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

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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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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

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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

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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

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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: 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

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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

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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

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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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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

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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

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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

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Intellectual Property Alert: Tam Trademark Victory May Provide Game Plan for Washington Redskins

Last week, the Federal Circuit held en banc that the disparagement provision of Section 2(a) of the Lanham Act is unconstitutional in violation of the First Amendment. Writing for the majority in In Re Simon Shiao Tam on…more

Disparagement, First Amendment, Popular, Redskins, The Slants

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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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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

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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

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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

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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

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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

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PTAB Puts the Brakes on Applying the Same Element in a Reference to 2 Elements in a Claim

In a decision denying institution of inter partes review, the PTAB declined to let a single structure in an applied reference satisfy two elements in a challenged claim…more

Claim Construction, Inter Partes Review Proceedings, Patent Trial and Appeal Board, Patents

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2015 DMCA Exemptions In Detail: When Is It OK to Technologically Circumvent Copyright Protections?

On October 28, 2015, the LOC reported a new set of regulations regarding exemptions to the DMCA provision that prohibits circumvention of technological measures that control access to copyrighted works. Here's a summary of those…more

3D Printing, Copyright, DMCA, Library of Congress, Medical Devices

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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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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

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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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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

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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

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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

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PTAB Denies Amgen’s IPR in Win for AbbVie – Article “Suggests a High Degree of Unpredictability” in the Art at Time of Invention

The Patent Trial and Appeal Board recently denied institution of Amgen’s inter partes review against an AbbVie patent covering HUMIRA® (currently, the best-selling drug in the world)…more

AbbVie, Amgen, Claim Construction, Inter Partes Review Proceedings, Patent Trial and Appeal Board

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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

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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

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Eight Days Late, and an Exercise of Discretion Short — PTAB Refuses to Conform to an IPR Settlement

35 U.S.C. § 317(a) states that “an inter partes review … shall be terminated with respect to any petitioner upon the joint request of the petitioner and the patent owner, unless the Office has decided the merits of the…more

Inter Partes Review Proceedings, Motion to Dismiss, Non-Judicial Settlement Agreements, Patent Trial and Appeal Board, Patent Validity

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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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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

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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

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Preparing For The Obvious At The PTAB

There is little debate that inter partes reviews have proven to be an effective means of challenging the validity of a patent. During the first two-and-a-half years, more than 73 percent of claims originally challenged in IPR…more

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

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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

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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

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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

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