McDonnell Boehnen Hulbert & Berghoff LLP

MBHB Snippets: Review of Developments in Intellectual Property Law - Volume 12, Issue 1 (Winter 2014)

In This Issue: Experience with the USPTO’s First Action Interview Program; “Patent Trolls” Beware – Congress Tackles Vexatious Patent Litigation; Evolving Data Protection Regimes in the Asia-Pacific Arena and Their Impact…more

Asia, Copyright Infringement, Cross-Border Transactions, Music Industry, Patent Litigation

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MBHB Snippets: Review of Developments in Intellectual Property Law: Fall 2014 - Vol. 12, Issue 4

In This Issue: - Prior Art Redefined Under the AIA - PTAB Holds a Firm Line on Additional Discovery - The Art of Prior Art Searching - Anticipating a Federal Trade Secret Law - Trademark Cases…more

Additional Discovery, America Invents Act, Covered Business Method Proceedings, Inter Partes Review Proceedings, Patent Trial and Appeal Board

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AMP v. Myriad: A Bad Day At Black Rock

Last week, The Supremes once again stepped into an area of science/law where their limited knowledge of both fields will create more harm than good. The Supremes' say that the problem with isolated and purified DNA is that it…more

AMP v Myriad, DNA, Human Genes, Myriad, Patent-Eligible Subject Matter

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Allvoice Developments US, LLC v. Microsoft Corp. (Fed. Cir. 2015)

In August, 2009, Allvoice sued Microsoft in the Western District of Washington, alleging infringement of its U.S. Patent No. 5,799,273. In December, 2013, the District Court granted Microsoft's motion for summary judgment…more

Microsoft, Patent Infringement, Patent Litigation, Patents

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Patent Profile: DermTech Receives Patent for Method of Detecting Melanoma in Human Subjects

The U.S. Patent and Trademark Office recently issued a notice of allowance for U.S. Application No. 14/199,900, which is entitled "Diagnosis of Solar Lentigo by Nucleic Acid Analysis." The '900 application, which is assigned to…more

Biotechnology, Cancer, DNA, Healthcare, Patents

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MBHB Snippets: Review of Developments in Intellectual Property Law - Volume 12, Issue 2 (Spring 2014)

In This Issue: - “Patent Trolls” in the Crosshairs – But How Will Patent Reform Legislation Impact the Rest of Us - USPTO Guidance Takes an Expansive View of Patent-Ineligible Subject Matter - Functional Claim…more

Data Protection, Non-Practicing Entities, Patent Exhaustion, Patent Litigation, Patent Reform

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MBHB Snippets: Review of Developments in Intellectual Property Law - Winter 2013 - Volume 11, Issue 1: If I Prioritize Examination of My Application, Should the Patent Office?

Applications under the US Patent and Trademark Office’s (USPTO) prioritized examination program are given “special status” and examined out-of-turn until a final disposition is reached. This program has considerably reduced…more

America Invents Act, Patent Applications, Patent Reform, Patents, Prioritized Examination

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MBHB Snippets: Review of Developments in Intellectual Property Law - Volume 12, Issue 2 (Spring 2014)

In This Issue: - “Patent Trolls” in the Crosshairs – But How Will Patent Reform Legislation Impact the Rest of Us - USPTO Guidance Takes an Expansive View of Patent-Ineligible Subject Matter - Functional Claim…more

Data Protection, Non-Practicing Entities, Patent Exhaustion, Patent Litigation, Patent Reform

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After B&B Hardware, What is the Full Scope of Estoppel Arising From a PTAB Decision in District Court Litigation?

The America Invents Act (AIA) created several adjudicative proceedings within the Patent Trial and Appeal Board (PTAB) of the U.S. Patent & Trademark Office, including inter partes review, post-grant review, and covered business…more

America Invents Act, B&B Hardware v Hargis Industries, Collateral Estoppel, Covered Business Method Patents, Inter Partes Review Proceedings

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MBHB Snippets: Review of Developments in Intellectual Property Law - Summer 2014 - Vol. 12, Issue 3

In This Issue: - The Analysis for Design Patent Infringement Post-Egyptian Goddess - Supreme Court Issues Decision in Alice Corp. v. CLS Bank - Capitol Records, LLC v. Pandora Media, Inc.: Future of Digital…more

Capitol Records, CLS Bank v Alice Corp, Copyright, Design Patent, Digital Media

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MBHB Snippets: Review of Developments in Intellectual Property Law - Volume 12, Issue 2 (Spring 2014)

In This Issue: - “Patent Trolls” in the Crosshairs – But How Will Patent Reform Legislation Impact the Rest of Us - USPTO Guidance Takes an Expansive View of Patent-Ineligible Subject Matter - Functional Claim…more

Data Protection, Non-Practicing Entities, Patent Exhaustion, Patent Litigation, Patent Reform

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Software Patents Are Still Very Useful Despite Alice, But Are Business Method Patents?

Patents generally describe new inventions in terms of a unique structure, function, or combination of structure and function. Those patents that focus on functions of computers or computer-implemented functionality are often…more

America Invents Act, CLS Bank v Alice Corp, Covered Business Method Patents, Mayo v. Prometheus, Patent Litigation

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Allergan, Inc. v. Apotex, Inc. (Fed. Cir. 2014)

In a not particularly well-written opinion that breaks no new ground, the Federal Circuit considered a consolidated appeal of two patents directed to methods of promoting hair growth, including, in particular, eyelash hair…more

Allergan Inc, ANDA, Apotex, Appeals, Claim Construction

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“Blurred Lines” Artists Lose Multi-million Dollar Copyright Lawsuit

Pop artists Robin Thicke and Pharrell Williams’ “Blurred Lines” song was the most popular single in 2013, topping the U.S. and international music charts. The song has sold over 6 million copies and its accompanying video has…more

Audio Recording, Copyright, Copyright Infringement, Jury Awards, Marvin Gaye

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When You Don’t Know What You Know: The Role of Unappreciated Inherency in the Obviousness Analysis

The patent statute makes it clear that subject matter that would have been obvious to one of ordinary skill in the art as of the effective filing date of a patent application is not patentable.[1] The considerations relevant to…more

Inherency, Obviousness, Patent Infringement, Patents, Popular

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Software Patents Are Still Very Useful Despite Alice, But Are Business Method Patents?

Patents generally describe new inventions in terms of a unique structure, function, or combination of structure and function. Those patents that focus on functions of computers or computer-implemented functionality are often…more

America Invents Act, CLS Bank v Alice Corp, Covered Business Method Patents, Mayo v. Prometheus, Patent Litigation

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MBHB Snippets: Review of Developments in Intellectual Property Law - Spring 2013 - Volume 11, Issue 2: Implementing the New Micro Entity Status at the U.S. Patent Office

As part of new rules introduced by the Leahy-Smith America Invents Act (AIA), a new section that defines a “micro entity” was added to Title 35 of the United States Code. As a subset of small entity status, micro entity status…more

America Invents Act, Business Gross Income Limitation, Fees, Micro Entity Status, Patent Applications

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MBHB Snippets: Review of Developments in Intellectual Property Law - Volume 12, Issue 2 (Spring 2014)

In This Issue: - “Patent Trolls” in the Crosshairs – But How Will Patent Reform Legislation Impact the Rest of Us - USPTO Guidance Takes an Expansive View of Patent-Ineligible Subject Matter - Functional Claim…more

Data Protection, Non-Practicing Entities, Patent Exhaustion, Patent Litigation, Patent Reform

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The Status of Patent Laches after Petrella v. MGM

Today in Petrella v. Metro-Goldwyn-Mayer, Inc. (case number 12-1315), the U.S. 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

Copyright, Copyright Infringement, Laches, Lanham Act, Petrella v. MGM

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Supreme Court Holds that Issue Preclusion May Apply to TTAB Decisions

In a 7-2 decision authored by Justice Alito, the Supreme Court held on March 24, 2015, that issue preclusion may apply to Trademark Trial and Appeal Board (TTAB) decisions. The case, B&B Hardware, Inc. v. Hargis Industries,…more

B&B Hardware v Hargis Industries, Issue Preclusion, Likelihood of Confusion, SCOTUS, Trademark Litigation

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After B&B Hardware, What is the Full Scope of Estoppel Arising From a PTAB Decision in District Court Litigation?

The America Invents Act (AIA) created several adjudicative proceedings within the Patent Trial and Appeal Board (PTAB) of the U.S. Patent & Trademark Office, including inter partes review, post-grant review, and covered business…more

America Invents Act, B&B Hardware v Hargis Industries, Collateral Estoppel, Covered Business Method Patents, Inter Partes Review Proceedings

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MBHB Snippets: Review of Developments in Intellectual Property Law - Volume 12, Issue 1 (Winter 2014)

In This Issue: Experience with the USPTO’s First Action Interview Program; “Patent Trolls” Beware – Congress Tackles Vexatious Patent Litigation; Evolving Data Protection Regimes in the Asia-Pacific Arena and Their Impact…more

Asia, Copyright Infringement, Cross-Border Transactions, Music Industry, Patent Litigation

See All Updates »

“Blurred Lines” Artists Lose Multi-million Dollar Copyright Lawsuit

Pop artists Robin Thicke and Pharrell Williams’ “Blurred Lines” song was the most popular single in 2013, topping the U.S. and international music charts. The song has sold over 6 million copies and its accompanying video has…more

Audio Recording, Copyright, Copyright Infringement, Jury Awards, Marvin Gaye

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MBHB Snippets: Review of Developments in Intellectual Property Law - Volume 11, Issue 3 (Summer 2013)

In This Issue: Not Just a Flook? Consideration of Prior Art When Evaluating Subject Matter Eligibility; The USPTO Adopts New Rules of Professional Conduct; and Trademark Functionality in the Beverage…more

Aesthetic Functionality, Code of Conduct, Legal Ethics, Patent-Eligible Subject Matter, Prior Art

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Koepsell and Noonan on Gene Patenting

In 2009, the first edition of Dr. David Koepsell's book "Who Owns You: The Corporate Gold Rush to Patent Your Genes" was published. With the second edition of his text about to be published, Dr. Koepsell allowed Patent Docs to…more

BRCA, DNA, Gene Patenting, Myriad, Myriad-Mayo

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MBHB Snippets: Review of Developments in Intellectual Property Law - Volume 11, Issue 4 (Fall 2013)

In This Issue: The Blurred Lines of What Constitutes Copyright Infringement of Music: Robin Thicke v. Marvin Gaye’s Estate; Terminology in a Computer Readable Medium Claim —“Physical,” “Tangible,” or “Storage”— Can Pose…more

Copyright, Copyright Infringement, Inter Partes Reexamination, Inter Partes Review Proceedings, Music

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MBHB Snippets: Review of Developments in Intellectual Property Law: Winter 2015 - Vol. 13, Issue 1

In This Issue: - Tips for Developing a Cost-Effective Foreign Patent Strategy - Supreme Court Holds that Trademark Tacking Should be Decided by a Jury in Hana Financial, Inc. v. Hana Bank - Amending Claims…more

Computer-Related Inventions, Expert Testimony, Foreign Patent Applications, Hana Financial v Hana Bank, Patent Cooperation Treaty

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Court Report - May 2015 #4

About Court Report: Each week we will report briefly on recently filed biotech and pharma cases. Tris Pharma Inc. v. Actavis Laboratories FL Inc. et al. 1:15-cv-00393; filed May 15, 2015 in the District Court of…more

ANDA, Patent Infringement, Patent Litigation, Patents, Pharmaceutical Manufacturers

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MBHB Snippets: Review of Developments in Intellectual Property Law - Summer 2014 - Vol. 12, Issue 3

In This Issue: - The Analysis for Design Patent Infringement Post-Egyptian Goddess - Supreme Court Issues Decision in Alice Corp. v. CLS Bank - Capitol Records, LLC v. Pandora Media, Inc.: Future of Digital…more

Capitol Records, CLS Bank v Alice Corp, Copyright, Design Patent, Digital Media

See All Updates »

MBHB Snippets: Review of Developments in Intellectual Property Law - Summer 2014 - Vol. 12, Issue 3

In This Issue: - The Analysis for Design Patent Infringement Post-Egyptian Goddess - Supreme Court Issues Decision in Alice Corp. v. CLS Bank - Capitol Records, LLC v. Pandora Media, Inc.: Future of Digital…more

Capitol Records, CLS Bank v Alice Corp, Copyright, Design Patent, Digital Media

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MBHB Snippets: Review of Developments in Intellectual Property Law - Winter 2013 - Volume 11, Issue 1: InterDigital Communications v. ITC: (Some) Non-Practicing Entities are Welcome

On January 10, 2013, the Federal Circuit in InterDigital Communications v. ITC denied a combined petition for panel rehearing and for rehearing en banc, holding that InterDigital’s patent licensing alone met the domestic…more

Foreign Patent Holders, InterDigital Communications v ITC, ITC, Nokia, Non-Practicing Entities

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MBHB Snippets: Review of Developments in Intellectual Property Law - Volume 12, Issue 2 (Spring 2014)

In This Issue: - “Patent Trolls” in the Crosshairs – But How Will Patent Reform Legislation Impact the Rest of Us - USPTO Guidance Takes an Expansive View of Patent-Ineligible Subject Matter - Functional Claim…more

Data Protection, Non-Practicing Entities, Patent Exhaustion, Patent Litigation, Patent Reform

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Teva Pharmaceuticals USA, Inc. v. Sandoz Inc. – U.S. Supreme Court Requires Trial Court’s Findings of Fact in Claim Construction Be Given Deference

In a 7-2 decision authored by Justice Breyer, the U.S. Supreme Court held yesterday that an “appellate court must apply a ‘clear error,’ not de novo, standard of review” to the evidentiary underpinnings of a district court’s…more

Claim Construction, Clear Error Standard, De Novo Standard of Review, Federal Rules of Civil Procedure, Patent Litigation

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MBHB Snippets: Review of Developments in Intellectual Property Law - Spring 2013 - Volume 11, Issue 2: Comments on New AIA Rules

On March 16, 2013, the final (and most significant) portion of the Leahy-Smith America Invents Act (AIA) took effect, and the United States broke from a first-to-invent regime to a first-inventor-to-file (FITF) regime. Of…more

America Invents Act, First-to-File, First-to-Invent, Patent Applications, Patent Reform

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MBHB Snippets: Review of Developments in Intellectual Property Law - Winter 2013 - Volume 11, Issue 1: Conducting Efficient Patent Litigation Discovery, Part 2

The costs associated with discovery, and particularly electronic document discovery, in patent litigation can be effectively controlled with upfront planning, preparation, and coordination between in­house and outside counsel…more

Discovery, Document Coding, Document Productions, Patents, Work Product Privilege

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Alice Corp. v. CLS Bank Int’l: General Purpose Computers Cannot Save Claims Directed to Abstract Ideas

In the U.S. Supreme Court’s decision today in Alice Corp. v. CLS Bank International, the Court affirmed the invalidity of Alice’s patents for computer implemented methods of reducing settlement risk. This case reached the high…more

Alice Corporation, CLS Bank, CLS Bank v Alice Corp, Mayo v. Prometheus, Patent Litigation

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FDA Announces "Purple Book"

The new phone book is here? No, but close. The Food and Drug Administration ("FDA") announced on Friday that it has published its first listing of approved biologic drugs. The list will be supplemented with approved…more

Biologics, FDA, Patent Litigation, Patents, Pharmaceutical Patents

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Koepsell and Noonan on Gene Patenting

In 2009, the first edition of Dr. David Koepsell's book "Who Owns You: The Corporate Gold Rush to Patent Your Genes" was published. With the second edition of his text about to be published, Dr. Koepsell allowed Patent Docs to…more

BRCA, DNA, Gene Patenting, Myriad, Myriad-Mayo

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U.S. Supreme Court Rules That the Decision to Award Attorney Fees in Patent Cases Rests Squarely in the District Court’s Discretion

The Supreme Court, on April 29, 2014, unanimously ruled on two cases related to the Patent Act’s fee shifting provision under 35 U.S.C. § 285.1 In Octane Fitness LLC v. Icon Health & Fitness Inc. (case number 12-1184), the Court…more

Attorney's Fees, Brooks Furniture, Highmark v. Allcare, Octane Fitness v. ICON, Patent Infringement

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Group of National and State Organizations Asks Congress to Enact Legislative Reforms to Maintain Strong Patent System

Last month, more than 90 national and state advocacy organizations sent a letter to the leadership of the House and Senate Judiciary Committees, urging Congress to enact legislative reforms that will maintain a strong and secure…more

America Invents Act, Patent Invalidity, Patent Reform, Patent Trial and Appeal Board, Patents

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Contact

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Other U.S. Locations
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