Banner & Witcoff, Ltd.

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

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

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
| Civil Procedure, Intellectual Property

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
| Constitutional Law, Intellectual Property

PTAB Holds Claims Invalid That Were Held To Be Not Invalid In Litigation Appeal

The Patent Trial and Appeal Board recently held claims in two separate patents to be invalid that were previously held to be not invalid in a litigation appeal. In separate inter partes review proceedings, the PTAB held that the…more
| Intellectual Property, Science, Computers, & Technology

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

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
| Business Torts, Civil Procedure, Intellectual Property

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
| Intellectual Property

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
| Communications & Media Law, Intellectual Property, International Law & Trade, Mergers & Acquisitions, Science, Computers, & Technology

Which Is Better – Patent Arbitration Or Patent Post-Issuance Proceedings?

Tom Brady, New England Patriots quarterback, has seemingly won his dust-up with the National Football League over the air pressure in footballs. Brady received a four-game suspension after an NFL investigation of “Deflategate,”…more
| Administrative Law, Alternative Dispute Resolution (ADR), Civil Procedure, Intellectual Property

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
| Commercial Law & Contracts, Finance & Banking, Intellectual Property

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
| Civil Procedure, Intellectual Property, Science, Computers, & Technology
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Other U.S. Locations
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