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

MarkIt to MarketTM - July 2015

The July issue of Sterne Kessler's MarkIt to MarketTM newsletter explains why two pronged protection is the best approach for product configuration, discusses the importance of coordination between legal and marketing…more
| Communications & Media Law, Intellectual Property, Science, Computers, & Technology

Kaneka v. Xiamen Kingdomway Group: Implicit Order Read into Method Steps of Industrial Biotechnology Patent

The Federal Circuit’s recent decision in Kaneka Corp. v. Xiamen Kingdomway Group Co. (Fed. Cir. 2015) serves as a reminder that courts may implicitly read an order into a patent’s method claim steps, even if the applicant did…more
| Civil Procedure, Intellectual Property, Science, Computers, & Technology

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
| Civil Procedure, Intellectual Property

gTLD Sunrise Periods Now Open

As first reported in our December 2013 newsletter, the first new generic top-level domains (gTLDs, the group of letters after the "dot" in a domain name) have launched their "Sunrise" registration periods. Please contact us or…more
| Communications & Media Law, Intellectual Property, Science, Computers, & Technology

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
| Civil Procedure, Commercial Law & Contracts, Intellectual Property, Science, Computers, & Technology

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
| Civil Procedure, Intellectual Property, Science, Computers, & Technology

New International Searching Authority Available for Green Technology Companies

Effective July 1, 2015, green technology companies can now choose the Japan Patent Office (JPO) as an International Searching Authority (ISA) and International Preliminary Examining Authority (IPEA) for international…more
| Intellectual Property, International Law & Trade, Science, Computers, & Technology

Upcoming Changes in Canadian Trademark Law

Canada has amended its Trademark Law, and although the amended Law's effective date is not yet known, brand owners can expect three significant changes to Canadian trademark law practice. First, to U.S. brand owners and…more
| Communications & Media Law, Intellectual Property, International Law & Trade

Hashtag Trademarks: #ItsAllAboutTheUse

Brand owners have embraced hashtags (words or phrases preceded by a hash or pound sign - #) as a way to both engage consumers and track social media posts regarding a specific product or topic. Not surprisingly, the increased…more
| Communications & Media Law, Intellectual Property

Changes in U.S Certification Mark Requirements

The U.S. Patent and Trademark Office (USPTO) recently issued a final rule codifying current USPTO practice relating to certification marks. Certification marks are used by authorized users to indicate the following: (1)…more
| Communications & Media Law, Intellectual Property

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
| Communications & Media Law, Intellectual Property, International Law & Trade, Science, Computers, & Technology

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
| Civil Procedure, Intellectual Property

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
| Civil Procedure, Civil Remedies, Commercial Law & Contracts, Intellectual Property

Federal Circuit Issues First Reversal & Remand of an Inter Partes Review in Microsoft Corporation v. Proxyconn, Inc. Addressing Claim Construction and Amendment Standards

The Federal Circuit issued its first reversal and remand of a final decision in an inter partes review issued by the Patent Trial and Appeal Board (“PTAB”). In Microsoft Corporation v. Proxyconn, Inc., No. 14-1543, a panel…more
| Administrative Law, Civil Procedure, Intellectual Property, Science, Computers, & Technology

Design Patent Case Digest: Apple Inc. v. Samsung Electronics Co., Ltd.

Decision Date: May 18, 2015 - Court: U.S. Court of Appeals for the Federal Circuit - Patents: D593,087; D604,305; D618,677 - Holding: Judgment of trade dress dilution REVERSED; judgment of patent validity and…more
| Civil Procedure, Civil Remedies, Communications & Media Law, Intellectual Property
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