Finnegan Intellectual Property Law Podcasts

On March 25, 2026, the U.S. Supreme Court issued a significant decision reaffirming and clarifying the limits of contributory copyright liability for technology and Internet service providers. In a ruling closely watched by online platforms and rights holders alike, the Court held that a company is not liable for merely providing a service to the general public with knowledge that it will be used by some to infringe copyrights. Background Cox Communications is an internet service provider (“ISP”) that serves approximately six million subscribers. Like other ISPs, Cox assigns IP addresses to subscribers but lacks visibility into individual users’ online activity and cannot directly control their conduct. Its subscriber agreements prohibit copyright infringement, and Cox enforces that policy through graduated measures, including warnings, suspensions, and terminations. Sony Music Entertainment and other record companies and music publishers (collectively, “Sony”) sued Cox, alleging that Cox was secondarily liable for copyright infringement committed by its subscribers. Sony advanced two theories: contributory liability and vicarious liability. A jury found in Sony’s favor on both theories and awarded $1 billion in statutory damages. On appeal, the Fourth Circuit reversed as to vicarious liability but affirmed contributory liability, holding that supplying a product with knowledge that the recipient will use it to infringe copyrights is sufficient for contributory infringement. The Supreme Court granted Cox’s petition for certiorari as to contributory infringement of Sony’s copyrights. The Supreme Court’s Legal Framework Contributory liability requires that a provider intended its service to be used for infringement. The Court grounded its analysis in its prior decisions Sony Corp. v. Universal City Studios, 464 U.S. 417 (1984) and MGM Studios Inc. v. Grokster, Ltd., 545 U.S. 913 (2005). Under those cases, the intent required for contributory liability can be shown only if the party induced the infringement or the provided service is tailored to that infringement. The Court held that the Fourth Circuit’s holding went beyond the two forms of liability by holding that supplying a product with knowledge that the recipient will use it to infringe copyrights is sufficient for contributory liability. The Court emphasized that: · Inducement requires active encouragement through specific acts, such as express promotion, marketing, and intent to promote infringement. · Knowledge alone is not enough. A provider’s awareness that some users may infringe does not establish contributory liability. · A service is tailored to infringement if it is not capable of “substantial” or “commercially significant” noninfringing uses. Why Cox Was Not Liable The Court concluded that Cox did not meet either standard for contributory liability. · Cox did not induce infringement. There was no evidence that Cox promoted, encouraged, or marketed its internet service as a means of infringing copyrights. To the contrary, Cox repeatedly discouraged infringement by issuing warnings, suspending service, and terminating accounts in appropriate circumstances. · Cox did not provide a service tailored to infringement. Internet access is plainly capable of substantial and commercially significant noninfringing uses. Cox did not design its service to make infringement easier, nor did it restrict lawful uses. Simply providing access to the Internet—a general purpose communications service—does not amount to tailoring a service for infringement. The Supreme Court expressly rejected the Fourth Circuit’s conclusion that “supplying a product with knowledge that the recipient will use it to infringe copyrights” is sufficient to establish contributory liability. That standard, the Court explained, goes beyond the two recognized bases for contributory liability and conflicts with repeated Supreme Court admonitions that secondary liability cannot rest solely on knowledge of infringement combined with allegedly insufficient efforts to stop it. Sony’s DMCA Safe Harbor Argument Sony also argued that limiting contributory liability in this way would undermine the Digital Millennium Copyright Act’s (“DMCA”) safe harbor provisions, which protect service providers that implement policies for terminating repeat infringers. The Court rejected that argument, holding that the DMCA does not itself impose liability on service providers who serve known infringers; instead, it creates affirmative defenses for providers that meet certain conditions. Critically, the statute makes clear that failure to qualify for a safe harbor does not weigh against a provider’s argument that its conduct is not infringing in the first place. Justice Sonia Sotomayor, joined by Justice Ketanji Brown Jackson, concurred in the judgment, agreeing that Cox could not be held liable because Sony failed to show the requisite intent to aid copyright infringement. She cautioned, however, that the majority unnecessarily narrowed secondary liability, despite the Court’s precedents leaving open the possibility that other common‑law theories—such as aiding and abetting—could apply in the copyright context. Key Takeaways The Supreme Court held that Cox was not contributorily liable for its subscribers’ copyright infringement because it did not intend for its Internet service to be used for infringement. The Court declined to expand secondary copyright liability beyond its established boundaries and reaffirmed that intent—not mere knowledge—is the touchstone. This decision reinforces a key principle for Internet and technology companies: providing a lawful, general purpose service does not create copyright liability simply because some users misuse it. For rights holders, the decision underscores that claims of contributory infringement must be grounded in evidence of inducement or service design that meaningfully facilitates infringement, not simply a provider’s awareness of user misconduct.

That IP Podcast host Harry Brooker interviews Finnegan partner Mike Jakes about his 37-year career as a patent attorney. Mike details how his engineering background and a casual lunch with Don Dunner, led him to law school and eventually becoming a partner at the same firm that bears Don's name. In the episode, he reflects on joining Finnegan in 1988 and staying for the duration of his career.

In this special two-episode podcast series, Finnegan partner Jeffrey Totten chats with Finnegan attorney Alissa Green about the Federal Circuit’s inaugural ruling on derivation proceedings under the America Invents Act.

In this special two-episode podcast series, Finnegan partner Jeffrey Totten chats with Finnegan attorney Alissa Green about the Federal Circuit's inaugural ruling on derivation proceedings under the America Invents Act.

On January 8, 2025, the European General Court made history by ordering the European Commission to pay damages to an individual in the case of Bindl v. Commission (Case T-354/22). Mr. Thomas Bindl, a German citizen, claimed that the Commission violated his privacy rights by sharing his personal data with the United States without proper protections. He argued that this happened when he logged into a Commission website using his Facebook account, which collected information like his IP address. This ruling is important because it’s the first time the court has awarded monetary damages to an individual, and it highlights the legal risks businesses face when handling data from EU residents. In this podcast, Finnegan partner Lynn Parker Dupree, along with attorneys Julia Obradovic-Walz and Nessa Khandaker interview Mr. Bindl and his counsel, Peter Hense, about the significance of this case.

In this episode, Anna Chauvet and Troy Viger break down Warner Chappell Music, Inc. v. Nealy and discuss its implications for Copyright policy.

In this episode, Finnegan partner and leader of Finnegan’s copyright practice Anna Chauvet discusses the legal questions raised by the use of generative artificial intelligence by innovators and what it could mean for copyright policy holders.

In this episode, Finnegan attorneys Kevin Rodkey and Beth Ferrill discuss the recent the en banc decision in LKQ Corporation v. GM Global Technology Operations LLC and what it means for the future of design patent disputes.

Welcome to the Last Month at the Federal Circuit—a look at recent Federal Circuit decisions impacting the intellectual property community. In this special episode, Daniel Klodowski and Cara Regan dig into statistics about the Federal Circuit's case load and offer takeaways about what they mean.

In this podcast, Esther Lim, partner and Chief Diversity and Inclusion Officer at Finnegan chats with the Commissioner for Patents of the United States Patent and Trademark Office, Vaishali Udupa, about her role and her advocacy for diversity, equity, and inclusion.

Welcome to the Last Month at the Federal Circuit—a look at recent Federal Circuit decisions impacting the intellectual property community. In this episode, Beth Ferrill discusses recent design law cases from November.

Welcome to the Last Month at the Federal Circuit—a look at recent Federal Circuit decisions impacting the intellectual property community. In this episode, Cora Holt and Ryan McDonnell discuss recent cases from October.

In this episode, Finnegan partner Elliot Cook speaks with the leader of the firm's privacy practice, Lynn Parker Dupree, and partner Scott Burwell about the California Privacy Protection Agency’s new enforcement review.

On June 1, 2023, the new patent system for the unitary protection of inventions in the EU was launched. Companies can now apply for patent applications with unitary effect in currently 17 participating EU countries (EPC states). In addition, patent disputes based on ordinary European patents and Unitary Patents can now be conducted in a centralized manner before the Unified Patent Court. it is already becoming apparent that the new patent system will offer far-reaching opportunities for the medical devices industry as well. In the field of medical technology, the protection of innovation is key. Research and development incur high costs, which are likely to have risen even further recently due to the mandatory requirements of the Medical Devices Regulation (VO (EU) 2017/745). Therefore, it is all the more important for innovative companies in the sector to be able to protect their valuable inventions and, if necessary, successfully enforce them against competitors. Until now, European patents could only be validated and maintained individually in the desired member states. Depending on the number of states, the cost of validating a patent can quickly add up over the years. Similar to the centralized CE marking, with the unitary patent, uniform protection for all 17 participating EU countries can now be achieved simultaneously in the EPG states with just one application. This can lead to significant savings in terms of validation costs. In addition, European patents can still be applied for and granted in the EU countries not participating in the unitary patent system. The same applies to the 17 EPC states. For companies seeking patent protection, the selection spectrum has thus become significantly broader. The Unified Patent Court has also opened up another strategic option for patent litigation in Europe. Classic European patents that have not been withdrawn from the jurisdiction of the new court by their owner and unitary patents can now each be enforced or challenged in one proceeding with equal effect for several European countries. For patent owners, this offers an efficient way to quickly enforce their claims across countries. Sharp rise in patent applications in medical technology. A look at the figures shows just how much potential the new patent system holds for the industry: The number of patent applications in the field of medical technology has risen significantly in recent years - by a full 50% since 2010. With 15,321 European patent applications in 2021 (source: European Patent Office, as of July 26, 2023), the medical technology sector ranks second among the technology sectors with the highest number of applications, directly after the digital communications sector with 15,400 applications. The German medical technology sector, which most recently generated more than 40 percent of industry sales in the EU (source: "The German Medical Technology Industry," SPECTARIS Yearbook 2022/2023), recorded the second strongest growth in European patent applications (plus 8.1% in 2021 compared to 2020). In view of the high filing figures, it is likely that patent disputes in the medical technology sector will continue to be fought out frequently in Europe in the future. New court already attracting proceedings The new Unified Patent Court is expected to grow rapidly in importance given the advantages it offers companies. Just a few weeks after its launch, companies from the medical technology sector have already filed actions with the Unified Patent Court. Of a total of 29 publicly registered cases, five are from the medical technology sector (as of July 31, 2023). In particular, the German local chamber in Munich, where three of the five lawsuits were filed, is a popular port of call for companies in the medical technology sector. The global patent dispute between DexCom Inc. and various Abbott Group companies, which was initially filed in both the U.S., U.K. and Germany and is now expanding to the Unified Patent Court, could generate a lot of interest. According to the court record, DexCom has filed two infringement suits against Abbott before local chambers in Paris and Munich, each with an amount in dispute estimated by the plaintiff at €4 million. In this case, the parties are litigating on the basis of two European patents (EP 3 797 685 and EP 3 435 866) that protect certain technologies that can be used for glucose monitoring devices. High amounts in dispute in the medical technology sector The amounts in dispute in the medical technology cases already pending before the Unified Patent Court are also not insignificant. The value in dispute in two main proceedings brought by Edwards Lifesciences Corporation for EP 2 628 464 ("Prosthetic valve") and EP 3 646 825 ("A system comprising a prosthetic valve and a delivery catheter") each amounts to €8 million. With an average value in dispute of EUR 4 million for the five proceedings registered to date, medical technology is the technical field with the second highest average value in dispute. Only in the field of biotechnology and pharmaceuticals (bio/pharm) have higher median amounts in dispute been reported (€7.5 million). Medical technology is followed by electrical engineering (median €1.0 million) and mechanical engineering (median €1.4 million). The highest amounts in dispute to date, €100 million each, were reported for lawsuits between companies of the Sanofi Group, Regeneron Pharmaceuticals Inc. and Amgen Inc. by EP 3 666 797 ("Antigen binding proteins to proprotein convertase subtilisin kexin type 9 (PCSK9)"). Such high amounts in dispute can probably be explained above all by the fact that the Unified Patent Court is able to decide for more than just one country. In view of the large territorial scope, disputes before the Unified Patent Court can therefore have extremely high economic relevance for the parties concerned. Companies should therefore already decide when filing their future patent applications whether or not they want to go before the new court. While the patent proprietor of classical European patents has a choice - depending on the individual circumstances of the case - during the (renewable) seven-year transitional period whether to enforce these patents in the new system or not, there is no such choice for unitary patents. The latter can only be enforced before the new court and can only be challenged there by way of an action for nullity. The decision on the type of patent application is therefore likely to depend essentially on how many strategic options the applicant wishes to keep open in case of doubt. In this context, European patents have the advantage that, once they have been withdrawn from the jurisdiction of the Unified Patent Court, they can also be reintroduced under certain conditions. Depending on the individual case, this can result in strategically valuable options.  High economic importance requires appropriate preparation   Against the background of the booming German medical technology market and the steadily increasing number of patent applications, the new court system offers new opportunities for the medical technology industry. On the one hand, it is characterized by its large territorial reach. On the other hand, proceedings can be conducted quite quickly there. For example, infringement proceedings in the first instance could be concluded within 12 to 14 months, even if the court has to rule on the legal status of the patent in dispute at the same time in the case of an invalidity counterclaim. This offers opportunities for rapid cross-border conflict resolution. Many different national proceedings, which can sometimes lead to divergent decisions in the individual jurisdictions, are thus avoided. In cases of particular urgency, temporary injunctions can also be applied for. These often play a role if, for example, patent infringements are imminent in the context of trade fair appearances and rapid action is required to prevent such infringements. The new court can issue such injunctions not only within a very short time, but also without hearing the affected party in advance. And the enforcement of titles is also to be made easier. In the future, the prevailing party will only have to enforce a single title, which will apply equally to the various EPC states for which the patent was asserted.  In view of these advantages, it is not surprising that the first proceedings are already pending before the new court. The number of proceedings suggests that the court will enjoy increasing popularity in the future. Medical technology manufacturers should therefore familiarize themselves with the new system - if they have not already done so - so that they can make the best possible use of it when it comes to securing their own market position. The main thing here is to prepare the legal arguments thoroughly and have the necessary evidence to hand. This is because, in view of the speed with which proceedings are conducted, the parties' deadlines for submitting briefs are extremely short. It is also important to know the legal basis in order to avoid pitfalls and to conduct proceedings successfully.

This podcast dives into the inspiring stories of Finnegan's junior attorneys who have gained trial experience early in their careers. Join us as we explore their triumphs, trials and tribulations, and how they built the confidence, resilience, and knowledge to become the next generation of trial attorneys. In this episode, Sonja Sahlsten explains how being an "evidence geek" proved to be beneficial early in her career.

The "Getting to the Courtroom: Gaining Trial Experience as a Junior Associate Podcast" dives into the inspiring stories of Finnegan's junior attorneys who have gained trial experience early in their career. Join us as we explore their triumphs, trials and tribulations, and how they build the confidence, resilience and experience to become the next generation of trial attorneys. In this episode Connor McGregor highlights the importance of having mentors and nurturing relationships.

The "Getting to the Courtroom: Gaining Trial Experience as a Junior Associate Podcast" dives into the inspiring stories of Finnegan's junior attorneys who have gained trial experience early in their career. Join us as we explore their triumphs, trials and tribulations, and how they build the confidence, resilience and expertise to become the next generation of trial attorneys. In this episode, Jency Mathew describes her experience and explains how it has shaped her career.

Welcome to the Last Month at the Federal Circuit—a look at recent Federal Circuit decisions impacting the intellectual property community. In this episode, Cara Regan and Sydney Kestle discuss two recent cases from July.

In this podcast, Kevin Rodkey and the USPTO's Derrick Brent highlight the remarkable pro bono initiatives and resources offered by the United States Patent and Trademark Office.

Welcome to the Last Month at the Federal Circuit—a look at recent Federal Circuit decisions impacting the intellectual property community. In this episode, Kevin Rodkey discusses IP decisions that were issued in the first half of 2023.

This is a true story contrasting two Israeli mobility companies. There is a happy ending for one. But for the other, due to poor IP planning, dark clouds may be approaching. The story begins a number of years ago, when the co-founders of a seed-round mobility startup met me in a north Tel Aviv coffee shop on a bright spring day to share an idea way ahead of its time. For reasons you will understand when you read on, I am not sharing the name of the startup. But if you know the Israel mobility space, you know the company. During that meeting, the founders shared a paradigm-shift technology vision. Having spent years representing automotive companies, I had the immediate sense that the founders’ vision, while fascinating, was somewhat naïve in that it could put the company in a head-on collision with powerful market forces.  These forces would not hesitate for a second to investigate the startup’s technology and take its innovations without paying a shekel.  After all, the mobility space is fierce. The OEM automobile manufacturers are powerful and get what they want.  And the Tier 1’s who supply the OEMs often use cut-throat tactics to satisfy the OEMs’ demands.  The startup had one major potential advantage to ensure its survival. If the startup could develop a blocking patent portfolio, future competitors and potential partners would not be able to steal the startups’ innovations. Developing a blocking patent portfolio is easier said than done. Patents are like roadblocks. When done right, they restrict access. But ensuring that the roadblocks are properly located on the right roads takes significant planning and skill.  Due to a lack of up-front strategic planning, most patents end up off to the sides of the road or only block one lane, leaving room for competitors to bypass.  In that sunny spring meeting in the Tel Aviv café, I envisioned a series of patents that if properly executed would have been extremely powerful roadblocks.  But the startup did not appreciate the value, and that was the last I heard from them until we met last week, a few years later, when the company shared a problem. In the intervening years since we met, the startup pursued and obtained a few patents.  But those patents were not strategically developed, and barely blocked even one lane of traffic, leaving significant room for competitors to take what they choose.  The startup did a very good job of publicizing its technology to the point that one of the large OEM automobile manufacturers reached out to become a strategic partner.  Ordinarily, that would be a startup’s dream.  But because this startup lacked the patents to keep the OEM from taking the technology for itself, cutting-out the Israeli startup, the startup felt it had no choice but to reject the offer.  It was a dream that was hard to pass up, but the Israeli company felt that it could not take the risk of the more powerful OEM moving forward on its own after receiving the startup’s know-how.    A strategic patent portfolio would have leveled the playing field. Had the startup invested in a thoughtful strategic patent portfolio, the startup could have confidently partnered with the OEM, knowing that the strategic patents would minimize the risk of an underhanded play by the OEM.  Ironically, the startup’s unwillingness to partner may only have bought a short window of peace, because even without a partnering arrangement, the OEM, who employs hundreds of engineers, has the resources to copy the Israeli company’s technology freely and legally.  Since the Israeli company’s technology is already published and the product could be purchased and reverse engineered, it may be just a matter of time until the startup faces a competitor with far more market power than the startup will need to effectively compete.    Under these circumstances, investors may think twice before investing in the startup’s next round. When I met with management of the startup last week, one of the executives candidly conceded, “we understand technology inside and out, but there is a big black hole that we do not understand:  it’s how patents work.”  Time will tell if its lack of IP understanding will cost the Israeli startup its life. Not long after meeting that Israeli company, I received a call from the Chairman of another Israeli mobility startup, EVR Motors—the developer of electric motors with a new architecture that provides superior power and performance and is less than half the size and weight of existing motors.  The Chairman and the CEO are both patent-savvy. They understand that they are leading their company into a highly competitive space and that without a strategic patent portfolio carefully designed to block competitors, the technology will be copied. The Chairman and CEO also understand that developing strong patents is not just about protecting the company’s current products, but is also about envisioning how competitors will try to find their way around the patents, and block those alternative paths as well.  When competitors assess a patent portfolio to decide if they are free to use the technology, they do so from a litigation perspective.  In other words, a competitor’s lawyers ask themselves, will the patents hold up in court if our client is sued for infringement?  For this reason, EVR Motors chose to work with a strategic patenting team that included a seasoned U.S. courtroom litigator. A U.S. litigation perspective maximizes the chances a competitors’ lawyers will understand that the patents were built to withstand attack. EVR Motors undertook a disciplined patent strategy program to carefully aim their patents at would-be competitors. Then, over the course of 18 months, the company obtained 10 strategic U.S. patents, with more in the pipeline. Unlike the first Israeli startup who could not close a partnering deal for fear the partner would run away with the technology, EVR Motors’ strategic patent portfolio gave it the confidence to close six partnering relationships since 2022, and to be recognized as one of Israel’s top 10 Israeli startups electrifying transportation. Having considered the risk and reward of two very different approaches to patents, consider this question: Does your company have a strategic patent portfolio to prevent competitors from offering a competing product that will impact your expected revenue streams?

Welcome to the Last Month at the Federal Circuit. In this episode, Finnegan attorneys Jason Romrell and Ryan McDonnell discuss amendments to the Federal Circuit Rules, which went into effect in March 2023.

In this podcast, Kevin Rodkey, Damian Porcari and Steve Koziol, discuss some of the programs the USPTO offers as it relates to IP education, access to patent protection, the Patent and Trademark Resource Centers, or PTRCs, and emerging technologies.

Welcome to the Last Month at the Federal Circuit—a look at recent Federal Circuit decisions impacting the intellectual property community. In this podcast, Finnegan partner Charles Collins-Chase discusses recent developments at the Federal Circuit and Supreme Court affecting disability benefits owed to people who served in the military.

By default, all European national patents granted by the EPO having effect in the countries participating in the Unified Patent Court are subject to the jurisdiction of the Court. Patent proprietors do, however, have the option to opt such patents out of the jurisdiction of the Court. It should be borne in mind that opt-outs are defensive in nature, as they protect such patents from being revoked in a single court action, whereas now any revocation actions would have to be brought on a country-by country basis. Provided that no national infringement or revocation proceedings have been brought with respect to patents which have been opted-out from the jurisdiction of the Court, a patent proprietor can revoke an opt-out and bring an infringement action in the Unified Patent Court at any time.

With the launch of the Unified Patent Court, the European Patent Office will start granting Unitary Patents providing patent protection in all of the participating member states. This will reduce the burdens on applicants who wish to obtain protection across multiple countries in Europe as the formalities and maintenance fees due on such Unitary Patents will be significantly lower than the equivalent costs for maintaining protection via individual national patents.

The Unified Patent Court will open for business towards the end of 2022 or sometime early in 2023, and when it does, it will revolutionize the way in which patents are litigated in Europe. When the Court comes into existence, it will provide a new forum for enforcing European patents granted by the European Patent Office (EPO) and in force in Germany, France, Italy, Austria, Belgium, Bulgaria, Denmark, Estonia, Finland, Latvia, Luxembourg, Malta, the Netherlands, Portugal, Slovenia and Sweden in a single court action. Further European member states are expected to ratify the agreement in the coming months. It will also provide a forum for enforcing Unitary Patents covering all of the above jurisdictions which the European Patent Office will start to grant as soon as the Court opens. Litigation in the new court is expected to proceed at a very rapid pace with a final oral hearing on issues of infringement and validity at first instance occurring within a year of starting proceedings. The new court will therefore provide a very attractive forum for enforcement of existing European patents. The Court will also provide an attractive forum for revocation of Unitary Patents and European patents subject to the jurisdiction of the Court, as actions in the Court will potentially enable parties to clear the way for the launch of a product through revoking patents across multiple jurisdictions in a single court action. In addition to advising on strategy, Finnegan’s European patent litigators and European patent attorneys will have full representation rights before the Unified Patent Court, including handling revocation actions which will have a number of similarities with EPO oppositions. Finnegan’s attorneys will also be able to opt-out (and back in) classical European patents from the jurisdiction of the Court, which will be possible during a transitional period after the system comes into force.

In this episode Jeff Totten and Tim McAnulty analyze an order from U.S. Patent and Trademark Office director Kathi Vidal, clarifying the application of General Plastics in denying decisions to institute inter partes review (IPR) proceedings.

Calculating patent damages is “not an exact science.” This is especially true when addressing principles of apportionment. The principle of apportionment seeks to ensure that the patent holder does not obtain an unfair benefit by receiving value for features of the infringing product that are not covered by the asserted patent. It does so by requiring that the patentee “apportion” the damages between the patented feature and all other non-patented features. But determining how to apportion, especially when there is evidence of comparable license agreements, requires careful analysis. Read "Damages: "Built-In" Apportionment Using Comparable License Agreements"

In this discussion, Finnegan partner and Chief Diversity, Equity, and Inclusion Officer, Esther Lim, interviews USPTO Directors Hope Shimabuku and Molly Kocialski to discuss DEI and the USPTO's ongoing efforts and initiatives to increase diversity and inclusion in the profession.

Welcome to the Last Month at the Federal Circuit—a look at recent Federal Circuit decisions impacting the intellectual property community. In this podcast, Finnegan partners Beth Ferrill and Frank DeCosta discuss an important decision addressing artificial intelligence.

In recent days, increased attention has been given to government funding on the national and state level, for example, through investment in our country’s infrastructure. Some of those resources may be directed to research and development, spurring innovation in the private sector. The parties who accept government contracts or other federal grants should consider how such funds could lead to the development of patentable inventions and how patents obtained on those inventions may ultimately be enforced. This article is thesecond installment in a two-part series addressing the acquisition and litigation of patent rights directed to inventions developed with the support of government grants or contracts. In the first article, we provided a brief overview of the Bayh–Dole Act, which controls the allocation of intellectual property rights in inventions developed using federal funding. In this second article, we explore the considerations and requirements when bringing or facing an enforcement action based on those patents. Read "The Enforcement of Patent Rights in Government Funded Inventions"

In this podcast, Finnegan partners Jeff Totten and Tim McAnulty provide an update on Apple v. Fintiv.

Welcome to a special podcast from Finnegan, where Jeffrey C. Totten and Timothy P. McAnulty break down the Supreme Court's recent decision declining to review the American Axle case, and what it means for the manufacturing industry.

Because rights granted by a patent generally extend only as far as the borders of the country granting it, a fintech patent granted in one country will not extend to foreign countries. What's more, fintech finds itself in the crosshairs of patent eligibility questions because many countries have taken specific steps to prevent the granting of patents on pure methods of doing business or finance. Despite the “tech” portion of the word, many patent offices focus squarely on the “fin” side of things to err on the side of not allowing patent protection. Clearly, creating a strong global patent portfolio presents challenges when countries treat patent eligibility differently, and it is typically not enough to file only in “easy” jurisdictions. But while accounting for each country having different standards for eligibility presents its own challenge, knowing the rules remains a key step in securing a strong patent portfolio that can protect innovations around the world. In this article, Finnegan attorneys Christopher C. Johns, Soniya Shah, and Michael V. Young discuss key fintech eligibility variations in the United States, Canada, EU, and Asia that innovators and counsel will need to keep in mind as they seek protections for their intellectual property. Read the full article below.

Welcome to the Last Month at the Federal Circuit—a look at recent Federal Circuit decisions impacting the intellectual property community. In this podcast, we are joined by Finnegan partner Mike Jakes. Mike is currently the leader of Finnegan’s appellate practice and has appeared in over 100 appeals at the Federal Circuit and argued over 50 times. Mike provides updates on Arthrex, American Axle, and Section 101. He also discusses the recent Federal Circuit case of Pavo Solutions v. Kingston Technology.

Sustainable chemistry – also known as green chemistry – seeks to minimise or eliminate the use and generation of hazardous substances. For example, innovators may develop a sustainable synthetic route to a chemical that is traditionally prepared from petrochemical feedstocks. Intellectual Property (IP) protection is used as a commercial tool by innovators to facilitate a return on their investment. Patents are commonly used within chemical technologies to protect inventions, which may be products or processes. But how is IP protection, such as patents, being used by innovators in the sustainable chemistry space? In this article, Finnegan partner Maeve O'Flynn discusses questions that innovators in the sustainable chemical space should ask when protecting their intellectual property. Read "Sustainable Patenting"

Welcome to the Last Month at the Federal Circuit—a look at recent Federal Circuit decisions impacting the intellectual property community. Finnegan partner Kevin Rodkey joins us now to discuss the decision in Hunting Titan Inc. v. DynaEnergetics.

In this podcast, Finnegan attorneys Mark Feldstein and Cora Holt discuss the impacts of the recent Federal Circuit cases GSK v. Teva and Amarin v. Hikma.

Welcome to the Last Month at the Federal Circuit—a look at recent Federal Circuit decisions impacting the intellectual property community. Finnegan partner Dori Hines joins us now to discuss four recent cases that address IPR procedural issues.

In this podcast, Finnegan attorneys Tom Irving, Amanda Murphy, and Caitlin O'Connell discuss the facts of the recent Federal Circuit case, Indivior v. Dr. Reddy's Laboratories, and the historical authority of the CCPA in setting precedent for the Federal Circuit.

Welcome to the Last Month at the Federal Circuit – a look at recent Federal Circuit decisions impacting the intellectual property community. Finnegan partner Elizabeth D. Ferrill joins us now to provide a year-end wrap up of case developments impacting design patents and a look ahead to 2022.

Welcome to the Last Month at the Federal Circuit – a look at recent Federal Circuit decisions impacting the intellectual property community. In this podcast, Finnegan partner Kevin Rodkey discusses mandamus decisions arising out of venue transfer disputes.

In honor of the 10-year anniversary of the America Invents Act (AIA), Finnegan partners Arpita Bhattacharyya and Tim McAnulty reflect on the legislation's legacy and discuss some of the legal challenges that remain unresolved.

Andrei Iancu, Director of the American Intellectual Property Law Association’s 2018 annual meeting, has repeatedly stated his desire to give patent owners greater ability to amend claims during AIA trial proceedings. In March 2019, the USPTO took a step in that direction with its pilot program for motion to amend practice. An eligible patent owner who chooses to take advantage of the pilot program can receive valuable preliminary guidance from the Board on its motion to amend, and, if desired, can file a revised motion to amend based on that feedback. Eighteen months after the pilot program’s launch, only a handful of eligible trials have reached final disposition at the Board. In this article, we take a close look at each of these cases to analyze whether and how the Board’s preliminary guidance has impacted their outcome—and provide strategic practice tips for both petitioners and patent owners. Read the full version of "Insights from the First Year of the USPTO’s New Motion to Amend Pilot Program" here.

Welcome to the Last Month at the Federal Circuit – a look at recent Federal Circuit decisions impacting the intellectual property community. In this podcast, Finnegan partners J. Michael Jakes, Kathleen Daley, and Jason Romrell discuss the Supreme Court’s decision in the Arthrex case and what the Supreme Court’s decision could mean for the patent community.

Introduction In patent litigation, a finding of willful infringement may treble damages under 35 U.S.C. § 284. A common defense to willful infringement involves retaining third-party "opinion counsel" to opine on whether an activity or product infringes a patent and/or whether the patent is valid and enforceable. In the wake of Halo Electronics, Inc. v. Pulse Electronics, Inc., which lowered the bar for establishing willfulness, such "advice of counsel" defenses have become more prevalent. This defense, however, is not without drawbacks: relying on an opinion of counsel triggers waiver of attorney-client and work product privileges as to the "subject matter" of the opinion letter. Given the subject matter of the opinion letter — e.g., infringement, validity, claim construction — overlaps significantly with the substantive aspects of patent litigation, asserting an advice of counsel defense can result in sweeping discovery requirements, including disclosure of post-complaint communications, strategy discussions with third parties, and deposition of in-house counsel. Unsurprisingly, the exact contours of this waiver is oft disputed in cases involving allegations of willful infringement. In the mid-2000's, the Federal Circuit's Echostar and Seagate somewhat clarified the scope of the waiver: privilege is waived for opinion counsel, but absent "unique circumstances" trial counsel retains its ability to assert attorney-client and work product privileges. Still, these decisions gave trial courts little guidance on how waiver applies to in-house counsel and explicitly eschewed establishing an absolute rule. This paper examines recent treatment of waiver in advice of counsel defenses and provides best practices for obtaining and relying on opinion letters. Read "In-House Considerations in Advice of Counsel Defense" here.

Welcome to the Last Month at the Federal Circuit – a look at recent Federal Circuit decisions impacting the intellectual property community. In this podcast, Finnegan partner Charles Collins-Chase and Michael Flibbert discuss the key strategic decisions that can make or break an appeal at the Federal Circuit.

On October 17, 2020, the Standing Committee of the National People's Congress of China passed an amended Patent Law, which takes effect on June 1, 2021. The amended Patent Law introduces a patent linkage system in Article 76, which outlines a general framework allowing early patent dispute resolution before generic drug approval. Draft measures to implement Article 76 are proposed by three government agencies: "Draft Measures on the Early Resolution Mechanism for Drug-Related Patent Disputes" jointly by the National Medical Products Administration (NMPA) and the China National Intellectual Property Administration (CNIPA), "Draft Legal Provisions on Several Issues Concerning the Application of Laws in the Trial of Disputes over Drug Patent Linkage" by the Supreme People's Court, and "Draft Measures on Administrative Adjudication in the Early Resolution Mechanism for Drug-Related Patent Disputes" by the CNIPA. Like the Hatch-Waxman framework in the U.S., China's patent linkage system aims to balance the interests of innovative drug developers and generic drug manufacturers, encouraging therapeutic innovations and, in the meantime, not unduly impeding the public's access to inexpensive, generic drugs. In the past, generic drugs could be approved in China and enter the market even though they may be infringing certain patents. The patent owner had no cause of action to bring a patent infringement suit until a generic drug had actually entered the market, because filing a generic application per se, even when it entirely relies on an approved drug's efficacy and safety data, was not an infringing act in China. But at the same time, a generic company in China enjoys a safe harbor for manufacturing, using, or importing a patented drug for the purpose of providing information needed for regulatory approval. These practices in China resulted in a system that tilted in favor of the generic drug industry. China's amended Patent Law now provides several bargains to the innovative drug industry. It provides a public platform where the patent owner/NDA holder can monitor whether a generic version of its patented, approved drug product or medical use is seeking market approval. The amended law also provides the patent owner/NDA holder a cause of action regarding whether the generic product falls within the scope of the registered patent. Thus, the patent owner/NDA holder can initiate civil judicial proceedings or administrative adjudications ("an Article 76 action") prior to marketing approval of an allegedly infringing generic product. Once an Article 76 action is initiated, the NMPA will not approve the generic drug during the 9 months after the docketing date of the Article 76 action. The amended patent law also provides patent term extensions for innovative drug patents to remedy delays incurred during the regulatory approval process, subject to two restrictions: (1) the total extension cannot exceed 5 years, and (2) the total patent term after drug approval cannot exceed 14 years. On balance, China's patent linkage system also encourages generic applicants to challenge innovators' drug patents, providing the first successful generic challenger a 12-month market exclusivity. In this article, we will focus on the draft measures relating to Article 76 of China's amended patent law, and its comparison with the Hatch-Waxman framework in the U.S. The draft measures may change when the amended Patent Law takes effect on June 1, 2021. Read the full article here.

The extent to which certain apportionment principles, such as the entire market value rule and related doctrines, may constrain damages theories in patent infringement cases remains uncertain. This article reviews the current state of apportionment law through the lens of semiconductors and electronic components—ideal archetypes for such issues—and proposes a framework to help reconcile governing precedents that, at times, seem to conflict. Read the full article here.