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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July 2015 Update on Subject Matter Eligibility

On July 30, 2015, the U.S. Patent and Trademark Office updated its subject matter eligibility guidance ("Eligibility Update"). This update provides recommendations and resources for examiners in addition to those in the…more

Abstract Ideas, Bilski, CLS Bank v Alice Corp, Intellectual Property Protection, Mayo v. Prometheus

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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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Interim Guidance Status Check

As of Tuesday, June 16th, we have been living with the U.S. Patent and Trademark Office's "2014 Interim Guidance on Patent Subject Matter Eligibility" ("Guidance") for six months. Although the USPTO subsequently issued some…more

Patent Applications, Patent Trial and Appeal Board, Patent-Eligible Subject Matter, Patents, Software

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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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MBHB Snippets: Review of Developments in Intellectual Property Law: Spring 2015 - Vol. 13, Issue 2

In This Issue: - After B&B Hardware, What is the Full Scope of Estoppel Arising From a PTAB Decision in District Court Litigation? - When You Don’t Know What You Know: The Role of Unappreciated Inherency in the…more

America Invents Act, B&B Hardware v Hargis Industries, CLS Bank v Alice Corp, Copyright, Copyright Infringement

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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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MBHB Snippets: Review of Developments in Intellectual Property Law: Spring 2015 - Vol. 13, Issue 2

In This Issue: - After B&B Hardware, What is the Full Scope of Estoppel Arising From a PTAB Decision in District Court Litigation? - When You Don’t Know What You Know: The Role of Unappreciated Inherency in the…more

America Invents Act, B&B Hardware v Hargis Industries, CLS Bank v Alice Corp, Copyright, Copyright Infringement

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MBHB Snippets: Review of Developments in Intellectual Property Law: Spring 2015 - Vol. 13, Issue 2

In This Issue: - After B&B Hardware, What is the Full Scope of Estoppel Arising From a PTAB Decision in District Court Litigation? - When You Don’t Know What You Know: The Role of Unappreciated Inherency in the…more

America Invents Act, B&B Hardware v Hargis Industries, CLS Bank v Alice Corp, Copyright, Copyright Infringement

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Standard Essential Patents Unenforceable on Theory of Indirect Infringement

A recent decision by the Federal Circuit in JVC Kenwood Corp. v. Nero, Inc., decided August 17, 2015, involves nuanced details of standard-essential patents, but arrived at a common sense result: either the patents at issue are…more

Contributory Infringement, End-Users, Indirect Infringement, Induced Infringement, Licensees

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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, Fees, Micro Entity Status, Patent Applications, Patent Reform

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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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MBHB Snippets: Review of Developments in Intellectual Property Law: Spring 2015 - Vol. 13, Issue 2

In This Issue: - After B&B Hardware, What is the Full Scope of Estoppel Arising From a PTAB Decision in District Court Litigation? - When You Don’t Know What You Know: The Role of Unappreciated Inherency in the…more

America Invents Act, B&B Hardware v Hargis Industries, CLS Bank v Alice Corp, Copyright, Copyright Infringement

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No Rehearing En Banc for In re Cuozzo Speed Technologies -- PTAB Update

Earlier this week, the Federal Circuit issued an order denying a petition for rehearing en banc in the In re Cuozzo Speed Technologies, LLC case. As we have previously reported, this case was the first appeal of the first IPR…more

America Invents Act, Amicus Briefs, Appeals, Broadest Reasonable Interpretation Standard, Claim Construction

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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 »

MBHB Snippets: Review of Developments in Intellectual Property Law: Spring 2015 - Vol. 13, Issue 2

In This Issue: - After B&B Hardware, What is the Full Scope of Estoppel Arising From a PTAB Decision in District Court Litigation? - When You Don’t Know What You Know: The Role of Unappreciated Inherency in the…more

America Invents Act, B&B Hardware v Hargis Industries, CLS Bank v Alice Corp, Copyright, Copyright Infringement

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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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PTAB Denies Inter Partes Review Petitions Against Two Acorda Patents

One of the statistics gleaned from Director Michelle Lee's recent blog on the post-issuance review provisions of the America Invents Act is that only 42% of inter partes review petitions have been granted over the past three…more

Abuse of Process, America Invents Act, Inter Partes Review Proceedings, Obviousness, Patent Infringement

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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 - August 2015 #3

About Court Report: Each week we will report briefly on recently filed biotech and pharma cases. Reckitt Benckiser LLC v. Dr. Reddys Laboratories, Inc. et al. 1:15-cv-04524; filed June 26, 2015 in the District Court of New…more

ANDA, Biotechnology, Generic Drugs, Patent Infringement, Patent Litigation

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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 - 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

InterDigital Communications v ITC, ITC, Nokia, Non-Practicing Entities, Tariff Act of 1930

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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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Another Aleynikov Trade Secrets Case Ends with Narrower Statute

In 2009, Sergey Aleynikov was a computer programmer employed by Goldman Sachs to write high-frequency trading code. He accepted an offer to join a new Chicago-based company, Teza Technologies. Before he left Goldman Sachs,…more

Aleynikov, Convictions, Criminal Prosecution, Double Jeopardy, EEA

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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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PTAB Finally Proposes Rule Amendments: The More Things Change . . .

More than a year ago, then-Deputy Director Michelle K. Lee posted on the Director's Forum Blog that the USPTO was seeking feedback on PTAB trial proceedings established by the Leahy-Smith America Invents Act ("AIA"). The Office…more

America Invents Act, Broadest Reasonable Interpretation Standard, Claim Construction, Duty of Candor, Inter Partes Review Proceedings

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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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Sequenom Requests Rehearing En Banc

Earlier this summer, in Ariosa Diagnostics, Inc. v. Sequenom, Inc., the Federal Circuit affirmed a decision by the District Court for the Northern District of California granting summary judgment of invalidity of the asserted…more

Method Claims, Myriad-Mayo, Patent Invalidity, Patent-Eligible Subject Matter, Patents

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