Banner & Witcoff, Ltd.

Ten South Wacker Drive
Chicago, IL 60606-7407, United States

  • 312.463.5000
  • 312.463.5001

To Stay or Not to Stay…

The Federal Circuit recently decided its second case on the issue of staying a district court patent infringement litigation pending Covered Business Method (CBM) review. In Benefit Funding Systems v. Advance America Cash, Case…more

Covered Business Method Proceedings, Motion To Stay, Patent Infringement, Patent Litigation, Patent Trial and Appeal Board

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Global PHP And IP5 – Latest Iteration In The Patent Prosecution Highway

The Patent Prosecution Highway (also referred to as the “PPH”)embodies numerous bilateral agreements between dozens of countries providing that an indication of allowable subject matter in one country may trigger accelerated…more

Patent Litigation, Patent Prosecution Highway, Patents

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Octane Fitness v. Icon and Highmark v. Allcare — Pivotal Changes to Court Awarded Attorney’s Fees in Patent Litigations

April 30, 2014 - On Tuesday, in two unanimous decisions, the Supreme Court laid down a pair of pivotal changes to the rules governing court awarded attorney's fees in patent litigations... Please see full alert below for…more

Attorney's Fees, Highmark v. Allcare, Octane Fitness v. ICON, Patent Infringement, Patent Litigation

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Global PHP And IP5 – Latest Iteration In The Patent Prosecution Highway

The Patent Prosecution Highway (also referred to as the “PPH”)embodies numerous bilateral agreements between dozens of countries providing that an indication of allowable subject matter in one country may trigger accelerated…more

Patent Litigation, Patent Prosecution Highway, Patents

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The Google Books Case – Here’s the Skinny

I’m sure many of us have fond memories of the venerable library card catalog: the musty smell, the tiny wooden drawers and their endless deck of equally tiny, yellowed cards on which someone laboriously typed the Dewey Decimal…more

Copyright, Fair Use, Google, Google Books

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Supreme Court Debates Laches Defense — Change Is Coming

Jan. 22, 2014 — In an energetic oral argument on Jan. 21 that would have made first-year law students cringe, the Supreme Court debated the proper role of laches as a defense against the backdrops of statutory language versus…more

Copyright, Equitable Relief, Laches, MGM, Patent Litigation

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PTAB Continues to Deny IPR Petitions, Based on Arguments Incorporated By Reference

September 22, 2014 – For the second time in a month (see our previous PTAB Highlight regarding IPR2014-00491 below), the PTAB has refused to consider arguments incorporated by reference into an IPR petition…more

Inter Partes Review Proceedings, Patent Infringement, Patent Litigation, Patent Trial and Appeal Board, Patents

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Intellectual Property Alert: Supreme Court Considers Whether Judge or Jury Should Tackle Trademark “Tacking”

On December 3, 2014, the United States Supreme Court heard oral arguments in the case Hana Financial, Inc. v. Hana Bank et al., on writ of certiorari from the United States Court of Appeals for the Ninth Circuit. This is the…more

Appeals, Hana Financial v Hana Bank, Oral Argument, Petition for Writ of Certiorari, Popular

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“Do the Due”: Performing proper diligence when assessing IP assets for acquisition - Knowing all of the benefits and issues before acquisition is the only way to ensure a well-reasoned patent acquisition

The concept of due diligence often arises when intellectual property (IP) assets become available for potential acquisition. Any number of reasons may lead to this availability. An asset may be for sale due to an entity going…more

Business Assets, Due Diligence, Patents

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Three Rounds to Knock Out Ultramercial’s Patent on “Advertising as Currency”

After sparring three separate rounds at the Court of Appeals for the Federal Circuit, in a panel opinion authored by Judge Lourie, the Federal Circuit affirmed the district court’s grant of Defendant WildTangent’s pre-answer…more

Appeals, Motion to Dismiss, Online Advertisements, Patent Litigation, Patent-Eligible Subject Matter

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Intellectual Property Alert: Supreme Court Hears Oral Arguments in B&B Hardware, Inc. v. Hargis Industries, Inc.

On December 2, 2014, the Supreme Court of the United States heard oral arguments in B&B Hardware, Inc. v. Hargis Industries, Inc., the first trademark case to reach the Court in nearly ten years. William F. Jay, of Washington,…more

Administrative Hearings, B&B Hardware v Hargis Industries, Claim Preclusion, Infringement, Oral Argument

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PTAB Provides Guidance for Meeting Burden to Show Written Description for Substitute Claim

September 24, 2014 – In a Final Written Decision finding the patentee’s claim 1 unpatentable, the PTAB denied a motion to add a substitute claim that added hundreds of words to challenged claim 1. The PTAB held that the patentee…more

Burden of Proof, Patent Infringement, Patent Litigation, Patent Trial and Appeal Board, Patents

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Intellectual Property Alert: U.S. Supreme Court Rules in ABC v. Aereo

On June 26, 2014, the U.S. Supreme Court decided American Broadcasting Companies, et al. v. Aereo. The 6-3 ruling holds that Aereo’s business model of streaming live broadcast television content over the Internet to its users,…more

ABC, ABC v Aereo, Aereo, Broadcasting, Cable Television Providers

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Aesthetic Functionality in the TTAB since Louboutin

The doctrine of aesthetic functionality was revived in the recent Louboutin case to protect the competitive need to use color to communicate a particular message. In that case, Christian Louboutin S.A. tried to enforce its…more

Aesthetic Functionality, Christian Louboutin, Functionality, Trademark Trial and Appeal Board, Trademarks

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PTAB Refuses to Give Petitioner a Second Chance to Articulate Reasons for Invalidity

November 10, 2014 – In a decision denying institution of inter partes review, the PTAB executes it discretion under 35 U.S.C. § 325(d) to refuse to give a petitioner a second chance to provide invalidity arguments…more

Inter Partes Review Proceedings, Obviousness, Patent Trial and Appeal Board, Patents

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Supreme Court Allows Copyright Action, Holds No Laches Defense

May 20, 2014 — Yesterday, in Petrella v. Metro-Goldwyn-Mayer, Inc. (No. 12-1315), the Supreme Court ruled that the doctrine of laches could not be invoked to bar a copyright claim that was brought within the statutorily allowed…more

Copyright, Copyright Infringement, Laches, MGM, Petrella v. MGM

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PTAB Cracking Down on Serial IPR Petitions

November 4, 2014 — The estoppels of 35 U.S.C. §315(e)(1) don’t kick in to bar a petitioner from filing a second inter partes review petition against the same patent until a final written decision is rendered in the first. Hence,…more

Estoppel, Inter Partes Review Proceedings, Patent Trial and Appeal Board, Patents, Prior Art

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Three Rounds to Knock Out Ultramercial’s Patent on “Advertising as Currency”

After sparring three separate rounds at the Court of Appeals for the Federal Circuit, in a panel opinion authored by Judge Lourie, the Federal Circuit affirmed the district court’s grant of Defendant WildTangent’s pre-answer…more

Appeals, Motion to Dismiss, Online Advertisements, Patent Litigation, Patent-Eligible Subject Matter

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Don’t Try to Barnstorm Proof of Printed Publication

The PTAB recently denied institution of inter partes review based on a petitioner’s failure to prove that a document was indeed a printed publication qualifying as prior art to the patent at issue…more

Inter Partes Review Proceedings, Patent Trial and Appeal Board, Patents, Printed Publications, Prior Art

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U.S. Supreme Court Clarifies Definiteness Standard

Yesterday, the U.S. Supreme Court issued its ruling in Nautilus, Inc. v. Biosig Instruments, Inc. involving the definiteness requirement of 35 U.S.C. § 112 (b). The patent at issue relates to a heart rate monitor capable of…more

Claim Construction, Indefiniteness, Medical Devices, Nautilus Inc. v. Biosig Instruments, Patent Infringement

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Intellectual Property Alert: Computer-Implemented Inventions: Ideas That Are Fundamental Truths And Generically Implemented Are Not Patent Eligible

June 20, 2014 — In a unanimous opinion authored by Justice Thomas on June 19, 2014, the Court held in Alice Corp. v. CLS Bank Int’l, 13-298, that all the patent claims in the case, meaning all method, system and…more

Alice Corporation, America Invents Act, CLS Bank, CLS Bank v Alice Corp, Mayo v. Prometheus

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PTAB Provides Guidance for Demonstrating Prior Invention to Overcome 102(a) Challenge

In a Final Written Decision finding the patent owner’s claims unpatentable, the PTAB provided guidance on establishing prior invention to overcome a challenge under 35 U.S.C. 102(a). The PTAB also commented concerning the…more

Inter Partes Review Proceedings, Patent Litigation, Patent Trial and Appeal Board, Patents

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PTAB Rejects “Unusual” Inventor Testimony That His Own Invention Was Not Reduced To Practice and Finds His Claims Not Unpatentable

In a final written decision, the PTAB found the petitioner failed to prove challenged claims unpatentable and rejected “unusual” inventor testimony about reduction to practice that was opposite the typical situation where…more

Inventions, Inventors, Patent Infringement, Patent Litigation, Patent Trial and Appeal Board

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Developments in Patent Law 2013; The D.C. Bar Year in Review

In this article: - Patentability, Validity, and Procurement of Patents - Interpretation and Infringement of Patents - Enforcement of Patents - Patents at the U.S. Supreme Court - Excerpt from…more

AMP v Myriad, Apple, Attorney's Fees, Claim Construction, CLS Bank v Alice Corp

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Areas of Practice
  • Antitrust & Trade Regulation
  • Appellate Practice
  • Intellectual Property
  • Litigation
Locations
Other U.S. Locations
  • D.C.
  • Massachusetts
  • Oregon
Number of Attorneys

50-100 Attorneys

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