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

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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

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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

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Global Initiatives to Accelerate Examination of Cleantech Patent Applications

In an effort to promote the development and commercialization of technologies that conserve natural resources or reduce negative environmental impact, patent offices around the world have adopted programs to expedite the…more

Australia, Brazil, Canada, China, Clean Tech

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FDA Finalizes Guidance Documents on Biosimilarity

On Tuesday, and over three years after the initial guidance documents were released, the US Food and Drug Administration released final versions of three guidance documents discussing how FDA will evaluate applications for…more

Biosimilars, FDA, Final Guidance, Totality of the Evidence Test

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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

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Design Patent Case Digest: Kedem, LLC v. Team International Group of America, Inc.

Decision Date: January 30, 2015 - Court: Southern District of Florida - Patents: D686,869; D694,057 - Holding: Defendant’s motion for summary judgment DENIED - Opinion: Kedem, LLC owns U.S. Design…more

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Patent Filing Considerations Under the AIA on the Eve of March 16th

March 16, 2013 is rapidly approaching. This date is significant because it is the effective date of Section 3 of the American Invents Act (AIA). Section 3 of AIA includes the first-inventor-to-file provisions (FITF). Most of…more

America Invents Act, Effective Filing Date, Filing Deadlines, First-to-File, Patent Reform

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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

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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

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America Invents Act: Inter Partes Review

What is an inter partes review? An inter partes review (“IPR”) enables a third party to challenge one or more claims in an issued patent at the United States Patent & Trademark Office (“Office”). IPR was designed to…more

America Invents Act, Burden of Proof, Infringement, Inter Partes Reexamination, Inter Partes Review Proceedings

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Global Trademark Protection — 5 Practical Considerations

When Tim Berners-Lee developed the World Wide Web in 1990 as a tool to share information among specialized researchers, he likely did not anticipate the degree to which his invention would radically change — in just a few…more

Brand, Corporate Counsel, Counterfeiting, Cybersquatting, International Trademark Protection

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MarkIt to MarketTM | April 2015

In This Issue: - I Second that e-Motion: Protecting Motion Marks - USPTO Begins Accepting International Design Applications - Attending INTA Annual Meeting - gTLD Sunrise Periods Now Open - Excerpt from…more

Counterfeiting, Design Patent, Domain Names, gTLD, Hague Agreement

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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

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MarkIt to MarketTM | April 2015

In This Issue: - I Second that e-Motion: Protecting Motion Marks - USPTO Begins Accepting International Design Applications - Attending INTA Annual Meeting - gTLD Sunrise Periods Now Open - Excerpt from…more

Counterfeiting, Design Patent, Domain Names, gTLD, Hague Agreement

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AIA Technical Corrections Bill Signed Into Law

President Obama signed into law H.R. 6621 on January 14, 2013, enacting a number of technical corrections to the Leahy-Smith America Invents Act and title 35, United States Code. In addition to correcting a number of scrivener’s…more

America Invents Act, Dead Zones, Declaration, Derivation Proceeding, First-to-File

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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

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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

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Section 337’s Potential for Defending Biologics Market Share Against Biosimilars

Enforcement of biologic patents at the United States International Trade Commission under Section 337 provides certainty and tactical advantages to patent holders that are unavailable in district court under the BPCIA. For…more

Biologics, Biosimilars, BPCIA, Discovery, Enforcement

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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

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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

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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

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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 »

Global Initiatives to Accelerate Examination of Cleantech Patent Applications

In an effort to promote the development and commercialization of technologies that conserve natural resources or reduce negative environmental impact, patent offices around the world have adopted programs to expedite the…more

Australia, Brazil, Canada, China, Clean Tech

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

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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

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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

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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

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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

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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

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Federal Circuit Hears Oral Arguments in Suprema, Inc. v. International Trade Commission Rehearing en banc

Court considers whether the U.S. International Trade Commission has authority over allegations of induced infringement and infringement of method-of-use claims by importers. Procedural Background - Suprema v. ITC…more

En Banc Review, Importers, Induced Infringement, Infringement, ITC

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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

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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

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FDA Finalizes Guidance Documents on Biosimilarity

On Tuesday, and over three years after the initial guidance documents were released, the US Food and Drug Administration released final versions of three guidance documents discussing how FDA will evaluate applications for…more

Biosimilars, FDA, Final Guidance, Totality of the Evidence Test

See All Updates »

I Second that e-Motion: Protecting Motion Marks

Grabbing and keeping the consumer's attention can be difficult, especially in the online marketplace where advertisements and surveys obscure content on the screen and distract the viewer. Most marketers know that animation or…more

Advertising, Logos, Marketing, Motion Marks, Trademark Registration

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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

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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 »

I Second that e-Motion: Protecting Motion Marks

Grabbing and keeping the consumer's attention can be difficult, especially in the online marketplace where advertisements and surveys obscure content on the screen and distract the viewer. Most marketers know that animation or…more

Advertising, Logos, Marketing, Motion Marks, Trademark Registration

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

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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

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USPTO makes changes to AIA post grant proceedings

The U.S. Patent and Trademark Office will be making a series of rule changes to America Invents Act reviews. Some will be effective immediately, others will be implemented in phases. The rule changes are a direct response to the…more

Additional Discovery, America Invents Act, Certifications, Claim Construction, Evidence

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Section 337’s Potential for Defending Biologics Market Share Against Biosimilars

Enforcement of biologic patents at the United States International Trade Commission under Section 337 provides certainty and tactical advantages to patent holders that are unavailable in district court under the BPCIA. For…more

Biologics, Biosimilars, BPCIA, Discovery, Enforcement

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