Patent owners are required to provide notice to an infringer under 35 U.S.C. § 287 in order to be able to collect damages for infringement. Failure to provide proper notice of the patent rights can prevent the recovery of damages, which could be costly. Damages are only available to compensate for infringement that occurs after effective notice has been given to the infringer.

Impression Products, Inc. v. Lexmark International, Inc., is set for oral argument before the United States Supreme Court on March 21, 2017. The outcome of the case, which will address the scope of patent exhaustion, could have a serious impact on certain segments of business such as companies, like Impression Products, that refurbish used, patented products for resale (think phones, laptops, toner cartridges, etc.). It could also have an effect on the rights of consumers that purchase patented goods.

The Federal Circuit recently ruled on the relatively little-used provision of pre-issuance damages under 35 U.S.C. §154(d). This rarely asserted and rarely granted "extraordinary remedy" gives patent applicants the right to collect a reasonably royalty based on infringement that occurred following the publication of a patent application where the accused infringer is provided "actual notice" of the published patent application, and the asserted claims remain "substantially identical" between publication and issuance.1

"In our well-ordered society, protection of private property is essential." This is how a panel of the Ninth Circuit started its conclusion in DC Comics v. Mark Towle (Case 13-55484, September 23, 2015), quoting a statement by Batman to his trusty sidekick Robin in an episode of the Batman television show. We certainly strive to keep our society "well-ordered." As a result, Mark Towle’s replica Batmobiles, sold at about $90,000 each, are infringements of DC Comics’ copyright in the Batman comic books.

Senior attorney Stephen Grant was recently asked to comment on a recent trademark dispute involving the University of Arizona and nearby Jonathan Alder High School.

Last month the Supreme Court issued its first trademark decision for 2015. In Hana Financial, Inc. v. Hana Bank, No. 13-1211, in an opinion delivered by Justice Sotomayor, the Court unanimously held that the determination of whether two trademarks may be "tacked" for purposes of determining priority is a question of fact, not law, and therefore is a proper question for the jury.

"Double patenting" comes in two different flavors. One flavor is a bit bland; it doesn’t have the depth of nuance. But the second flavor, and especially its US patent law overtones, makes for tasty reading. And so, a sample of Gilead Sciences, Inc. v. Natco Pharma Limited 1 is suggested to you.

On Feb. 21, the Federal Circuit handed down the awaited decision in Lighting Ballast Control,1 a case scheduled for en banc rehearing to determine the ongoing viability of the Cybor2 doctrine that all patent claim constructions are entitled to de novo review upon appeal. In a split 6-4 decision,3 Cybor lives on. From reading the three opinions,4 the concurrence by Judge Lourie may have the most lasting value. But first, let’s set up the case for you.