Patent Ownership

News & Analysis as of

CBO Provides Cost Estimate to Government to Implement Innovation Act

Earlier this month, the Congressional Budget Office (CBO) issued a cost estimate for the Innovation Act (H.R. 9). The bill, which was introduced in February, was reported by the House Committee on the Judiciary in June. The...more

Doubling Down on Idle Free

In Masterimage 3D, Inc. v. Reald Inc., IPR2015-00040, Paper 42 (July 15, 2015), the Board instructed that patent owners seeking to amend their applications should still follow all of the requirements set forth in Idle Free...more

PTAB Issues Representative Order Clarifying Motion to Amend Analysis in Idle Free Systems

Yesterday the Patent Trial and Appeal Board (“Board”) added a recent order to its list of Representative Orders, Decisions, and Notices. See MasterImage 3D, Inc. v. RealD Inc., IPR2015-00040, Paper 42 (PTAB July 15, 2015). ...more

PTAB Designates New “Informative Opinion”

When the PTAB considers one of its own decisions to be “informative,” it is always worth taking note. On Friday, July 17th, the Board designated its opinion in Arris Group, Inc. v. C-Cation Techs., IPR2015-00635 as...more

Innovative Collaboration – IP Considerations

It is common for medical device makers to partner with doctors, universities, designers, manufacturers, R&D labs, or salespeople in the development of medical devices. To reap the intended benefits of such efforts,...more

Board Denies Petition For Failure to Identify All Real Parties-In-Interest

Many Patent Owners have attempted to divert IPR challenges by arguing that all real parties-in-interest were not identified in the Petition. Almost all of those efforts have failed. That is what makes Paramount Home...more

Employee Ownership of Patentable Inventions

A startup in the oil-and-gas service sector sought to improve downhole well stimulation technology. After a few years, differences between the three founders culminated in the ouster of Mr. Groves, one of the founders. Mr....more

April Court Decision Round-Up

Note: Beginning this month, IP Law Tracker will highlight significant intellectual property decisions from the U.S. Court of Appeals for the Sixth Circuit and the U.S. District Courts for the Eastern District of Michigan and...more

Understanding Post-AIA Power of Attorney Procedures

Applicants identified upon a U.S. patent application’s filing can impact the ownership rights to the patent application throughout prosecution. Prior to implementation of relevant aspects of the America Invents Act (AIA) on...more

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

61 Results
|
View per page
Page: of 3

"My best business intelligence, in one easy email…"

Your first step to building a free, personalized, morning email brief covering pertinent authors and topics on JD Supra:

Sign up to create your digest using LinkedIn*

*With LinkedIn, you don't need to create a separate login to manage your free JD Supra account, and we can make suggestions based on your needs and interests. We will not post anything on LinkedIn in your name. Or, sign up using your email address.
×