Following the America Invents Act, a petition for inter partes review (“IPR”) has become a common method for challenging the validity of a patent before the Patent Trial and Appeal Board (“PTAB”) at the United States Patent...more
An unborn baby’s DNA (“fetal DNA”) can be used to determine the sex of the baby as well as to test for conditions such as Down’s syndrome. In the past, procedures to get samples of fetal DNA for testing involved sticking a...more
It has become commonplace for companies such as Google to use local servers to provide faster service to customers. This practice has raised the question as to whether those local servers constitute “a regular and...more
To use a textbook or other reference to challenge the validity of a patent in a petition for inter partes review (“IPR”), the textbook must have been “publicly accessible” prior to the date of the challenged patent to qualify...more
When sued for patent infringement, a defendant can still petition for inter partes review (“IPR”) of the asserted patent at the United States Patent and Trademark Office (“USPTO”) if the petition is filed within one year of...more
Many resources are being devoted to preventing data breaches and protecting privacy. In fact, patents have issued on various approaches. But are those approaches really patentable? In a recent challenge to OneTrust’s patent,...more
Have you ever driven away from your home and then had that irritating doubt in your mind as to whether you remembered to close your garage door? I know I have. No matter how hard I try to search my brain’s archives, I really...more
The United States Patent and Trademark Office (the “USPTO”) explains that-
“A trademark is a brand name. A trademark or service mark includes any word, name, symbol, device, or any combination, used or intended to be used...more
Shockingly, some at the Patent Trial and Appeal Board (“PTAB”) think textbook publishers who include dated copyright notices don’t actually publish the textbooks that year! Further, would you have imagined an argument that...more
The United States Supreme Court granted a writ of certiorari in Iancu v. NantKwest to determine whether a patent applicant, win or lose, must pay the salaries of the United States Patent and Trademark Office’s (“USPTO”)...more
Prior to the Leahy-Smith America Invents Act (“AIA”), the patent statute (35 U.S.C. § 102(b)) prohibited patenting an invention that was “on sale in this country, more than one year prior to the date of the application for...more
1/31/2019
/ America Invents Act ,
Appeals ,
Assignment of Inventions ,
Confidentiality Agreements ,
Helsinn Healthcare SA v Teva Pharmaceuticals USA Inc ,
Inventions ,
On-Sale Bar ,
Patent Applications ,
Patent Infringement ,
Patents ,
Pharmaceutical Industry ,
Pharmaceutical Patents ,
Public Use ,
Reaffirmation ,
Reversal ,
SCOTUS ,
Section 102 ,
Third-Party Relationships
Non-statutory, or obviousness-type, double patenting (“ODP”) is a judicially created doctrine that prohibits an inventor from effectively extending the monopoly on a patented invention by applying for a later patent with...more
Intellectual property disputes will again take their place on stage at the U.S. Supreme Court this term when the court addresses at least two IP questions. 1. Can the government challenge patents under the America Invents...more
In recent years, the U.S. Supreme Court has considered a number of intellectual property and related cases, but many issues remain unresolved. Therefore, it is important to look both at the cases currently before the U.S....more
The U.S. Supreme Court’s in TC Heartland v. Kraft Food, and subsequently the Court of Appeals for the Federal Circuit in In re Cray Inc., addressed where patent litigation can be filed under the patent venue statute, 28...more
While a U.S. patent provides the patent owner with a monopoly to prevent others from “making, using, offering for sale, or selling the invention throughout the United States,” there are significant limits to the...more
7/11/2018
/ 35 U.S.C. § 271(f)(2) ,
35 U.S.C. § 284 ,
Appeals ,
Damages ,
Domestic Injury ,
Extraterritoriality Rules ,
Foreign Sales ,
Lost Profits ,
Patent Act ,
Patent Infringement ,
Patents ,
Remand ,
SCOTUS ,
Vacated ,
WesternGeco LLC v Ion Geophysical Corporation
The United States International Trade Commission (“ITC”) is a Federal agency that deals with matters involving trade. Among its many responsibilities, the ITC investigates a variety of issues related to trade including...more
Currently, the standard for claim construction is different in AIA reviews before the United States Patent and Trademark Office’s (“USPTO”) Patent Trial and Appeal Board (“PTAB) than in proceedings in federal district courts...more
The Court of Appeals for the Federal Circuit just highlighted another approach plaintiffs can use to overcome early challenges to the validity of patent claims under 35 U.S.C. §101. What is that approach? It is a classic...more
The Leahy-Smith America Invents Act (“AIA”) provided for trials before the Patent Trial and Appeal Board (“PTAB”) of the United States Patent and Trademark Office (“USPTO”) in inter partes reviews, post-grant reviews, the...more
Until the U.S. Supreme Court’s May 22, 2017 ruling in TC Heartland v. Kraft Foods, the Court of Appeals for the Federal Circuit and the United States district courts had interpreted the patent venue statute, 28 U.S.C....more
Simon Tam is the lead singer of the rock group call “The Slants’, which is composed of Asian-Americans. Tam applied for federal trademark registration of the band’s name. While the term “slants” is a derogatory term for...more
7/7/2017
/ Disparagement ,
First Amendment ,
Free Speech ,
Lanham Act ,
Matal v Tam ,
Music Industry ,
SCOTUS ,
The Slants ,
Trademark Registration ,
Trademarks ,
USPTO ,
Viewpoint Discrimination
For over 25 years, the Court of Appeals for the Federal Circuit and the United States district courts have interpreted the patent venue statute 28 U.S.C. §1400(b) to allow plaintiffs to bring patent infringement cases against...more
The Patent Trial and Appeal Board (“PTAB”) has rarely allowed patent owners to replace or modify claims during inter partes review (“IPR”), covered business method review, or post-grant review. In fact, in April 2016 the...more
In Life Technologies v. Promega Corporation, the U.S. Supreme Court addressed whether supplying a single component from the United States of a multicomponent invention assembled abroad constitutes patent infringement under 35...more