “officially ordered or approved” and thus subject to overtime pay.  Courts initially gave their fairly broad interpretation of the statute, but OPM later implemented narrow regulations that cut-off substantial overtime pay. In subsequent cases, the Federal Circuit continued to assert that its broad interpretation was correct, but that the statute was ambiguous enough to allow for Chevron deference to the agency.  Now that Chevron is gone, and the court has agreed to take the case en banc, it seems to be a likely easy win for  the appellant seeking overtime pay in a class action setting. Continue reading this post on Patently-O.

PatCon 13 at University of San Diego, April 10-12 The Patent Conference (“PatCon”) is the largest annual conference for patent scholars globally. PatCon 13 will be a three-day event held from Thursday, April 10, to Saturday, April 12, at the University of San Diego School of Law, in conjunction with its annual conference. PatCon will feature over 40 prominent law professors, economists, and attorneys. Qualcomm’s General Counsel, Ann Chaplin, will deliver the keynote on Thursday, and Professor Bronwyn Hall, UC Berkeley, will receive the Extraordinary Achievement Award, plus present a plenary lecture, on Friday. The event is free to all academics, students, government attorneys, and in-house counsel. More information can be found here.  Continue reading this post on Patently-O.

by Dennis crouch In October 2024, the USPTO terminated proceedings in approximately 3,100 patent applications due to the fraudulent use of a U.S. practitioner’s signature. The bulk of the applications are Chinese origin filed through Dr. Yu “Mark” Wang, who operated a patent services firm called Wayne and King LLC (W&K). According to USPTO findings, Wang, who was not a registered patent practitioner, used the electronic signature of registered patent agent without her knowledge or consent. Most recently, one of the impacted patentees – Diamond Art Club LLC – filed a lawsuit challenging the the termination based upon “arbitrary and capricious” action by the agency.  In particular, the patent applicant argues that it is being unfairly punished as the victim: “If the misconduct described by the Defendants did in fact occur, Plaintiff was the victim of the misconduct.” [DAC Complaint] To continue reading, become a Patently-O member. Already a member? Simply log in to access the full post. Continue reading this post on Patently-O.

by Dennis Crouch In a significant development affecting the legal profession and potentially patent practice, Judge Richard J. Leon of the U.S. District Court for the District of Columbia has partially granted WilmerHale’s motion for a temporary restraining order against President Trump’s recent executive order targeting the firm. Wilmer Cutler Pickering Hale and Dorr LLP v. Executive Office of the President, No. 25-cv-917 (D.D.C. Mar. 28, 2025). The firm’s complaint, filed on March 28, 2025, names dozens of federal agencies and officials as defendants, including Coke Morgan Stewart in her official capacity as Acting Under Secretary of Commerce for Intellectual Property and Acting Director of the United States Patent and Trademark Office. This inclusion is particularly relevant to patent practitioners, as the order threatened to severely impair WilmerHale’s ability to represent clients before the USPTO. WilmerHale’s complaint noted that its Intellectual Property department regularly represents “patent applicants, patent holders, and patent challengers before U.S. Patent and Trademark Office in patent prosecution and post-grant proceedings.” The executive order, if fully implemented, would have restricted WilmerHale attorneys’ access to federal buildings and limited federal employees from engaging with them, potentially preventing effective advocacy before the USPTO. Continue reading this post on Patently-O.

by Dennis Crouch In a significant procedural shift, Acting USPTO Director Coke Morgan Stewart has announced a new “Interim Process for PTAB Workload Management” that fundamentally changes aspects of how America Invents Act (AIA) patent challenges are handled. The March 26, 2025 memorandum bifurcates the institution decision process by centralizing discretionary denial authority with the Director herself.  This follows the Feburary 28, 2025 action rescinding former Director Vidal’s June 2022 memorandum that had significantly curtailed discretionary denials based on the Fintiv factors when parallel district court litigation is pending. I expect this change will substantially increase the percent of IPR/PRG petitions denied at the institution stage. USPTO leadership appears to have a goal of increasing discretionary denials to protect patentees from harassment and delay in enforcing their property right.  In addition, though, it appears that the Office has a genuine concern about workload management as stated in the memo. The PTAB is being stretched thin by staff shortages caused by the return-to-office (RTO) requirement coupled with reduction-in-force (RIF) efforts from President Trump and Elon Musk’s White House.  A substantial number of PTAB judges have quit and further reductions are expected in the coming month.   Continue reading this post on Patently-O.

by Dennis Crouch The pending cert petition in Celanese v. ITC asks whether the sale of products made using a secret process triggers the on-sale bar post-AIA.  In my view, the case sets up a fundamental tension between a straight reading of the statutory text and longstanding precedent.  My bet is on the precedent. Although Congress has repeatedly tinkered with U.S. patent law over the past several decades, the America Invents Act of 2011 was clearly the most dramatic rewriting of  the law since 1952. The fundamental change to Section 102 was the transition from first-to-invent to first-to-file.   In addition, the law was amended throughout to focus on the “claimed invention” rather than simply the “invention.”  This second change is important for the Celanese case.  35 U.S.C. § 102(a)(1)  now reads: A person shall be entitled to a patent unless … (a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention. The AIA also added a definition of the new term, defining “claimed invention” as “the subject matter defined by a claim in a patent or an application for a patent.” 35 U.S.C. Continue reading this post on Patently-O.

On January 30, 2024, the Delaware Chancery Court voided Elon Musk’s $55.8 billion compensation package as CEO of Tesla, ruling it unfair to shareholders. In response, Musk criticized Delaware and announced plans to transfer SpaceX’s incorporation to Texas, with Tesla potentially following. This decision has sparked debate among business owners about incorporating in Delaware. Despite the controversy, Delaware remains a popular state for incorporation due to its established legal framework, specialized courts, and favorable regulations. The post explores the implications of Musk’s actions and the ongoing relevance of Delaware for business incorporations.

Earnouts can bridge valuation gaps in M&A deals, but careful drafting is crucial. Sellers should negotiate clear calculation methodologies, specific covenants for the buyer’s post-closing operation of the business, and robust dispute resolution procedures. Proper structuring of earnout provisions can help manage seller expectations and reduce the likelihood of future disputes.

On January 1, 2024, previously enacted federal legislation called the Corporate Transparency Act (the “CTA”) went into effect. The CTA aims to assist law enforcement in tackling money laundering, tax fraud, terrorism financing, and various other illicit activities facilitated by anonymous shell companies. Here we briefly discuss the basics of the CTA and how certain

The purchase agreement is key in M&A transactions, detailing conditions for closure, business terms, asset delineation, due diligence, post-closing recovery, and transition covenants. Styled based on the transaction (asset, stock, merger), it’s drafted post-due diligence, varying in length. It includes parties involved, assets, liabilities, purchase price details, closing process, representations, warranties, tax matters, other covenants, indemnification, and miscellaneous provisions. Structure is driven by buyer and seller preferences, affecting asset or stock purchase decisions and tax implications.

Selling your business is not just about finding a buyer and agreeing on a price. Once the basic terms of the deal are agreed upon in a letter of intent, the buyer will want to sift through your business and legal records with a fine-tooth comb. This meticulous review of your business from contracts to customer lists is called due diligence. Due diligence allows the buyer to uncover risks when buying a business.

Due diligence is the buyer’s process of discovering and evaluating information about a seller’s business to confirm that acquiring the seller’s equity or assets is a sound investment. However, the process of conducting due diligence differs between transactions for a variety of reasons. Factors such as the deal structure (equity purchase versus asset purchase), cost, the unique qualities of the seller, and time constraints affect how the buyer’s deal team approaches due diligence.

This article discusses the memorialization of purchase offers in a letter of intent (LOI) in M&A transactions. An LOI outlines key terms of the deal but is non-binding. It includes provisions like exclusivity, confidentiality, expenses, and non-solicitation that may be binding. Careful drafting is essential to avoid potential risks. Properly considered, an LOI is a valuable tool for M&A deals, guiding parties through negotiations with caution.

This blog post discusses the importance, elements, and exceptions of non-disclosure agreements (NDAs) when selling a business. Key points include the priority for sellers to sign an NDA before disclosing sensitive information, the necessity for clear definitions of what the NDA covers, guidelines for sharing information, the term length of NDAs, and remedies in case of a breach. Despite its protection, enforcing NDAs can be challenging, advising selective information sharing.

For high-growth startups, these tax benefits are often well worth the time and brainpower spent planning and structuring for the requirements imposed by Section 1202 of the Internal Revenue Code. However, to fully take advantage of these benefits, understanding and navigating the 5-year holding period requirement under Section 1202 is essential. In this article, we’ll explore one common scenario that illustrates a key consideration with respect to the holding period from the founder’s and advisor’s perspective.

Founders and startups need to consider Qualified Small Business Stock (QSBS), which offers extensive tax advantages, for their corporate structure. QSBS awards tax benefits to shareholders of companies that meet specific eligibility requirements, including the company being a C-corporation and having assets below $50 million. These benefits mainly include partial or complete exclusions of capital gains from federal income tax. Early planning and knowledgeable advice are crucial for optimization.