Banner & Witcoff, Ltd.

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

  • 312.463.5000
  • 312.463.5001

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
| Civil Procedure, Communications & Media Law, Intellectual Property

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
| Civil Procedure, Communications & Media Law, Intellectual Property

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
| Civil Procedure, Communications & Media Law, Intellectual Property, Science, Computers, & Technology

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
| Civil Procedure, Intellectual Property

PTAB Follows District Court’s Claim Construction

November 10, 2014 – In construing a term in a claim of an expired patent, the PTAB followed the district court in adopting the petitioner’s proposed construction…more
| Civil Procedure, Intellectual Property

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
| Civil Procedure, Intellectual Property, Science, Computers, & Technology

“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
| Commercial Law & Contracts, Mergers & Acquisitions, Intellectual Property

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
| Civil Procedure, Intellectual Property

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
| Civil Procedure, Finance & Banking, Intellectual Property, Science, Computers, & Technology

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
| Intellectual Property, Science, Computers, & Technology

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
| Civil Procedure, Intellectual Property

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
| Civil Procedure, Intellectual Property

PTAB Permits Entry of Declaration Testimony in an IPR Without Opposing Party’s Opportunity to Cross- Exam

In a Conduct of the Proceeding Order and Decision Denying Patent Owner’s Motion for Additional Discovery, the PTAB addresses the situation of proffered declaration testimony that was not prepared for the purposes of the inter…more
| Civil Procedure, Intellectual Property, International Law & Trade

PTAB Denies Institution of Inter Partes Review of Design Patent, Noting 35 U.S.C. 171 is Not a Proper Basis for IPR

In its decision denying institution of two IPRs, the PTAB outlines how allegedly functional elements of a design patent claim are addressed in an IPR obviousness analysis…more
| Civil Procedure, Intellectual Property

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

50-100 Attorneys

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