Banner & Witcoff, Ltd.

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
| Civil Procedure, Civil Remedies, Commercial Law & Contracts, Intellectual Property

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
| Civil Procedure, Intellectual Property

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
| Civil Procedure, Intellectual Property

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
| Civil Procedure, Civil Remedies, Intellectual Property

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

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
| Civil Procedure, Intellectual Property

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

Intellectual Property Alert: Federal Circuit Panel Not Sweet on TC Heartland’s Petition to Change Rules for Patent Venue

“Boy, doesn’t this feel like something a legislature should do?” So said Judge Moore on March 11 in the oral argument on the pending petition for a writ of mandamus in In re TC Heartland LLC. Judges Wallach and Linn rounded out…more
| Civil Procedure, Intellectual Property

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
| Civil Procedure, Intellectual Property

PTAB Denies Lupin’s IPR in Win for Pozen – Claimed Tablet That Provided Coordinated Drug Release Not Suggested by Prior Art, Which Had a Preferred Formulation That Provided the Reverse Release

The Patent Trial and Appeal Board recently denied institution of a Lupin inter partes review against a Pozen patent covering VIMOVO® (naproxen/esomeprazole magnesium delayed-release tablets, commercially sold by Horizon Pharma…more
| Intellectual Property, Science, Computers, & Technology

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
| Intellectual Property, International Law & Trade, Science, Computers, & Technology

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
| Intellectual Property, Science, Computers, & Technology

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
| Art, Entertainment, & Sports Law, Constitutional Law, Indigenous Peoples, Intellectual Property

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

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
| Civil Procedure, Intellectual Property
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