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

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Washington, DC 20005 , United States

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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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Not Everyone Can Run Elon Musk’s Playbook

If anything, Musk’s letter actually underscores the need for a cohesive patent strategy at the outset, when large competitors can easily copy your efforts…more

Cars, Clean Tech, Electric Vehicles, Elon Musk, First Glance

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The U.S. Supreme Court Finds No Liability for Induced Infringement Without Direct Infringement

On June 2, 2014, the U.S. Supreme Court issued a decision in Limelight Networks, Inc. v. Akamai Technologies, Inc. et al., holding that a defendant may not be liable for induced infringement of a patent under 35 U.S.C. § 271(b)…more

Akamai Technologies, Direct Infringement, Induced Infringement, Limelight Networks, Patent Infringement

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FDA Releases New Guidance for Biosimilar Applications

Yesterday, the U.S. Food and Drug Administration provided further clarity as to how it will evaluate applications for approval of biosimilars when it released a draft guidance document outlining the types of clinical…more

Biosimilars, BPCIA, FDA, Guidance Update

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Changes to Implement the Patent Law Treaty

On October 21, 2013 the U.S. Patent and Trademark Office (USPTO) published a Notice of Final Rulemaking to revise its rules of practice to reflect the Patent Law Treaty and title II of the Patent Law Treaties Implementation Act…more

Filing Deadlines, Filing Requirements, Patent Applications, Patent Law Treaty, Patent Term Adjustment

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Design Patent Case Digest: Munchkin, Inc. and Toys “R” US, Inc. v. Luv N’ Care, LTD.

Decision Date: April 21, 2014 - Court: Patent Trial and Appeal Board - Patents: D617,465 - Holding: Claimed design is obvious and therefore UNPATENTABLE - Opinion: Petitioners Munchkin, Inc. and Toys…more

Design Patent, Inter Partes Review Proceedings, Obviousness, Patents, Prior Art

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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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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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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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U.S. Patent and Trademark Office Proposes Fee Reductions

The USPTO has proposed a reduction in some of its fees for electronically filing trademark applications and renewing registrations. The reduced fees would become effective January 2015 and are as follows..…more

Patent Fees, TEAS, USPTO

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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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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 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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ITC Says the Importation of Digital Data Can Constitute Importation of a Patent-Infringing Product

On April 3, 2014, the United States International Trade Commission affirmed that the importation of digital data via electronic transmission can constitute “importation” of a patent-infringing product in violation of Section 337…more

ALJ, Cease and Desist, Digital Downloads, Electronic Data Transmissions, Imports

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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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Changes to Implement the Patent Law Treaty

On October 21, 2013 the U.S. Patent and Trademark Office (USPTO) published a Notice of Final Rulemaking to revise its rules of practice to reflect the Patent Law Treaty and title II of the Patent Law Treaties Implementation Act…more

Filing Deadlines, Filing Requirements, Patent Applications, Patent Law Treaty, Patent Term Adjustment

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12 Observations on Covered Business Method Review

CBM: When the America Invents Act (AIA) was passed in 2011, it ushered in a number of new post-grant options to challenge and defend patents at the United States Patent and Trademark Oce. One of these newly-created proceedings, …more

America Invents Act, Covered Business Method Patents, Patent Reform, Patents, Post-Grant Review

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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 U.S. Supreme Court Finds No Liability for Induced Infringement Without Direct Infringement

On June 2, 2014, the U.S. Supreme Court issued a decision in Limelight Networks, Inc. v. Akamai Technologies, Inc. et al., holding that a defendant may not be liable for induced infringement of a patent under 35 U.S.C. § 271(b)…more

Akamai Technologies, Direct Infringement, Induced Infringement, Limelight Networks, Patent Infringement

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Another Patent Acceleration Option: USPTO Initiates Glossary Pilot Program

Beginning June 2, 2014, patent applicants have another vehicle to accelerate examination of a newly filed patent application – add a glossary. The United States Patent and Trademark Office launched today a new pilot…more

Patent Applications, Patents, USPTO

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PTAB Invalidates Patent in First IPR Trial of a Design Patent

On April 21, 2014, the Patent Trial and Appeal Board (PTAB) of the U.S. Patent and Trademark Office issued a final written decision in the first inter partes review proceeding involving a design patent (IPR2013-00072). In the…more

Design Patent, Inter Partes Review Proceedings, Motion to Amend, Patent Trial and Appeal Board, 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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FDA Releases New Guidance for Biosimilar Applications

Yesterday, the U.S. Food and Drug Administration provided further clarity as to how it will evaluate applications for approval of biosimilars when it released a draft guidance document outlining the types of clinical…more

Biosimilars, BPCIA, FDA, Guidance Update

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U.S. Patent and Trademark Office Proposes Fee Reductions

The USPTO has proposed a reduction in some of its fees for electronically filing trademark applications and renewing registrations. The reduced fees would become effective January 2015 and are as follows..…more

Patent Fees, TEAS, USPTO

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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 »

U.S. Patent and Trademark Office Proposes Fee Reductions

The USPTO has proposed a reduction in some of its fees for electronically filing trademark applications and renewing registrations. The reduced fees would become effective January 2015 and are as follows..…more

Patent Fees, TEAS, 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

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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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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 »

ITC Says the Importation of Digital Data Can Constitute Importation of a Patent-Infringing Product

On April 3, 2014, the United States International Trade Commission affirmed that the importation of digital data via electronic transmission can constitute “importation” of a patent-infringing product in violation of Section 337…more

ALJ, Cease and Desist, Digital Downloads, Electronic Data Transmissions, Imports

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Areas of Practice
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100+ Attorneys

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