Patent Ownership

News & Analysis as of

5 Intellectual Property Considerations for Startups - Part II

Time and time again, many startups tout their solution as better, faster or more user friendly than their competitors’, not realizing that the competitors also make the same claims. By doing so, they sound like every other...more

IP|Trend: Starting Up Your Protection of Intellectual Property [Video]

Start-ups are justifiably focused on getting products to market and ensuring that their financial runways are long enough to make it happen. But, failing to pay attention to long-term protections of intellectual property...more

The Troubles with Patent Inventorship

Determining inventorship is answering the question: who contributed enough to an invention to be named as an “inventor” on the patent application? It’s critical, as reviewed by my colleague Shohini Bagchee in her article...more

PTAB Discusses Nexus in Secondary Considerations Argument

There have been many attempts by Patent Owners to rebut a prima facie case of obviousness by pointing to secondary considerations of non-obviousness. To date, such efforts have been unsuccessful....more

Rights of Co-Owners to License Patent Rights

It is sometimes tempting when entering into a joint research agreement to agree that both parties will jointly own any patent rights arising from the collaboration. However, unless the rights of each party are clearly set out...more

Petitioner Can’t Stop Patent Owner from Getting More Patents

In A.C. Dispensing Equipment Inc. v. Prince Castle LLC, IPR2014-00511, Paper 18, (October 17, 2014), the Board denied petitioner authorization to file a motion to stay prosecution of Patent Owner’s continuation patent...more

Federal Circuit Decision Highlights Risk of Co-owning Patents

Co-owning any piece of property can lead to unwanted and unexpected headaches. And as demonstrated by the Federal Circuit in STC.UNM v. Intel Corp., Fed. Cir. No. 2013-1241, this is especially true with respect to...more

Ownership Of Designs: What Has Changed?

New legislation which came into force today makes a significant change to the legal position on commissioned designs. Historically, the ownership position for commissioned designs has contrasted with that for copyright as...more

Losing The Home-Team Advantage – The Supreme Court’s Narrowing of the Doctrine of General Personal Jurisdiction and its Impact on...

A recent Supreme Court opinion in a non-patent case, Daimler AG v. Bauman, likely will have a far-reaching impact on the prevalence of patent declaratory judgment actions. In the past, an accused patent infringer often could...more

No Surprises At Hearing; Demonstratives Must Only Contain Evidence of Record

In TriVascular, Inc. v. Shaun Samuels, IPR2013-00493, Paper 39 (September 2, 2014) the Board sustained a number of objections to the patent owner’s demonstrative exhibits....more

Interest of Justice Require Consideration of One-Day-Late Documents

In Callidus Software Inc. v. Versata Development Group, Inc., CBM2013-00052, Paper 39, CBM2013-00053, Paper 35, CBM2013-00054, Paper 37,(August 29, 2014), the Board denied patent owner’s motion to expunge the petitioner...more

The Board and Secondary Considerations

Commercial Success - In Riverbed Technology, Inc. v. Silver Peak Systems, Inc., IPR2014-00245, Paper 19 (August 22, 2014) the Board explained; Commercial success typically is shown with evidence of “significant...more

Plaintiff Lacks Standing to Enforce Patent When Co-Owner Refuses to Participate in Litigation

STC.UNM v. Intel Corp. - Addressing whether standing and joinder are matters dictated by substantive patent law or by Federal Rule of Civil Procedure 19(a), the U.S. Court of Appeals for the Federal Circuit affirmed a...more

Board Cuts Patent Owners Time in Half to Stay on Schedule

In Reloaded Games, Inc. v. Parallel Networks, LLC, IPR2014-00950, Paper 9 (July 8, 2014), Petitioner filed a second petition for inter partes review covering claims for which trial was not instituted in its first petition for...more

The Intersection Between Intellectual Property Law and Employment Law [Video]

Employment law often becomes the centerpiece in intellectual property litigation. Understanding how these two disciplines intertwine can be critical to winning or losing a case. Attorneys Becky Thorson and Christopher Seidl...more

Only an Owner of a Patent Can Appeal Final Decisions from the PTAB

Vaillancourt v. Becton Dickinson & Co. - Addressing a patent owner’s standing under 35 U.S.C. § 141 to appeal decisions from the United States Patent and Trademark Office’s (PTO) Patent Trial and Appeal Board (PTAB) in...more

Issues of Exceeding the Proper Scope Continue to Plague the Board

In Ariosa Diagnostics, Inc. v. The Board of Trustees of the Leland Stanford Junior University, IPR2013-00308, Paper 27 (June 6, 2014) another patent owner was complaining that the Petitioner had exceeded the proper scope in...more

Pre-AIA Statute Did Not Give Patent Owner in an Ex Parte Reexamination the Right to Bring an Action in District Court

In re Teles AG Informationstechnologien - Addressing whether a patent owner involved in a pre-America Invents Act (AIA) ex parte reexamination, could challenge an adverse reexamination decision in a district court...more

Who are the major players in a patent infringement action? Part One

With different technology and different parties involved, no two patent infringement actions are completely alike. But that doesn’t mean there aren’t commonalities between them. For instance, while the parties to every patent...more

Credibility Challenges Posed by the Eccentric Inventor Witness

Eccentric inventors can be their own worst enemies at depositions and on the witness stand at trial. General Electric Co. v. Wilkins (Fed. Cir., May 8, 2014) is a recent case on point. The General Electric case involved a...more

Medical Device Manufacturer’s Association Submits Comments on USPTO’s Proposed Rule to Require Identification of Attributable...

(April 24, 2014) The Medical Device Manufacturer’s Association (MDMA) announced that it submitted comments to the United States Patent and Trademark Office (USPTO) in regard to the USPTO’s Notice of Proposed Rulemaking...more

A Claim of “Authorship” Does Not Raise an Inventorship Dispute

StoneEagle Services, Inc. v. Gillman - Addressing whether an actual controversy exists that is sufficient to confer jurisdiction under the Declaratory Judgment Act, the U.S. Court of Appeals for the Federal Circuit...more

Beginning the Patent Process

The second step in bringing your medical device to market is to understand whether you can protect your invention. This article is part two of a series that presents the three big issues in intellectual property: Do...more

Count Your Pages (the Board Does)

In Shaw Industries Group, Inc. v. Automated Creel Systems, Inc., IPR2013-00584, Paper 34 (April 14, 2014), the patent owner filed observations on cross-examination that exceeded the 15 pages permitted by 37 C.F.R. §...more

The First (and Second) Outright Win for the Patent Owner

In a heartening (to patent owners) reminder that invalidation in an IPR is not automatic, in ABB Inc. v. Roy-G-Biv Corp., IPR2013-00062 and IPR-00282, Paper 84 (April 11, 2014), the Board found that ABB failed to show that...more

52 Results
|
View per page
Page: of 3