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The USPTO Giveth and Taketh Away: New PTA Rules Following Novartis v. Lee

On January 9, 2015, the final rules were published regarding patent term adjustment (PTA) following the decision in Novartis AG v. Lee 740 F.3d 593 (Fed. Cir. 2014)…more
| Administrative Law, International Law & Trade, Science, Computers, & Technology

Supreme Court Holds Trademark Tacking is a Question, like any Inquiry from the Perspective of an Ordinary Purchaser or Consumer, Should be Decided by the Jury

Background: In a priority contest between trademark owners, the owner of a mark is entitled to “tack on” earlier use of a similar mark provided that the two marks are sufficiently similar. Some circuits treated the question of…more
| Civil Procedure, Intellectual Property

Supreme Court Endorses De Novo Review of Claim Construction, But Holds that Subsidiary Facts Underlying Claim Construction are Reviewed for Clear Error

Background: Patent claim construction findings are a key aspect to patent infringement cases. Previously, the Federal Circuit reviewed the entire claim construction issue, including any subsidiary facts, de novo…more
| Civil Procedure, Intellectual Property, Science, Computers, & Technology

Common Mistakes in Petitions

Attorney Argument in the Claim Charts - In Tissue Transplant Technology Ltd. v. MiMedx Group, Inc., IPR2015-00320, Paper 6 (December 31, 2014), the Board granted the petition a filing date, but found the claim charts…more
| Civil Procedure, Intellectual Property, Science, Computers, & Technology

Rehearing . . . Granted?

In Handi Quilter, Inc. v. Bernina International AG, IPR2014-00270, Paper 17 (December 31, 2014), the Board granted petitioner’s request for rehearing of the Board’s decision denying institution of inter partes review. Although…more
| Commercial Law & Contracts, Intellectual Property, Science, Computers, & Technology

And Cats and Dogs Living Together . . .

Well perhaps not the mass hysteria that Dr. Venkman anticipated in Ghostbusters, but the granting of a motion to amend is still an unusual occurrence. However, in Riverbed Technology Inc. v. Silver Peak Systems, Inc.,…more
| Civil Procedure, Intellectual Property, Science, Computers, & Technology

Failure to Name Real Party in Interest Dooms Petition

In Paramount Home Entertainment Inc. v. Nissim Corp., IPR2014-00961, Paper 11 IPR2014-00962, Paper 11 (December 29, 2014), the Board denied institution of inter partes review of claims 1–27 of U.S. Patent No. 7,054,547 for…more
| Art, Entertainment, & Sports Law, Civil Procedure, Intellectual Property

New Filings for December 30, 2014

New Filings (1) - DePuy Orthopaedics, Inc., filed IRP2015-00510 challenging u.S. Patent No. 8,658,710 on OXIDATION-RESISTANT AND WEAR-RESISTANT POLYETHYLENES FOR HUMAN JOINT REPLACEMENTS AND METHODS FOR MAKING THEM,…more
| Civil Procedure, Intellectual Property

Institution Decisions for December 29, 2014

Institution Decisions (2) - Paramount Home Entertainment Inc. v. Nissim Corp., IPR2014-00961, Paper 11 (December 29, 2014), the Board denied institution of inter partes review of claims 1–5 of U.S. Patent No. 6,304,715 for…more
| Civil Procedure, Intellectual Property

Petitioner Authorized to File Sanctions Motion Against Inventor

In Shire Development LLC, LCS Group, LLC, IPR2014-00739, Paper 14 (December 23, 2014), the Board authorized petitioner to file a motion for sanctions after the inventor Dr. Louis Sanfilippo, send an email in violation of the…more
| Civil Procedure, Civil Remedies, Intellectual Property

Board Teaches Patent Owner About Precedent, and Petitioner About Showing Obviousness

Often times the best lessons are those learned at someone else’s expense. One such case is Valeo, Inc.v. Magna Electronics Inc., IPR2014-01206, Paper 13 (December 23, 2014). The Patent Owner urged the Board to exercise its…more
| Civil Procedure, Intellectual Property

Patent Filings, Institution Decisions and Dispositions for December 24, 2014

New Filings - HM Electronics, Inc. filed IPR2015-00491 challenging U.S. Patent No. 8,694,040 on a REMOTELY CONFIGURABLE WIRELESS INTERCOM SYSTEM FOR AN ESTABLISHMENT…more
| Civil Procedure, Intellectual Property

Unavailability of IPR Witness for Deposition Undercuts Testimony

Testimony from a witness in a prior reexamination, or other, proceeding may be useful information to a party in inter partes review proceedings. The party propounding such testimony should be prepared, however, to produce that…more
| Civil Procedure, Intellectual Property

Petitions Filed for December 23, 2014

Petitions Filed (3) - Sony Computer Entertainment America LLC filed IPR 2015-000396, challenging U.S. Patent No. 7,218,313, assigned to APLIX IP HOLDINGS CORPORATION…more
| Civil Procedure, Intellectual Property

Institution Decisions and Dispositions for December 22, 2014

Institution Decisions (1) - In Jiawei Technology (USA) Ltd. v. Simon Richmond, IPR2014-00935, Paper 11 (December 22, 2014), the Board instituted inter partes review of claims 1–7, 9, 10, 14, 17–20, 23, 28, 43, 45 and 48–50…more
| Civil Procedure, Intellectual Property, Science, Computers, & Technology
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