Kyle Sorenson, PhD
Subscribe to Kyle Sorenson, PhD's PostsKyle Sorenson, PhD, focuses his practice on patent litigation, patent prosecution, due diligence and licensing. Read Kyle Sorenson's full bio.
Creative License: Fair Use Defense Paints Over Infringement Battle
By Kyle Sorenson, PhD on Oct 3, 2024
Posted In Copyrights, Trademarks
Affirming the application of the fair use defense to copyright infringement, the US Court of Appeals for the Fifth Circuit determined that a district court’s sua sponte invocation of a fair use defense to parallel trademark claims was harmless error. The Court also affirmed that the district court did not abuse its discretion in awarding...
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Shell Shocked: Judge’s Travel Plans Turn the Tide in Shrimp Dispute
By Kyle Sorenson, PhD on Jul 11, 2024
Posted In Trade Secrets
Addressing the scope of a magistrate judge’s Article III authority, the US Court of Appeals for the Eleventh Circuit vacated a judgment and remanded the case for a new trial because the magistrate judge performed non-ministerial acts without obtaining proper consent. PB Legacy, Inc v. Am. Mariculture, Inc., Case No. 22-12936 (11th Cir. June 18,...
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I Hear Ya – No Intent to Deceive, No Inequitable Conduct
By Kyle Sorenson, PhD on Mar 7, 2024
Posted In Patents
The US Court of Appeals for the Federal Circuit affirmed a district court’s finding that the asserted patents were not unenforceable for inequitable conduct, determining that statements made by counsel to the US Patent & Trademark Office (PTO) to revive an abandoned application were not shown to have been made with deceptive intent. Freshub, Inc....
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Sorry—No Finality, No Injunction, No Appellate Jurisdiction
By Kyle Sorenson, PhD on Nov 9, 2023
Posted In Trade Secrets
The US Court of Appeals for the Third Circuit dismissed an appeal from the denial of a motion under the Defend Trade Secrets Act (DTSA) for an ex parte seizure order, explaining that such orders are not final, not effectively injunctive and that the DTSA does not independently provide appellate jurisdiction to review such orders....
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Sins of the Fathers? Grandparent IPR Factors into Current Institution Decision
By Kyle Sorenson, PhD on Sep 7, 2023
Posted In America Invents Act, Patents
US Patent & Trademark Office (PTO) Director Kathi Vidal vacated and remanded a Patent Trial & Appeal Board decision denying institution of an inter partes review (IPR) because the Board improperly applied the precedential Advanced Bionics framework in rendering its decision. Keysight Tech., Inc. v. Centripetal Networks, Inc., IPR2022-01421 (PTAB Decision Review Aug. 24, 2023)...
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If Prior Art Discloses Ingredients and How to Mix Them, the “Cake” Is Anticipated
By Kyle Sorenson, PhD on Apr 20, 2023
Posted In Patents
The US Court of Appeals for the Federal Circuit affirmed that challenged claims were invalid as anticipated based on principles of inherency where the disclosed prior art formulations and processes necessarily met a disputed claim limitation. Arbutus Biopharma Corp. v. ModernaTx, Inc., Case No. 20-1183 (Fed. Cir. April 11, 2023) (Reyna, Schall, Chen, JJ.) Arbutus...
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And All That Jazz: Trademark Used for One Service Doesn’t Permit Tacking for Others
By Kyle Sorenson, PhD on Apr 13, 2023
Posted In Trademarks
Reversing the Trademark Trial & Appeal Board’s decision to dismiss an opposition, the US Court of Appeals for the Federal Circuit addressed the requirements for a trademark owner to employ “tacking” based on the use of a mark for one service in the context of a trademark application listing multiple services. Bertini v. Apple Inc.,...
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Press Pause: De Novo Review Not Always Required for Obviousness
By Kyle Sorenson, PhD on Apr 6, 2023
Posted In Patents
A divided panel of the US Court of Appeals for the Federal Circuit affirmed the Patent Trial & Appeal Board’s finding that certain challenged claims were nonobvious after applying the substantial evidence test to resolve a dispute regarding the scope and content of the prior art that the Board had resolved as a purely factual...
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Another Kind of Term Limit: Delay Resulting from After-Allowance Amendments Deducted from PTA
By Kyle Sorenson, PhD on Nov 17, 2022
Posted In Patents
The US Court of Appeals for the Federal Circuit affirmed the US Patent & Trademark Office’s (PTO) decision on a patent term adjustment (PTA), finding that it was appropriate to deduct days from a patent term when the applicant files an amendment after notice of allowance and could have completed prosecution earlier by withdrawing the...
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A Window into Trade Secret Damages: R&D Costs Can Quantify Unjust Enrichment
By Kyle Sorenson, PhD on Sep 15, 2022
Posted In Trade Secrets
The US Court of Appeals for the Third Circuit affirmed a district court’s finding of damages in a trade secrets case under Pennsylvania’s version of the Uniform Trade Secrets Act. The Third Circuit explained that it is appropriate to quantify damages under the unjust enrichment standard by considering the trade secret owner’s research and development...
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