Banner & Witcoff, Ltd.

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

  • 312.463.5000
  • 312.463.5001

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

IPR Petition Barred Under 35 U.S.C. § 315(b)

The PTAB denied a petition for inter partes review as barred under 35 U.S.C. § 315(b) because the PTAB determined that the petitioner was served with a complaint alleging infringement of the patent more than a year before it…more
| Civil Procedure, Intellectual Property

PTAB Dismisses Argument That Priority Date is a § 112 Issue Not Reviewable in an IPR

In a decision instituting inter partes review, the PTAB rejected a patent owner’s argument that the priority date of the patent is not reviewable in an IPR because it’s an issue under 35 U.S.C. § 112…more
| Administrative Law, Intellectual Property

Voluminous Declaration Leads to PTAB Denial of IPR Petition

August 28, 2014 – In a decision of interest, the PTAB denied institution of inter partes review due to the Petitioner’s excessive reliance on a voluminous supporting declaration..…more
| Civil Procedure, Intellectual Property

PTAB Draws Line on Admissibility of Declaration Evidence in IPR

In a break from the PTAB’s trend of admitting evidence and allowing objections to admissibility to go to the weight of the evidence, the Board excluded testimonial evidence concerning the contents of documents that were not…more
| Civil Procedure, Intellectual Property

PTAB Continues Hard Line on Motions for Additional Discovery, Door Left Open for Some Limited Discovery

August 28, 2014 – The PTAB continues to take a hard line on motions for additional discovery, but shows a willingness to grant some limited additional discovery, as the following four decisions illustrate..…more
| Civil Procedure, Electronic Discovery, Intellectual Property

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

Intellectual Property Alert: Computer-Implemented Inventions: Ideas That Are Fundamental Truths And Generically Implemented Are Not Patent Eligible

June 20, 2014 — In a unanimous opinion authored by Justice Thomas on June 19, 2014, the Court held in Alice Corp. v. CLS Bank Int’l, 13-298, that all the patent claims in the case, meaning all method, system and…more
| Civil Procedure, Intellectual Property, Science, Computers, & Technology

U.S. Supreme Court Clarifies Definiteness Standard

Yesterday, the U.S. Supreme Court issued its ruling in Nautilus, Inc. v. Biosig Instruments, Inc. involving the definiteness requirement of 35 U.S.C. § 112 (b). The patent at issue relates to a heart rate monitor capable of…more
| Civil Procedure, Intellectual Property

U.S. Supreme Court Says Induced Infringement Requires Direct Infringement, But Leaves Direct Infringement Standard to Federal Circuit

In a decision dated June 2, 2014, in the case Limelight Networks, Inc. v. Akamai Technologies, Inc. (No. 12-786), the U.S. Supreme Court held that a defendant is not liable for induced patent infringement under 35 U.S.C. §…more
| Civil Procedure, Intellectual Property

Supreme Court Allows Copyright Action, Holds No Laches Defense

May 20, 2014 — Yesterday, in Petrella v. Metro-Goldwyn-Mayer, Inc. (No. 12-1315), the Supreme Court ruled that the doctrine of laches could not be invoked to bar a copyright claim that was brought within the statutorily allowed…more
| Art, Entertainment, & Sports Law, Civil Procedure, Civil Remedies, Intellectual Property

Supreme Court Hears Arguments Regarding Induced Infringement in Limelight

On April 30, 2014, the Supreme Court heard arguments in the Limelight Networks, Inc. v. Akamai Technologies, Inc.... Please see full alert below for more information. …more
| Civil Procedure, Intellectual Property

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
| Civil Procedure, Civil Remedies, Intellectual Property

Justices Set to Rule on Test for Patent Indefiniteness

On April 28, 2014, the U.S. Supreme Court heard arguments in Nautilus Inc. vs. Boisig Instruments, Inc... Please see full alert below for more information. …more
| Civil Procedure, Intellectual Property

U.S. Supreme Court Hears Oral Arguments in ABC v. Aereo

April 23, 2014 - Yesterday, the U.S. Supreme Court heard oral arguments in American Broadcast Companies, et al. v. Aereo. The case presents issues of copyright law in the context of streaming video content over the internet, but…more
| Art, Entertainment, & Sports Law, Civil Procedure, Communications & Media Law, Intellectual Property
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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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