Sterne, Kessler, Goldstein & Fox P.L.L.C.

The Interface Between District Court Litigation and Contested Office Proceedings under the AIA: Motions to Stay

What is the standard for deciding a motion to stay in view of a contested office proceeding? Courts typically consider: (1) whether a stay will unduly prejudice or present a clear tactical disadvantage to the nonmoving…more

See All Updates »

DMCA vs. Gearheads: Piracy Under the Shade Tree

A recent Wired magazine article by Kyle Wiens (co-founder and CEO of iFixit) provided an ominous warning to automobile owners: you don’t own your vehicle, you merely operate it at the manufacturer’s pleasure. This view of…more

Copyrights, Corporate Counsel, DMCA, Popular, Young Lawyers

See All Updates »

Practice Considerations Post Teva v. Sandoz

In Teva Pharmaceuticals USA, Inc. v. Sandoz, Inc., No. 13-854, slip op. 574 U.S. __ (2015), the U.S. Supreme Court ruled that underlying factual issues resolved while formally construing a disputed patent claim term at the…more

Claim Construction, De Novo Standard of Review, Extrinsic Evidence, Hatch-Waxman, Patent Litigation

See All Updates »

Federal Circuit Holds a Defective Restriction Requirement Ends Patent Term Adjustment

In Pfizer v. Lee, the Court of Appeals for the Federal Circuit held that a “defective” restriction requirement was sufficient to stop the period of patent term adjustment granted when the U.S. Patent and Trademark Office fails…more

Delays, Examiners, Notification Requirements, Patent Applications, Patent Litigation

See All Updates »

Court Rules that Apotex Must Give Amgen Notice Upon Biosimilar Licensure

Since August 2015, Amgen and Apotex have been locked in litigation in the US District Court for the Southern District of Florida related to Apotex’s pegfilgrastim product, which is purported to be biosimilar to Amgen’s…more

Amgen, Apotex, Biosimilars, BPCIA, Commercial Marketing

See All Updates »

USPTO Issues New Subject Matter Eligibility Examination Interim Guidelines – Nature-Based Product Guidance

On December 16, 2014, the USPTO issued a comprehensive interim Guidance document for examination of subject matter eligibility under 35 U.S.C. § 101. The new Guidance document supplements the June 2014 Preliminary Examination…more

Patent-Eligible Subject Matter, Patents, Product of Nature Doctrine, USPTO

See All Updates »

Federal Circuit alters functional claiming landscape in Williamson v. Citrix Online, LLC

In Williamson v. Citrix Online, LLC, No. 2013-1130, the Federal Circuit recently overruled earlier precedent and eliminated the “strong” presumption that a functional claim limitation lacking “means” language does not invoke 35…more

America Invents Act, Appeals, Means-Plus-Function, Patent Infringement, Patent Litigation

See All Updates »

Design Patent Case Digest: Simmons Bedding Company v. Sealy Technology LLC

Decision Date: March 31, 2015 - Court: U.S. Patent Trial and Appeal Board - Patents: D622,531 - Holding: Examiner’s decision in reexamination proceeding not to adopt Requester’s obviousness rejections REVERSED…more

Appeals, Design Patent, Inter Partes Review Proceedings, Obviousness, Patent Prosecution

See All Updates »

Obama Administration Releases Much Anticipated Text of the Trans-Pacific Partnership Agreement

This client alert examines intellectual property proposals in the Trans-Pacific Partnership from the perspective of biotechnology, pharmaceutical, and chemical industries. On November 5, 2015, the U.S. trade representative’s…more

Biobased Chemicals, Biologics, Biotechnology, Patent Term Adjustment, Patent Term Extensions

See All Updates »

Can Digital Healthcare Innovation Be Patented? Eligibility of Digital Healthcare Technologies Under the New USPTO Eligibility Guidelines

Digital healthcare, the confluence of digital technology with medical and other biological fields, has become an ever-increasing presence in our daily lives. Ideas that seemed nearly impossible just a few years ago (such as…more

CLS Bank v Alice Corp, Digital Health, Healthcare, Interim Guidance, Medical Devices

See All Updates »

Federal Circuit Supports USPTO Rules in Post-Grant Proceedings

On February 4, 2015, the Federal Circuit issued a 2-1 precedential opinion in In re Cuozzo Speed Technologies, LLC, Appeal No. 14-1301 (Fed. Cir. Feb. 4, 2014), in which it affirmed the Patent Trial and Appeal Board (PTAB) in…more

See All Updates »

Post-Grant Proceedings: The Top Seven Things You Should Know About the Proposed Rule Changes

On August 20th, the U.S. Patent and Trademark Office published proposed rules that would amend the consolidated set of rules currently governing Inter Partes Reviews, Post-Grant Reviews, Covered Business Method Reviews, and…more

Attorney-Client Privilege, Broadest Reasonable Interpretation Standard, Covered Business Method Proceedings, Discovery, Duty of Candor

See All Updates »

Sell-abrating Sensibly

The holiday season is in full swing, which means brand owners and merchants are seizing the opportunity to capture cyber market share via social media campaigns. While social media can be a great way to quickly generate…more

Holidays, Marketing, Personal Brands, Risk Mitigation, Social Media

See All Updates »

MarkIt to MarketTM - December 2015

The December issue of Sterne Kessler's MarkIt to Market TM newsletter discusses key takeaways as a result of a recent TTAB case in which a trademark was found to be laudatory, sends seasons greetings from the firm, and provides…more

Domain Names, gTLD, Restaurant Industry, Services, Sunrise Periods

See All Updates »

The Supreme Court Nixes Claims to Isolated Genomic DNA

The U.S. Supreme Court decided today that claims to isolated genomic DNA are not patentable subject matter and thus invalid. This decision rendered invalid patent claims owned by Myriad Genetics as well as thousands of patent…more

AMP v Myriad, DNA, Gene Patenting, Human Genes, Myriad

See All Updates »

Missed Connections: Seeking The Girl on the Train, Found Girl on a Train

The Wall Street Journal recently reported the spike in e-book sales of Alison Waines' two-year-old novel, Girl on a Train. The cause? Apparently, some customers thought they were purchasing The New York Times' best seller (and…more

Books, Copyright, e-Books, Trademarks, Use in Commerce

See All Updates »

Obama Administration Releases Much Anticipated Text of the Trans-Pacific Partnership Agreement

This client alert examines intellectual property proposals in the Trans-Pacific Partnership from the perspective of biotechnology, pharmaceutical, and chemical industries. On November 5, 2015, the U.S. trade representative’s…more

Biobased Chemicals, Biologics, Biotechnology, Patent Term Adjustment, Patent Term Extensions

See All Updates »

USPTO Issues New Subject Matter Eligibility Examination Interim Guidelines – Nature-Based Product Guidance

On December 16, 2014, the USPTO issued a comprehensive interim Guidance document for examination of subject matter eligibility under 35 U.S.C. § 101. The new Guidance document supplements the June 2014 Preliminary Examination…more

Patent-Eligible Subject Matter, Patents, Product of Nature Doctrine, USPTO

See All Updates »

The Latest on Inherent Obviousness

On December 3, 2014, the Federal Circuit issued a decision in Par Pharmaceutical, Inc. and Alkermes Pharma Ireland Limited v. TWI Pharmaceuticals, Inc., agreeing with the district court’s analysis and conclusions on motivation…more

FDA, Obviousness, Patent Litigation, Patents, Pharmaceutical Patents

See All Updates »

Federal Circuit panel decision 2-1 reverses U.S. International Trade Commission determination that it has authority to regulate the importation of digital data

In ClearCorrect v. ITC, issued on November 10, 2015, the Federal Circuit interpreted the term “articles” as used in Section 337 to be tangible, physical items. Accordingly, electronic transmissions were held to be outside the…more

Administrative Authority, Digital Data, Electronic Data Transmissions, Imports, Intellectual Property Protection

See All Updates »

SCOTUS: Human Genes Cannot Be Patented. Is This the End or Beginning of Genetic Research?

For a Legal Perspective on today's much-anticipated U.S. Supreme Court "Myriad" decision that naturally occuring substances are not patentable, we turned to IP attorneys writing on JD Supra..…more

AMP v Myriad, Biotechnology, DNA, Healthcare, Human Genes

See All Updates »

One Year Later: Observations From The First Year Of Contested Proceedings At The USPTO

The America Invents Act - September 16, 2013 marks the one-year anniversary of the implementation of the America Invents Act, and with it, Covered Business Method (CBM) and Inter Partes Review (IPR) proceedings. To date,…more

America Invents Act, Contested Proceedings, Inter Partes Review Proceedings, Patent Litigation, Patent Reform

See All Updates »

Pending Petition for CBM Review Results in Litigation Stay

The stay provisions of America Invents Act § 18(b) related to covered business method patent review1 (“CBM review”) were recently applied in Market-Alerts Pty. Ltd. v. Bloomberg Fin. L.P. et al., C.A. No. 12-780-GMS (D. Del.)…more

America Invents Act, Covered Business Method Patents, Infringement, Judicial Review, Motion To Stay

See All Updates »

Federal Circuit Finds CBM Eligibility Reviewable on Appeal

The Federal Circuit yesterday issued a precedential opinion in Versata Development Group v. SAP America, Inc., Appeal No. 2014-1194 (Fed. Cir. Jul. 9, 2015), finding the claims invalid under 35 U.S.C. § 101. In addition to the…more

Appeals, Broadest Reasonable Interpretation Standard, Covered Business Method Patents, Covered Business Method Proceedings, Cuozzo Speed Technologies

See All Updates »

Federal Circuit Holds a Defective Restriction Requirement Ends Patent Term Adjustment

In Pfizer v. Lee, the Court of Appeals for the Federal Circuit held that a “defective” restriction requirement was sufficient to stop the period of patent term adjustment granted when the U.S. Patent and Trademark Office fails…more

Delays, Examiners, Notification Requirements, Patent Applications, Patent Litigation

See All Updates »

Energy Management Patent Triggers a Covered Business Method Review

Faced with a patent threat, renewable energy and climate change companies may have a new defense option – a Covered Business Method (CBM) proceeding. Ushered in less than 2 years ago as part of comprehensive patent reform…more

America Invents Act, Covered Business Method Proceedings, Energy Sector, Patent Royalties, Patents

See All Updates »

Practice Considerations Post Kimble v. Marvel

The U.S. Supreme Court’s recent decision in Kimble et al. v. Marvel Entertainment, LLC, rejuvenates a 50-year old rule addressing patent royalties, bringing it to the forefront of patent and licensing practice. On June 22, 2015,…more

Brulotte, Expiration Date, Kimble v Marvel Enterprises, License Agreements, Patent Infringement

See All Updates »

Federal Circuit panel decision 2-1 reverses U.S. International Trade Commission determination that it has authority to regulate the importation of digital data

In ClearCorrect v. ITC, issued on November 10, 2015, the Federal Circuit interpreted the term “articles” as used in Section 337 to be tangible, physical items. Accordingly, electronic transmissions were held to be outside the…more

Administrative Authority, Digital Data, Electronic Data Transmissions, Imports, Intellectual Property Protection

See All Updates »

USPTO Issues New Subject Matter Eligibility Examination Guidelines for Claims Involving Laws of Nature, Natural Principles, Natural Phenomena, and/or Natural Products

On March 4, 2014, the USPTO issued a Guidance memorandum for examination of subject matter eligibility under 35 U.S.C. § 101 in view of AMP v. Myriad (2013) and Mayo v. Prometheus (2012). Under the new guidelines, the examiner…more

AMP v Myriad, Mayo v. Prometheus, Patent-Eligible Subject Matter, Patents, USPTO

See All Updates »

The Latest on Inherent Obviousness

On December 3, 2014, the Federal Circuit issued a decision in Par Pharmaceutical, Inc. and Alkermes Pharma Ireland Limited v. TWI Pharmaceuticals, Inc., agreeing with the district court’s analysis and conclusions on motivation…more

FDA, Obviousness, Patent Litigation, Patents, Pharmaceutical Patents

See All Updates »

Energy Management Patent Triggers a Covered Business Method Review

Faced with a patent threat, renewable energy and climate change companies may have a new defense option – a Covered Business Method (CBM) proceeding. Ushered in less than 2 years ago as part of comprehensive patent reform…more

America Invents Act, Covered Business Method Proceedings, Energy Sector, Patent Royalties, Patents

See All Updates »

Commil USA, LLC v. Cisco Systems, Inc.

While the Supreme Court’s section 101 decisions may garner the biggest headlines, the high court has also invested significant efforts in the area of induced infringement. Commil v. Cisco, decided on May 26, 2015, marks the…more

Cisco, Cisco v CommilUSA, Good Faith, Honest Belief Defense, Induced Infringement

See All Updates »

Selection Invention Found Unpatentable For Obviousness-Type Double Patenting

On August 21, 2014, the Federal Circuit issued a decision in AbbVie Inc. v. The Mathilda and Terence Kennedy Institute of Rheumatology Trust., holding that the claims to a selection invention were invalid based on…more

AbbVie, Double Patent, Inventions, Obviousness, Patent Litigation

See All Updates »

Federal Circuit Issues Second Reversal in an Inter Partes Review Finding the PTAB’s Obviousness Analysis to Contain “Legal Errors” Relating to Motivation to Combine

On November 3, 2015, the Federal Circuit issued Belden Inc. v. Berk-Tek LLC1, a rare precedential opinion reversing a determination by the Patent Trial and Appeal Board (PTAB) in an inter partes review proceeding. This is only…more

Appeals, Examination Procedures, Inter Partes Review Proceedings, Obviousness, Patent Litigation

See All Updates »

Stratasys Extrudes Past IPR Petitions; Set to Build 3D Printer Case Against Afinia

Stratasys asserted four of its 3D printing patents against Afinia in the U.S. District Court of Minnesota. Afinia responded by petitioning for inter partes review (IPR) of the asserted patents. Yet, Stratasys escaped unscathed…more

3D Printing, Anticipation, Inter Partes Review Proceedings, Obviousness, Patent Infringement

See All Updates »

Post-Grant Proceedings: The Top Seven Things You Should Know About the Proposed Rule Changes

On August 20th, the U.S. Patent and Trademark Office published proposed rules that would amend the consolidated set of rules currently governing Inter Partes Reviews, Post-Grant Reviews, Covered Business Method Reviews, and…more

Attorney-Client Privilege, Broadest Reasonable Interpretation Standard, Covered Business Method Proceedings, Discovery, Duty of Candor

See All Updates »

Federal Circuit overturns panel decision and upholds Commission in Suprema, Inc. v. International Trade Commission rehearing en banc

En banc Court reverses panel decision 6-4 and upholds U.S. International Trade Commission determination that it has broad authority to address acts of induced infringement based upon post-importation conduct. Procedural…more

Chevron Deference, Direct Infringement, En Banc Review, Imports, Induced Infringement

See All Updates »

Utility Patent Trends Gleaned from the IPO’s 2014 IP Record

The Intellectual Property Owners’ Association (IPO) recently released its 2014 IP Record, an annual report detailing intellectual property trends in the United States and the top five patent offices from around the world. The…more

ITC, Patents, USPTO, Utility Patents, WIPO

See All Updates »

The Medicines Company v. Hospira - Preparation of validation batches by a contract manufacturer for FDA submission creates an on-scale bar

On July 2, 2015, the Court of Appeals for the Federal Circuit held that a patent owner’s use of a contract manufacturer (CMO) to prepare validation batches of a drug formulation for submission to FDA created an invalidating…more

Biosimilars, FDA, Inventors, Manufacturers, Patents

See All Updates »

FDA Finalizes Guidance For Formal Meetings Between the FDA and Biosimilars Applicants

On November 17, 2015, the FDA finalized a guidance document, that was first issued as a draft in March 2013, regarding formal meetings between the FDA and biosimilars applicants. Because meetings with biosimilars applicants are…more

Biologics, Biosimilars, FDA, Guidance Update, Patents

See All Updates »

MarkIt to MarketTM | June 2015

In This Issue: - Hashtag Trademarks: #ItsAllAboutTheUse - Upcoming Changes in Canadian Trade Mark Trademark Law - Changes in U.S Certification Mark Requirements - gTLD Sunrise Periods Now Open - The June…more

Brand, Canada, Domain Names, gTLD, Hashtags

See All Updates »

Federal Circuit Grants Patent Term Adjustment After Allowance When Continued Examination Requested

On January 15, 2014, the U.S. Court of Appeals for the Federal Circuit decided Novartis v. Lee (No. 2013-1160, -1179), holding that time spent in “continued examination” is excluded from a patent term adjustment even where the…more

Novartis, Patent Term Adjustment, Patents, Request for Continued Examination

See All Updates »

Federal Circuit Issues Second Reversal in an Inter Partes Review Finding the PTAB’s Obviousness Analysis to Contain “Legal Errors” Relating to Motivation to Combine

On November 3, 2015, the Federal Circuit issued Belden Inc. v. Berk-Tek LLC1, a rare precedential opinion reversing a determination by the Patent Trial and Appeal Board (PTAB) in an inter partes review proceeding. This is only…more

Appeals, Examination Procedures, Inter Partes Review Proceedings, Obviousness, Patent Litigation

See All Updates »

TTAB Finds MEAT CANDY to be Too Sweet

In a recent (non-precedential) decision , the TTAB refused to register the mark MEAT CANDY as being merely descriptive of Applicant's restaurant services. To anyone who is not a meat connoisseur, a 2(e)(1) refusal seems to be a…more

Descriptive Trademarks, Trademark Registration, Trademark Trial and Appeal Board, Trademarks, USPTO

See All Updates »

Federal Circuit issues opinion in Suprema, Inc. v. International Trade Commission

What’s at Stake? The panel majority held that exclusion orders under § 337 may not issue based on a theory of induced infringement where the direct infringement does not occur until after the articles are imported. The…more

Imports, Induced Infringement, ITC, Patent Infringement, Patents

See All Updates »

The Supreme Court Heightens Antitrust Scrutiny For ANDA Reverse Payment Agreements Between Pharmaceutical Companies

The U.S. Supreme Court yesterday ruled on the long-awaited FTC v. Actavis case concerning ANDA reverse payments, resolving a sharp circuit split. The Court held that settlement agreements that include reverse payments to end…more

ANDA, Antitrust Litigation, FTC, FTC v Actavis, Patent Infringement

See All Updates »

Federal Circuit Issues Second Reversal in an Inter Partes Review Finding the PTAB’s Obviousness Analysis to Contain “Legal Errors” Relating to Motivation to Combine

On November 3, 2015, the Federal Circuit issued Belden Inc. v. Berk-Tek LLC1, a rare precedential opinion reversing a determination by the Patent Trial and Appeal Board (PTAB) in an inter partes review proceeding. This is only…more

Appeals, Examination Procedures, Inter Partes Review Proceedings, Obviousness, Patent Litigation

See All Updates »

Federal Circuit panel decision 2-1 reverses U.S. International Trade Commission determination that it has authority to regulate the importation of digital data

In ClearCorrect v. ITC, issued on November 10, 2015, the Federal Circuit interpreted the term “articles” as used in Section 337 to be tangible, physical items. Accordingly, electronic transmissions were held to be outside the…more

Administrative Authority, Digital Data, Electronic Data Transmissions, Imports, Intellectual Property Protection

See All Updates »

Contact

1100 New York Avenue, NW
Washington, DC 20005 , United States

  • 202.371.2600
  • 202.371.2540

Areas of Practice
  • Intellectual Property
  • Litigation
Locations
Other U.S. Locations
  • D.C.
Number of Attorneys

100+ Attorneys

This profile may constitute attorney advertising. Prior results do not guarantee a similar outcome. Any correspondence with this profile holder does not constitute a client/attorney relationship. Neither the content on this profile nor transmissions between you and the profile holder through this profile are intended to provide legal or other advice or to create an attorney-client relationship.

"My best business intelligence, in one easy email…"

Your first step to building a free, personalized, morning email brief covering pertinent authors and topics on JD Supra:

Sign up to create your digest using LinkedIn*

*By using the service, you signify your acceptance of JD Supra's Privacy Policy.

Already signed up? Log in here

*With LinkedIn, you don't need to create a separate login to manage your free JD Supra account, and we can make suggestions based on your needs and interests. We will not post anything on LinkedIn in your name. Or, sign up using your email address.
×