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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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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Intellectual Property Alert: Federal Circuit Considers Whether ITC Can Properly Exclude Imported Products That Only Infringe After Importation

On February 5, 2015, the Court of Appeals for the Federal Circuit sitting en banc heard oral arguments in Suprema, Inc. v. Int’l Trade Comm’n, Fed. Cir., No. 2012-1170, a case involving the ability of the International Trade…more

Appeals, En Banc Review, Imports, Induced Infringement, ITC

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Intellectual Property Alert: Akamai v. Limelight: Federal Circuit Limits Direct Infringement of Method Claims

On remand from the Supreme Court, the Federal Circuit held that Limelight did not directly infringe an asserted method claim under 35 U.S.C. § 271(a) because the “sweeping notions of common-law tort liability” do not apply to…more

Direct Infringement, Limelight v Akamai, Patent Infringement, Patents, Remand

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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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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: 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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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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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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Use Wayback Machine with Caution: PTAB Excludes Website Printouts from Wayback Machine

In a decision on the patent owner’s motion to exclude evidence, the PTAB excluded certain website printouts from the Wayback Machine as lacking authentication…more

Authentication, Inter Partes Review Proceedings, Patent Trial and Appeal Board, Patents, Websites

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TTAB Appeal at USDC – Win or Lose – You Pay the USPTO Costs

On April 23, 2015, the Fourth Circuit Court of Appeals ruled (2-1) in the case of Shammas v. Focarino, that, win or lose, a party who files a U.S. district court appeal from a decision of the Trademark Trial and Appeal Board…more

Appeals, Litigation Fees & Costs, Trademark Trial and Appeal Board, USPTO

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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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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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Benefits of Showing Discovery as “Routine” Instead of “Additional”

The PTAB issued an order granting in part a request for discovery by an IPR petitioner. IPR2014-00727 - C&D Zodiac, Inc. v. B/E Aerospace, Inc…more

America Invents Act, Discovery, Inter Partes Review Proceedings, Patent Trial and Appeal Board, Patents

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No More Soup For You – PTAB Rejects Second IPR Petition Under 35 U.S.C. § 325(d)

The Patent Trial and Appeal Board recently denied an IPR petition under 35 U.S.C. § 325(d) because the petitioner’s arguments were substantially similar to those it made in an earlier IPR petition. Both petitions involved U.S…more

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

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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: Supreme Court Affirms Brulotte, “Green-Lights” Collecting Patent Royalties After Patents Expire

In an important decision for patent licensing freedom, on June 22, 2015, the United States Supreme Court cleared the way for spreading patent royalty payments after the expiration of patents, in some simple and other complex…more

Brulotte, Contract Term, IP License, Kimble v Marvel Enterprises, Patent Litigation

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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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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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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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