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

Defend Trade Secrets Act of 2016 - Client Advisory

This week, President Obama signed the Defend Trade Secrets Act of 2016 (DTSA) into law. Widely described as the most significant expansion of federal intellectual property law in years, the DTSA creates a new federal cause of…more

Asset Seizure, Confidentiality Agreements, Defend Trade Secrets Act (DTSA), Employer Liability Issues, Misappropriation

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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

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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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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

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Federal Circuit Backs Amgen on Key Provision of Biosimilars Statute

The Federal Circuit on Tuesday ruled that the 180-day notice of commercial marketing provision of the Biologics Price Competition and Innovation Act (BPCIA) is a requirement for all biosimilar applicants regardless of whether or…more

Amgen, Apotex, Appeals, Biologics, Biosimilars

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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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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

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Design Patent Case Digest: Ethicon Endo-Surgery, Inc. v. Covidien, Inc.

Decision Date: August 7, 2015 - Court: U.S. Court of Appeals for the Federal Circuit - Patent: D661,801; D661,802; D661,803; D661,804 - Holding: Summary judgment of invalidity REVERSED; claim construction VACATED;…more

Claim Construction, Design Patent, Medical Devices, Patent Infringement, Patent Invalidity

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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

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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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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

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When Theory and Practice Diverge

"In theory, there is no difference between theory and practice. But, in practice, there is.” Although this quote is attributed as a remark overheard at a computer science conference in Walter J. Savitch’s Pascal: An…more

Certification Marks, Goods or Services, Trademark Manual of Examining Procedure (TMEP), Trademark Registration

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Patent Rights in the U.S.: Is the Pendulum Finally Swinging Back to Center?

The U.S. patent system has long struggled to strike a balance that both encourages patent rights and prevents patent abuse. Finding that balance requires giving patent owners the right amount of patent enforcement power, while…more

Abstract Ideas, America Invents Act, Burden of Persuasion, Burden of Proof, CLS Bank v Alice Corp

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The Design Patent Case of the Century

On October 11, the United States Supreme Court will hear oral arguments in Apple v. Samsung, the first case before the court in more than 125 years involving a claim for design patent infringement..…more

Apple v Samsung, Damages, Design Patent, Lost Profits, Patent Infringement

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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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When Theory and Practice Diverge

"In theory, there is no difference between theory and practice. But, in practice, there is.” Although this quote is attributed as a remark overheard at a computer science conference in Walter J. Savitch’s Pascal: An…more

Certification Marks, Goods or Services, Trademark Manual of Examining Procedure (TMEP), Trademark Registration

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The UK Has Spoken “Brexit” - But What Does This Mean for the IP Community?

The immediate reaction to Great Britain’s June 23, 2016 vote to leave the European Union (“EU”) (commonly referred to as “Brexit”) has been nothing short of hysterical. This paper focuses on what Brexit means for the…more

Article 50 Treaty of the EU, EU, European Patent Office, Intellectual Property Protection, IP License

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USPTO Issues Subject Matter Eligibility Update

On May 5, 2016, the USPTO published a Memorandum to the Patent Examining Corps titled “Formulating a Subject Matter Eligibility Rejection and Evaluating the Applicant’s Response to a Subject Matter Eligibility Rejection.” The…more

Diagnostic Method, Life Sciences, New Guidance, Patent Examinations, Patent-Eligible Subject Matter

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USPTO Issues Subject Matter Eligibility Update

On May 5, 2016, the USPTO published a Memorandum to the Patent Examining Corps titled “Formulating a Subject Matter Eligibility Rejection and Evaluating the Applicant’s Response to a Subject Matter Eligibility Rejection.” The…more

Diagnostic Method, Life Sciences, New Guidance, Patent Examinations, Patent-Eligible Subject Matter

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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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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

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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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Evidence Alley: Lightweight Fabric: Admissibility versus Weight at the PTAB

Many parties in front of the Patent Trial and Appeal Board (Board) struggle with the handling of evidentiary issues. This struggle is heightened when expert evidence is the focus. In Tietex International, Ltd. v. Precision…more

Administrative Proceedings, Admissible Evidence, Declaration, Evidentiary Rulings, Expert Testimony

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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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SCOTUS Paves the Way for Enhanced Damages with Halo Ruling

On June 13, 2016, the Supreme Court issued its opinion in Halo v. Pulse, overturning the Federal Circuit’s long-standing two-step test for willfulness and enhanced damages in patent-infringement cases. The Court’s ruling changes…more

35 U.S.C. § 284, Abuse of Discretion, Enhanced Damages, Halo v Pulse, Judicial Discretion

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CAFC Finds Software Patent Eligible Under 35 U.S.C. §101

The Federal Circuit in Enfish LLC v. Microsoft reverses the California District Court decision that several patents related to a “self-referential” database were invalid as ineligible under 35 U.S.C. §101. Overview -…more

Abstract Ideas, CAFC, CLS Bank v Alice Corp, Microsoft, Patent Infringement

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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

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Evidence Alley: Lightweight Fabric: Admissibility versus Weight at the PTAB

Many parties in front of the Patent Trial and Appeal Board (Board) struggle with the handling of evidentiary issues. This struggle is heightened when expert evidence is the focus. In Tietex International, Ltd. v. Precision…more

Administrative Proceedings, Admissible Evidence, Declaration, Evidentiary Rulings, Expert Testimony

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New Year, New Rules: What to Know About the January 2017 TTAB Rule Updates

After a lengthy proposal and commentary process, the Trademark Trial and Appeal Board ("TTAB" or the "Board") recently published its most significant Rules of Practice update in years (see 81 Fed. Reg. 69950), with the amended…more

Administrative Proceedings, Discovery, Evidence, Expert Testimony, Legal Filings

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CAFC Finds Software Patent Eligible Under 35 U.S.C. §101

The Federal Circuit in Enfish LLC v. Microsoft reverses the California District Court decision that several patents related to a “self-referential” database were invalid as ineligible under 35 U.S.C. §101. Overview -…more

Abstract Ideas, CAFC, CLS Bank v Alice Corp, Microsoft, Patent Infringement

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Federal Circuit Clarifies the “Commercial Offer for Sale” Prong of the On-Sale Bar

On July 11, 2016, a unanimous Federal Circuit en banc affirmed that The Medicines Company’s (“TMC”) use of third-party contract manufacturing services did not invalidate U.S. Patent Nos. 7,582,727 and 7,598,343 (the…more

America Invents Act, Commercial Offer for Sale, Manufacturers, On-Sale Bar, Patent Invalidity

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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

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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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Federal Circuit Clarifies the “Commercial Offer for Sale” Prong of the On-Sale Bar

On July 11, 2016, a unanimous Federal Circuit en banc affirmed that The Medicines Company’s (“TMC”) use of third-party contract manufacturing services did not invalidate U.S. Patent Nos. 7,582,727 and 7,598,343 (the…more

America Invents Act, Commercial Offer for Sale, Manufacturers, On-Sale Bar, Patent Invalidity

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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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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

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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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Defend Trade Secrets Act of 2016 - Client Advisory

This week, President Obama signed the Defend Trade Secrets Act of 2016 (DTSA) into law. Widely described as the most significant expansion of federal intellectual property law in years, the DTSA creates a new federal cause of…more

Asset Seizure, Confidentiality Agreements, Defend Trade Secrets Act (DTSA), Employer Liability Issues, Misappropriation

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Choosing Owner Entities WISELY

In a recent precedential decision, the TTAB clarified whether a party filing an Opposition is entitled to allege a family of marks as a basis for a Section 2(d) claim when those marks are not all owned by a single legal entity…more

Motion to Dismiss, Pleadings, Popular, Subsidiaries, Trademark Litigation

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Perspectives On The PTAB - Inaugural Issue

We are pleased to share this Perspectives on the PTAB newsletter. Its content is directed toward providing information and analysis of the decisions made by the Patent Trial and Appeal Board. We hope that this newsletter informs…more

Admissible Evidence, America Invents Act, Appeals, Covered Business Method Proceedings, Declaration

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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 (IPR) Proceeding, Obviousness, Patent Infringement

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SCOTUS Paves the Way for Enhanced Damages with Halo Ruling

On June 13, 2016, the Supreme Court issued its opinion in Halo v. Pulse, overturning the Federal Circuit’s long-standing two-step test for willfulness and enhanced damages in patent-infringement cases. The Court’s ruling changes…more

35 U.S.C. § 284, Abuse of Discretion, Enhanced Damages, Halo v Pulse, Judicial Discretion

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Hot Topics: AIA Estoppel Provisions Clarified

The Federal Circuit’s recent decision in Shaw Industries Group, Inc. v. Automated Creel Systems, Inc., has shed some light on the estoppel provisions in America Invents Act (AIA) post-grant proceedings. Like the estoppels in the…more

America Invents Act, Estoppel, Inter Partes Review (IPR) Proceeding, ITC, Patent Litigation

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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

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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 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

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Federal Circuit Backs Amgen on Key Provision of Biosimilars Statute

The Federal Circuit on Tuesday ruled that the 180-day notice of commercial marketing provision of the Biologics Price Competition and Innovation Act (BPCIA) is a requirement for all biosimilar applicants regardless of whether or…more

Amgen, Apotex, Appeals, Biologics, Biosimilars

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Spotlight on the Highlights -- Clarifications and Changes in the April 2016 TMEP

On April 30, 2016, the USPTO issued the April 2016 Trademark Manual of Examining Procedure ("TMEP"), the latest update to the go-to resource for how to prosecute applications to register trademarks with the USPTO. This…more

Examination Priorities, Software, Trademark Act, Trademark Registration, Trademarks

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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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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 (IPR) Proceeding, Obviousness, Patent Litigation

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MarkIt to Market® - November 2016

The November 2016 issue of Sterne Kessler's MarkIt to Market® includes practical tips for registering certification marks, a look at the Trademark Trial and Appeal Board's latest revisions to the Rules of Practice-its most…more

Administrative Proceedings, Certification Marks, Domain Names, gTLD, ICANN

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Patent Rights in the U.S.: Is the Pendulum Finally Swinging Back to Center?

The U.S. patent system has long struggled to strike a balance that both encourages patent rights and prevents patent abuse. Finding that balance requires giving patent owners the right amount of patent enforcement power, while…more

Abstract Ideas, America Invents Act, Burden of Persuasion, Burden of Proof, CLS Bank v Alice Corp

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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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Perspectives On The PTAB - Inaugural Issue

We are pleased to share this Perspectives on the PTAB newsletter. Its content is directed toward providing information and analysis of the decisions made by the Patent Trial and Appeal Board. We hope that this newsletter informs…more

Admissible Evidence, America Invents Act, Appeals, Covered Business Method Proceedings, Declaration

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

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