Hunton Retail Law Resource

On May 2, 2024, the Federal Circuit issued a decision ruling that initiation of an e-commerce website’s procedure to evaluate patent infringement claims subjects the initiating party to personal jurisdiction in the alleged infringer’s home state. Retailers and consumer products companies may wish to consider the possibility of ending up in federal court in a non-preferred venue prior to using one of these programs.

In our client alert, A Brief Explanation of the USPTO’s Useful New AI-Assisted Invention Guidance, we discuss the Inventorship Guidance for AI-assisted Inventions, 89 Fed. Reg. 10043 (Feb. 13, 2024), recently released by the US Patent and Trademark Office (USPTO). The guidance provides inventors and patent applicants with a framework regarding AI-assisted inventions and how inventorship of such will be judged at the USPTO. Why should a retailer care?

In a significant change to the European patent system that will impact patent prosecution and enforcement strategies in one of the world’s largest retail markets, the European Unified Patent Court (UPC) begins operations and the European Patent with Unitary Effect (Unitary Patent) will be available at the European Patent Office (EPO) on June 1, 2023. Early requests for Unitary Patent protection on applications that may grant prior to June 1 can be filed starting March 1.

Global design patent strategies are increasingly being relied upon by retail and consumer products companies as a cost-effective way to protect key product lines.  However, it is important to understand the various nuances of global design patent strategies since there are traps for the unwary, most notably in Australia and China.

For many companies, including retailers, filing an inter partes review (“IPR”) is a highly popular avenue to challenge patent validity before the U.S. Patent Office and outside of federal district court. An IPR is often a faster and easier way to challenge a patent than in district court.

In a recent case, Trimble Inc. v. PerDiemCo LLC, No. 2019-2164 (May 12, 2021), the Federal Circuit found that, sometimes, threatening a patent infringement action, or entering extensive patent license negotiations prior to filing suit, with a company having a presence in a particular state could subject you to jurisdiction in that state, even if you are located elsewhere.

Office workers everywhere are familiar with height-adjustable desks. These desks allow workers to raise or lower their work surfaces, and often workers will use a height-adjustable desk to perform tasks while standing instead of sitting. As awareness of the negative health effects of sedentary lifestyles grows, height-adjustable desks have become a common solution to avoid long periods of sitting at work.

Design patents can be a useful way to complement an IP portfolio because they can protect the way a product looks instead of how it works. Many consumer products can be defined this way, either in conjunction with, or even in lieu of, utility patents. Where utility patents cover a technical innovation, design patents must claim “ornamental” designs and cannot cover a “primarily functional” design that is essential to the use of the covered product.

Anyone who uses a mobile device knows there are times when hands-free is a necessity. Enter National Products, Inc., a US maker of RAM® Mounts for securely mounting electronic devices—including phones, tablets, laptops and radar detectors—in cars, trucks, bikes and boats, among other vehicles.

Nautilus Inc., which owns exercise brands like Nautilus and Bowflex, and ICON Health & Fitness, which owns NordicTrack among other exercise brands, have been battling over intellectual property for years. ICON recently upped the ante by bringing a complaint to the International Trade Commission, seeking to exclude all imported Bowflex exercise machines from entry into the United States.