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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Peschke Map Technologies LLC v. Rouse Properties Inc. (E.D. Va. 2016)

Plaintiff Peschke Map Technologies ("Peschke") sued Rouse Properties ("Rouse") for infringement of U.S. Patent No. 6,397,143, directed to a computer-based map navigation and display system. Rouse filed a 12(b)(6) motion to…more

Abstract Ideas, Claim Construction, CLS Bank v Alice Corp, Federal Rule 12(b)(6), Patent Infringement

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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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Strategies for Expediting the Patenting Process

Intellectual property protection, particularly patent protection, is important for many companies, and the ability to speed up the patenting process may be essential for a variety of reasons. For instance, one or more issued…more

Corporate Counsel, Fast Track Process, Intellectual Property Protection, Patent Litigation, Patent Prosecution

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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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Qualtrics, LLC v. OpinionLab, Inc. (PTAB 2016)

Focusing on the Claims, the PTAB Denies CBM Review of a Market Research Patent - On April 13, 2016, the U.S. Patent and Trademark Office (USPTO) Patent Trial and Appeal Board (PTAB) issued a decision denying institution of…more

America Invents Act, Covered Business Method Patents, Motorola, Patent Litigation, Patent Trial and Appeal Board

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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 4

Issues to Be Aware of When Seeking Trademark Protection - Trademarks are valuable tools for businesses since they allow a trademark holder to identify and distinguish its goods from those manufactured or sold by others…more

Advertising Substantiation, Corporate Social Responsibility, Costco, FTC, Green Guides

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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: Spring 2015 - Vol. 13, Issue 4

Issues to Be Aware of When Seeking Trademark Protection - Trademarks are valuable tools for businesses since they allow a trademark holder to identify and distinguish its goods from those manufactured or sold by others…more

Advertising Substantiation, Corporate Social Responsibility, Costco, FTC, Green Guides

See All Updates »

Strategies for Expediting the Patenting Process

Intellectual property protection, particularly patent protection, is important for many companies, and the ability to speed up the patenting process may be essential for a variety of reasons. For instance, one or more issued…more

Corporate Counsel, Fast Track Process, Intellectual Property Protection, Patent Litigation, Patent Prosecution

See All Updates »

MBHB Snippets: Review of Developments in Intellectual Property Law: Spring 2015 - Vol. 13, Issue 4

Issues to Be Aware of When Seeking Trademark Protection - Trademarks are valuable tools for businesses since they allow a trademark holder to identify and distinguish its goods from those manufactured or sold by others…more

Advertising Substantiation, Corporate Social Responsibility, Costco, FTC, Green Guides

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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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The Fantastical World of Justice Stephen Breyer

In a recent book entitled Imbeciles: The Supreme Court, American Eugenics, and the Sterilization of Carrie Buck, author Adam Cohen examines the case of Buck v. Bell, where Justice Oliver Wendell Holmes wrote that "[t]hree…more

Innovation, IP License, Justice Breyer, Patent Infringement, Patent Trolls

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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: Spring 2015 - Vol. 13, Issue 4

Issues to Be Aware of When Seeking Trademark Protection - Trademarks are valuable tools for businesses since they allow a trademark holder to identify and distinguish its goods from those manufactured or sold by others…more

Advertising Substantiation, Corporate Social Responsibility, Costco, FTC, Green Guides

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Court Report - April 2016 #3

About Court Report: Each week we will report briefly on recently filed biotech and pharma cases. Teva Pharmaceuticals USA Inc. et al. v. Biocon Ltd. et al. 1:16-cv-00278; filed April 19, 2015 in the District Court of…more

Apotex, Biotechnology, Forest Laboratories, Merck, Patent Infringement

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Amgen v. Sandoz – Did the Federal Circuit Just Doom the New Biosimilar Approval Pathway?

Congress passed the Biologics Price Competition and Innovation Act (“BPCIA”) in 2009 in an effort to bring biosimilar drug products to market. The goal was for the BPCIA to mimic for biologic drugs the Hatch-Waxman statute for…more

aBLA, Biologics, Biosimilars, BPCIA, Disclosure Requirements

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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: Spring 2015 - Vol. 13, Issue 4

Issues to Be Aware of When Seeking Trademark Protection - Trademarks are valuable tools for businesses since they allow a trademark holder to identify and distinguish its goods from those manufactured or sold by others…more

Advertising Substantiation, Corporate Social Responsibility, Costco, FTC, Green Guides

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Defend Trade Secrets Act Passes House, Moves to President for Signature

One week after the House Judiciary Committee unanimously reported the Defend Trade Secrets Act of 2016 to the House floor, the full House approved the bill, 410-2. The two no votes were from tea party Republicans, Rep. Justin…more

Asset Seizure, Defend Trade Secrets Act (DTSA), Ex Parte, Misappropriation, Pending Legislation

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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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MBHB Snippets: Review of Developments in Intellectual Property Law: Spring 2015 - Vol. 13, Issue 4

Issues to Be Aware of When Seeking Trademark Protection - Trademarks are valuable tools for businesses since they allow a trademark holder to identify and distinguish its goods from those manufactured or sold by others…more

Advertising Substantiation, Corporate Social Responsibility, Costco, FTC, Green Guides

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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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Of Patent Trolls and Hot Dog Stands -- The Supreme Court Oral Argument in Cuozzo Speed Technologies, LLC v. Lee

Earlier today, the Supreme Court heard oral arguments in the Cuozzo Speed Technologies, LLC v. Lee appeal (Supreme Court docket number 15-466). The Court was considering two issues related to the recently implemented IPR…more

Broadest Reasonable Interpretation Standard, Cuozzo Speed Technologies v Lee, Inter Partes Review Proceedings, Patent Owner Preliminary Response, Patent Trial and Appeal Board

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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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USPTO Seeks Comments on New Patent Quality Metrics

In a notice published in the Federal Register (81 Fed. Reg. 16142) last month, the U.S. Patent and Trademark Office announced that new patent quality metrics were being designed for use in FY2017 and that the Office was seeking…more

Corporate Counsel, Federal Register, Patent Quality Metrics, Patents, Public Comment

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Other U.S. Locations
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