Banner & Witcoff, Ltd.

Federal Circuit IPR Scoreboard PTAB: 2 Patent Owner: 0

Last week the Federal Circuit issued its first decision in an appeal of a final decision from a post-issuance review proceeding under the America Invents Act. In a 2-1 decision, the Federal Circuit affirmed a Patent Trial and…more

Auto Manufacturers, Automotive Industry, Garmin International, Inter Partes Review Proceedings, Obviousness

See All Updates »

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

See All Updates »

Intellectual Property Alert: The Import of Electronic Data: Federal Circuit Appears Unlikely to Affirm Commission’s Jurisdiction over Digital “Articles”

The United States International Trade Commission (ITC or Commission) possesses unique powers under 19 U.S.C. § 1337 (Section 337). Upon finding that a party engaged in “unfair acts,” e.g., patent or trademark infringement, the…more

Digital Goods, Forum Selection, Imports, ITC, Jurisdiction

See All Updates »

Intellectual Property Alert: Heightened Patent Pleading Standard, Discovery Proportionality, and Other Recent Amendments to the Federal Rules of Civil Procedure

Amendments made by the Supreme Court to the Federal Rules of Civil Procedure (Rules) took effect December 1, 2015. The amendments fundamentally change litigation in federal courts, including heightening the standard for pleading…more

Discovery, Electronically Stored Information, Federal Rules of Civil Procedure, Patent Infringement, Pleading Standards

See All Updates »

Intellectual Property Alert: Google Books Affirmed as Fair Use

The Court of Appeals for the Second Circuit has affirmed a lower court’s finding that the Google Books project constitutes fair use, and is not an infringement of the copyrights in the millions of books contained in the project…more

Authors Guild, Commercial Use, Copyright, Copyright Infringement, Corporate Counsel

See All Updates »

Intellectual Property Alert: U.S. Supreme Court Hears Oral Arguments in Cuozzo Speed Technologies v. Lee

Today, the Supreme Court heard oral argument in Cuozzo Speed Technologies, LLC v. Lee. Two important issues are presented to the Court: 1. Whether the court of appeals erred in holding that, in IPR proceedings, the…more

Broadest Reasonable Interpretation Standard, Claim Construction, Cuozzo Speed Technologies v Lee, Inter Partes Review Proceedings, Patent Trial and Appeal Board

See All Updates »

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

See All Updates »

Intellectual Property Alert: Federal Circuit Hears Oral Arguments in McRO v. Namco Bandai: Will Patent-Eligibility of Computer Software Survive?

In the wake of the Supreme Court’s 2014 decision in Alice Corp. v. CLS Bank, courts have been struggling to define the line between abstract idea and patent-eligible invention. The Federal Circuit today heard oral arguments in…more

Abstract Ideas, CLS Bank v Alice Corp, Patent Infringement, SCOTUS, Software Patents

See All Updates »

Maximizing The Financial Value Of IP Assets

INTELLECTUAL PROPERTY IN THE INFORMATION AGE - How vital can intellectual property (IP) be to a company’s balance sheet? Just ask Limelight Networks. The company’s shares fell 18 percent after it lost a patent infringement…more

IP Portfolio, Value Maximization

See All Updates »

Intellectual Property Alert: The USPTO Announces Additional Guidelines for Determining Subject Matter Eligibility Under 35 U.S.C. § 101

On July 30, 2015, the United States Patent and Trademark Office issued additional guidelines for use by USPTO personnel in determining subject matter eligibility under 35 U.S.C. § 101. These additional guidelines follow the…more

Abstract Ideas, Bilski, Claim Construction, CLS Bank v Alice Corp, Comment Period

See All Updates »

“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

See All Updates »

Intellectual Property Alert: Copyright Office Focuses on Future with Strategic Plan

“The Congress shall have Power…To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries.” — CONSTITUTION OF THE…more

Copyright Office, Strategic Planning

See All Updates »

Intellectual Property Alert: Copyright Office Focuses on Future with Strategic Plan

“The Congress shall have Power…To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries.” — CONSTITUTION OF THE…more

Copyright Office, Strategic Planning

See All Updates »

Intellectual Property Alert: Federal Circuit Holds Claims Indefinite Based on Prosecution History in Teva Pharmaceuticals USA v. Sandoz, Inc.

On June 18, 2015, the United States Court of Appeals for the Federal Circuit released its decision in Teva Pharmaceuticals USA, Inc. v. Sandoz, Inc. The case was on remand from the Supreme Court, which vacated the Federal…more

Claim Construction, Clear Error Standard, De Novo Standard of Review, Patent Invalidity, Patent Litigation

See All Updates »

Intellectual Property Alert: Federal Circuit Rejects Opportunity to Limit Patent Suits in Eastern District of Texas

On Friday, April 29, 2016, the Court of Appeals for the Federal Circuit deniedi TC Heartland LLC’s petition for a writ of mandamus to direct the United States District Court for the District of Delaware to either dismiss or…more

Kraft, Mandamus Petitions, Patent Infringement, Personal Jurisdiction, Popular

See All Updates »

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

See All Updates »

Intellectual Property Alert: U.S. Supreme Court Hears Arguments in Kirtsaeng v. John Wiley & Sons, Inc.

Yesterday, April 25, 2016, the U.S. Supreme Court heard oral arguments in Kirtsaeng v. John Wiley & Sons, Inc., No. 15-375. The Court’s ruling in this case ultimately may affect the circumstances in which attorney’s fees are…more

Attorney's Fees, Copyright Infringement, Kirtsaeng v. John Wiley & Sons, SCOTUS, The Copyright Act

See All Updates »

Intellectual Property Alert: Apple v. Samsung: The Federal Circuit Clarifies Design Patent Principles Law

In a much anticipated opinion issued by the U.S. Court of Appeals for the Federal Circuit in Apple v. Samsung on May 18, the design patent law with respect to remedies and the infringement test remains robust. Notably, and…more

Appeals, Apple v Samsung, Design Patent, Functionality, Patent Infringement

See All Updates »

Intellectual Property Alert: The Supreme Court Points Courts to Juries on Issue of Trademark Tacking

On January 21, 2015, the Supreme Court issued a unanimous decision, affirming the ruling of the U.S. Court of Appeals for the Ninth Circuit, holding that trademark tacking is an inquiry that operates from the perspective of an…more

Hana Financial v Hana Bank, Jury Questions, Likelihood of Confusion, SCOTUS, Tacking

See All Updates »

The Importance Of A Trademark Registration In A Global Economy

A trademark registration is an important asset in a global and online economy. Owning a trademark registration can increase a company’s value to potential investors or purchasers, allow a company to secure rights in a mark…more

Customs and Border Protection, Domain Names, E-Commerce, Global Economy, ICANN

See All Updates »

Intellectual Property Alert: Federal Circuit Limits ITC Jurisdiction to “Material Things”

The Court of Appeals for the Federal Circuit has limited the scope of 19 U.S.C. § 1337 (Section 337) to “material things,” which does not include electronic transmissions of digital data. ClearCorrect Operating, LLC v. ITC,…more

Chevron Deference, Electronic Data Transmissions, ITC, Jurisdiction, Popular

See All Updates »

More March Madness: PTAB Slams Petitioner and Insufficient IPR Petition

In a final written decision of an inter partes review (IPR), the Patent Trial and Appeal Board (PTAB) finds the petition did not meet statutory and regulatory requirements (including 35 U.S.C. § 312(a)(3) and 37 C.F.R. §§…more

Administrative Procedure Act, Inter Partes Review Proceedings, Patent Litigation, Patent Trial and Appeal Board

See All Updates »

Intellectual Property Alert: Patent Agent Privilege Confirmed by Federal Circuit

Yesterday, in a 2-1 mandamus decision in the case In re Queens University, the Federal Circuit ordered the district court to withdraw its order compelling discovery of communications with non-attorney patent agents. The…more

Discovery, Patent Applications, Patents, Privilege Waivers, Writ of Mandamus

See All Updates »

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

See All Updates »

Intellectual Property Alert: U.S. Supreme Court Will Weigh in on Star Athletica LLC v. Varsity Brands Inc.

Today, the U.S. Supreme Court agreed to review an August 2015 ruling by the 6th U.S. Circuit Court of Appeals in Cincinnati in Star Athletica LLC v. Varsity Brands Inc. as to whether Varsity’s two-dimensional graphic designs are…more

Copyright Infringement, Fashion Design, Petition for Writ of Certiorari, SCOTUS, Uniforms

See All Updates »

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

See All Updates »

Certain Uncertainty: The Future Of Computer Software Patents

LIFE AFTER ALICE ... THE STORY SO FAR - Since the Alice decision came down last June, the world of computer software patents has been upended, both in litigation and in prosecution. In the realm of prosecution, patent…more

Abstract Ideas, CLS Bank v Alice Corp, Guidance Update, Patent-Eligible Subject Matter, Patents

See All Updates »

Intellectual Property Alert: Obama Signs Law Allowing Trade Secret Owners to Sue in Federal Court

Yesterday, President Obama signed the Defend Trade Secrets Act (DTSA), enacting a federal trade secrets law. Much of the law existed under the federal Economic Espionage Act of 1996 (EEA). However, for the first time, the DTSA…more

Asset Seizure, Defend Trade Secrets Act (DTSA), Economic Espionage Act, Inevitable Disclosure Doctrine, Misappropriation

See All Updates »

Carefully Consider Corporate Relationships When Determining Real Parties-In-Interest

The PTAB denies institution of an inter partes review (IPR) based on a failure to list a parent corporation as a real party-in-interest (RPI)…more

America Invents Act, Inter Partes Review Proceedings, Patent Trial and Appeal Board, Patents, Real Party in Interest

See All Updates »

Intellectual Property Alert: Revised Federal Rules of Civil Procedure Abrogate Rule 84 and Eliminate Appendix of Forms

The revised Federal Rules of Civil Procedure contain changes that may impact patent litigation at the district court level. The revised rules went into effect on December 1, 2015. The revised rules were approved by the United…more

Federal Rules of Civil Procedure, Patent Infringement, Patent Litigation, Pleading Standards, SCOTUS

See All Updates »

Intellectual Property Alert: U.S. Supreme Court Hears Oral Arguments in Cuozzo Speed Technologies v. Lee

Today, the Supreme Court heard oral argument in Cuozzo Speed Technologies, LLC v. Lee. Two important issues are presented to the Court: 1. Whether the court of appeals erred in holding that, in IPR proceedings, the…more

Broadest Reasonable Interpretation Standard, Claim Construction, Cuozzo Speed Technologies v Lee, Inter Partes Review Proceedings, Patent Trial and Appeal Board

See All Updates »

Intellectual Property Alert: USPTO Announces Expedited Patent Appeal Pilot Program

Yesterday, the United States Patent and Trademark Office announced the “Expedited Patent Appeal Pilot” to provide a temporary basis for an applicant to have an ex parte appeal to the Patent Trial and Appeal Board accorded…more

Ex Parte, Federal Register, Intellectual Property Litigation, Patent Litigation, Patent Trial and Appeal Board

See All Updates »

Intellectual Property Alert: USPTO Issues Second Round of AIA Rule Changes

On August 19, 2015, the United States Patent and Trademark Office announced a new round of proposed changes to practice before the Patent Trial and Appeal Board, including inter partes review, post-grant review, the transitional…more

Additional Discovery, America Invents Act, Claim Construction, Comment Period, Inter Partes Review Proceedings

See All Updates »

Finally, the PTAB Gets Told to Give Patent Owners in IPR Some Due Process

As short a time period as inter partes reviews have existed, since they first started in 2012, patent owners have learned that they are often unlikely to get due process in IPRs from the Patent Trial and Appeal Board. This is a…more

Administrative Procedure Act, Corporate Counsel, Dell, Due Process, Inter Partes Review Proceedings

See All Updates »

Intellectual Property Alert: Federal Circuit’s En Banc Decision in Lexmark International, Inc. v. Impression Products, Inc. Makes Significant Determinations Relating to the Doctrine of Patent Exhaustion

On February 12, 2016, the Federal Circuit issued its en banc decision in Lexmark International, Inc. v. Impression Products, Inc. The en banc decision made two significant determinations relating to the doctrine of patent…more

En Banc Review, First Sale Doctrine, Foreign Sales, Lexmark, Patent Exhaustion

See All Updates »

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

See All Updates »

Intellectual Property Alert: The U.S. and Japan Join the Hague System

May 13, 2015 — Today, the United States and Japan will become contracting parties to the Hague System for the International Registration of Industrial Designs. The Hague System allows the filing of a single international design…more

Design Patent, EU, Hague Agreement, Industrial Design, Japan

See All Updates »

First IPR Design Patent Decision Affirmed by Federal Circuit

In the first inter partes review of a design patent, the Federal Circuit affirmed the Patent Trial and Appeal Board’s final decision that the only claim was unpatentable. Design patent D617,465 on a drinking cup was the subject…more

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

See All Updates »

Intellectual Property Alert: Obama Signs Law Allowing Trade Secret Owners to Sue in Federal Court

Yesterday, President Obama signed the Defend Trade Secrets Act (DTSA), enacting a federal trade secrets law. Much of the law existed under the federal Economic Espionage Act of 1996 (EEA). However, for the first time, the DTSA…more

Asset Seizure, Defend Trade Secrets Act (DTSA), Economic Espionage Act, Inevitable Disclosure Doctrine, Misappropriation

See All Updates »

Certain Uncertainty: The Future Of Computer Software Patents

LIFE AFTER ALICE ... THE STORY SO FAR - Since the Alice decision came down last June, the world of computer software patents has been upended, both in litigation and in prosecution. In the realm of prosecution, patent…more

Abstract Ideas, CLS Bank v Alice Corp, Guidance Update, Patent-Eligible Subject Matter, Patents

See All Updates »

2015 Recent Developments in Patent Law - Case Law

Patentability, Validity, and Procurement of Patents - Statutory Subject Matter – Computer Software and Genes - Intellectual Ventures I LLC v. Capital One Bank (USA), N.A., 792 F.3d 1363 (Fed. Cir. 2015). …more

Boilerplate Language, Damages, Design Patent, Patent Infringement, Patent Trial and Appeal Board

See All Updates »

Contact

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

  • 312.463.5000
  • 312.463.5001

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

This profile may constitute attorney advertising. Prior results do not guarantee a similar outcome. Any correspondence with this profile holder does not constitute a client/attorney relationship. Neither the content on this profile nor transmissions between you and the profile holder through this profile are intended to provide legal or other advice or to create an attorney-client relationship.

"My best business intelligence, in one easy email…"

Your first step to building a free, personalized, morning email brief covering pertinent authors and topics on JD Supra:

Sign up to create your digest using LinkedIn*

*By using the service, you signify your acceptance of JD Supra's Privacy Policy.

Already signed up? Log in here

*With LinkedIn, you don't need to create a separate login to manage your free JD Supra account, and we can make suggestions based on your needs and interests. We will not post anything on LinkedIn in your name. Or, sign up using your email address.
×