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McDonnell Boehnen Hulbert & Berghoff LLP

Attorney

Latest Publications

Alison Baldwin

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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Michael Borella

CLS Bank Int'l v. Alice Corp. (Fed. Cir. 2013) (en banc) -- Judge Lourie's Concurrence

On May 10, the Federal Circuit handed down a much anticipated en banc ruling regarding the patent eligibility of computer-implemented inventions under 35 U.S.C. § 101. In a per curiam opinion that is perhaps the most important…more

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Joshua Bosman

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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Justin Cook

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

Patent Applications, Patents, Prioritized Examination, USPTO

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Grantland Drutchas

Preparing for the Final Phase of the America Invents Act Going Into Effect March 16, 2013

The final phase of the America Invents Act (AIA) takes effect on March 16, 2013. This means that any patent application filed in the U.S. on or after that date, which, at any time during its pendency, contains a claim that is…more

America Invents Act, Continuing Applications, First-to-File, First-to-Invent, Patents

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Patrick Gattari

MBHB Snippets: Review of Developments in Intellectual Property Law - Winter 2013 - Volume 11, Issue 1: Federal Courts Debate Safe Harbor Exemption for Patent Infringement Under 35 U.S.C. § 271(e) Following Merck v. Integra

Patent protection is a critical driver of value for the biotech industry. One of the unique aspects of biotech patents, however, is that many otherwise infringing activities are exempt from claims of patent infringement when…more

ANDA, Biotechnology, Exemptions, FDA, Infringement

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Michael Greenfield

Bayer Healthcare Pharmaceuticals, Inc. v. Watson Pharmaceuticals, Inc. (Fed. Cir. 2013)

Contraceptives were the subject of the Federal Circuit's recent decision in Bayer Healthcare Pharmaceuticals, Inc. v. Watson Pharmaceuticals, Inc. But, unfortunately, it's a rather fact-specific case with nothing of prurient or…more

Bayer, Contraceptives, Drug Safety, FDA, Patents

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Nicole Grimm

MBHB Snippets: Review of Developments in Intellectual Property Law - Spring 2013 - Volume 11, Issue 2: Tiffany & Co. v. Costco Wholesale Corp.: Has the TIFFANY trademark become generic?

TIFFANY diamond engagement rings enjoy worldwide fame and recognition as the quintessential engagement ring. In 1886, Tiffany created the famous Tiffany setting, a simple six-prong open symmetrical arrangement that elevates the…more

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Christian Hines

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

Patent Applications, Patents, Prioritized Examination, USPTO

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Gregory Huffman

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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Kwame Mensah

Case Brief: Federal Trade Commission v. Watson Pharmaceuticals

[Ed. The Supreme Court heard oral argument today in Federal Trade Commission v. Watson Pharmaceuticals. While Patent Docs will provide analysis regarding the oral argument in a subsequent post, we provide the following analysis…more

ANDA, FDA, FDCA, FTC, Generic Drugs

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Emily Miao

MBHB Snippets: Review of Developments in Intellectual Property Law - Spring 2013 - Volume 11, Issue 2: Tiffany & Co. v. Costco Wholesale Corp.: Has the TIFFANY trademark become generic?

TIFFANY diamond engagement rings enjoy worldwide fame and recognition as the quintessential engagement ring. In 1886, Tiffany created the famous Tiffany setting, a simple six-prong open symmetrical arrangement that elevates the…more

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Kevin E. Noonan

U.S. Supreme Court Sides with Monsanto in Seed Patent Case

The Supreme Court ruled unanimously yesterday in favor of Monsanto in Bowman v. Monsanto, a case involving Monsanto’s recombinant, Roundup Ready® seeds. The opinion rejected the arguments from petitioner, Indiana farmer Vernon…more

Bowman v Monsanto, First Sale Doctrine, Genetically Engineered Seed, Monsanto, Patent Exhaustion

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Sherri Oslick

Court Report - May 05, 2013

About Court Report: Each week we will report briefly on recently filed biotech and pharma cases. Eisai R&D Management Co., Ltd. v. Rea - 1:13-cv-00548; filed May 2, 2013 in the Eastern District of…more

Generic Drugs, Infringement, Patents, Prescription Drugs

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Ann Palma

Court Report Supplement -- May 16, 2013

About Court Report Supplement: Periodically, we will report on biotech and pharma cases that were inadvertently omitted from our Court Report column. Tawnsaura Group, LLC v. Direct Digital, LLCL: 8:13-cv-00004; filed…more

Infringement, Nutritional Supplements, Patents

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Jordan Pringle

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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Joshua Rich

MBHB Snippets: Review of Developments in Intellectual Property Law - Spring 2013 - Volume 11, Issue 2: Obama Administration Focuses on Chinese Trade Secret Misappropriation

Since President Obama entered the White House in 2009, his administration has undertaken a number of steps toward stricter policing of international trade secret misappropriation. Those efforts reached a turning point early this…more

China, Economic Espionage Act, IPEC, Misappropriation, Trade Secrets

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Cole Richter

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, Patents

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Kurt W. Rohde

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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Andrew Williams

Allergan, Inc. v. Sandoz Inc. (Fed. Cir. 2013)

Can a method of treatment claim be inherent in the prior art if neither the formulation nor the method of using the formulation twice a day were in the prior art?…more

Allergan Inc, Patents, Prescription Drugs, Prior Art

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Donald Zuhn

WIPO Reports Increase in International Application Filings in 2012

In March, the World Intellectual Property Organization (WIPO) announced that International patent applications filed under the Patent Cooperation Treaty (PCT) increased by 6.6% in 2012. WIPO noted that of the 194,000 PCT…more

Patent Applications, WIPO

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