Harness, Dickey & Pierce, PLC

Regarding Beauregarding

A Beauregard claim is a claim to a computer program written as a claim to an article of manufacture: a computer-readable medium on which instructions are encoded for carrying out a process. Beauregard appealed the rejection of…more
| Civil Procedure, Intellectual Property, Science, Computers, & Technology

Share and Share Alike? Not so fast.

The joint ownership of patents is governed by 35 USC 262: - In the absence of any agreement to the contrary, each of the joint owners of a patent may make, use, offer to sell, or sell the patented invention within the…more
| Civil Procedure, Commercial Law & Contracts, Intellectual Property, Science, Computers, & Technology

Provisional Applications Narrow Construction of Four Patents, Broaden Construction of Two

In the Trustee of Columbia University in the City of New York v, Symantec Corporation, [2015-1146] (February 2, 2016) the Federal Circuit affirmed the district court’s claim construction order and subsequent partial final…more
| Civil Procedure, Intellectual Property, Science, Computers, & Technology

Board Explains the Process for Evidentiary Objections—and Illustrates the Severe Penalty for Not Following It

Practitioners who are used to district court litigation may be surprised—and tripped up—by the rules for objecting to evidence in IPRs, which differ significantly from the approach used in litigation. The Board’s Final Written…more
| Civil Procedure, Intellectual Property, Science, Computers, & Technology

APA Review of IPR Decisions to Institute Proving to be a Dead-end

The recent ruling in Medtronic v. Lee, No. 1-15-cv-946 (E.D. Va. Jan. 21, 2016) clarifies certain important questions about whether APA review is available when a petitioner is dissatisfied with the PTAB institution decision…more
| Civil Procedure, Intellectual Property, Science, Computers, & Technology

But, Why?

In Cutsforth, Inc. v. Motive Power, Inc., [2015-1316] the Federal Circuit vacated a PTAB decision that claims 1–24 of U.S. Patent No. 7,990,018 were invalid for obviousness because the Board did not adequately describe its…more
| Civil Procedure, Intellectual Property, Science, Computers, & Technology

Know your patent documents

Most are familiar with a U.S. utility patent, have a seven digit number followed by a “B”..…more
| Civil Procedure, Intellectual Property, Science, Computers, & Technology

Should You or Any of Your C&D Team be Caught or Killed the Client will Disavow any Knowledge

Late in December, the attorneys for Metallica sent a Cease and Desist letter to Sandman, a Metallica tribute band playing in Toronto. Sandman lead, Joe Di Taranto, posted a copy of the letter on his Facebook page. After…more
| Art, Entertainment, & Sports Law, Civil Procedure, Communications & Media Law, Intellectual Property

Cruciform – the Right Word for the Right Shape

Finding the perfect words to describe an invention is the cross that patent attorneys have to bear. When trying to describe something that it cross-shaped, the word cruciform (see, e.g., U.S. Patent No, 8,517,327) can make the…more
| Civil Procedure, Intellectual Property

Just Because You Can, Doesn’t Mean You Should

In Ethicon Endo-Surgery, Inc. v. Covidien LP, [2014-1771](January 13, 2016), the Federal Circuit held that the same panel of the PTAB can make the decision to institute an IPR and the final written decision, and that the PTAB…more
| Administrative Law, Civil Procedure, Intellectual Property, Science, Computers, & Technology

BioPharma Patents: Quick Tips & News - January 2016

Subject matter eligibility and “laws of nature.” As reported in our July 2015 newsletter, the Federal Circuit invalidated claims to a method of diagnosing fetal abnormalities without amniocentesis. This precedent—if it…more
| Civil Procedure, Intellectual Property, Science, Computers, & Technology

January 31, 2016 - Patent of the Day

On January 31, 1950, Lawrence Welk (ask your grandparents) received U.S. Patent No. D157,110, on a Lunch Box. Check out the accordion pleats..…more
| Civil Procedure, Intellectual Property

January 30, 2016 - Patent of the Day

On January 30, 1962, Les Paul was awarded U.S. Patent No. 3,018,680 on an Electrical Musical Instrument (the solid body electric guitar)..…more
| Civil Procedure, Intellectual Property, Science, Computers, & Technology

Federal Circuit Issues Ironic Decision Reversing PTAB For Not Providing Enough Analysis

The PTAB was rebuked by the Federal Circuit on January 22nd for failing to provide an adequate description of its reasoning for finding the claims of the challenged patent obvious in an inter partes review proceeding. In…more
| Civil Procedure, Intellectual Property, Science, Computers, & Technology

January 29, 2016 - Patent of the Day

On January 29, 1974, Roger Easton was awarded U.S. Patent No. 3,789,409 on a Navigation System Using Satellites and Passive Ranging Techniques (GPS)…more
| Civil Procedure, Intellectual Property, Science, Computers, & Technology
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