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Points & Authorities - Fall 2014

In This Issue: - Legal Considerations for Web Based Start-Ups - California’s Water Anxiety Prompts Landmark Groundwater Legislation - Points from the President - Factor Beware: A Judgment Lien...more

Judge Griesa finds a patent prosecution bar does not preclude litigation counsel from assisting in an IPR, and would have reached...

Endo Pharmaceuticals Inc. et al. v. Teva Pharmaceuticals USA, Inc. et al. Case Number: 1:12-cv-08060 - Patentee Endo asked the court to rule that the protective orders in the patent infringement cases it filed...more

Checking It Twice: Verify Facts and Arguments on Prior Art to Avoid Inequitable Conduct in Patent Prosecution

In the case Apotex, Inc. v. UCB, Inc., released in August 2014, the Federal Circuit affirmed a district court's finding of inequitable conduct on the part of an inventor-drafter, as the court found clear and convincing...more

Federal Circuit Frames Test for Patent-Eligibility

Personalized medicine relies on diagnostics to analyze a patient for individualized therapy and for monitoring a patient’s health status. Some diagnostic tests use natural products, for example gene sequences, either as the...more

IPR Update – Prosecution Bars

Are proceedings before the Patent Trial and Appeals Board ("PTAB") more like prosecution or more like litigation? This might appear to be a purely academic question, except for one significant issue -- litigation prosecution...more

A Powerful Tool: Challenging Assertion during Patent Prosecution

Patent claims can be rejected, during patent prosecution, for a very large variety of reasons. A proper rejection is factually based. Examiners for the United States Patent and Trademark Office, and patent practitioners...more

The Dire Consequences of Misleading Patent Examiners and the Court During Patent Prosecution and Litigation

As the summer winds down, vacations recede in the rear-view mirrors, and the “school” year begins, two recent cases offer a refresher course in the dire consequences awaiting inventors who misrepresent prior art during...more

Lean Six Sigma - It’s not just for manufacturing

Motorola developed Six Sigma in 1986 to provide techniques and tools for process improvement. It subsequently used Six Sigma in all of its manufacturing operations. The name comes from the world of statistical modeling, where...more

Track One and the Patent Prosecution Highway [Video]

Michael V. Messinger, director at the intellectual property law firm Sterne, Kessler, Goldstein & Fox, P.L.L.C., discusses new patent acceleration tools available to create patent portfolios quickly. He provides an overview...more

What is Patent Term Adjustment and Why Does It Matter?

For patents granted on applications filed on or after June 8, 1995, the enforceable patent term begins on the day the patent issues and generally expires 20 years from the earliest effective filing date of the application. ...more

A Prosecution History Without Express Disclaimers Still Informs Claim Construction

Shire Development, LLC v. Watson Pharmaceuticals, Inc. - Addressing the impact of statements made during prosecution on claim construction, the U.S. Court of Appeals for the Federal Circuit vacated and remanded a lower...more

IP & Technology Newsletter (Spring 2014)

In this issue: - Special Report: US Supreme Court Will Decide Key IP Cases in 2014 - Patent Litigation: Strategies to Battle NPEs: Lessons from the Front Lines - Design Patents: The Federal Circuit...more

Defensive Publication: An Alternate Way of Maintaining Your Turf in a Competitive Marketplace

It is common knowledge that the bread-and-butter of emerging startups lies in securing exclusive rights to key aspects of their implicated technology. Staking claims to valuable IP assets via direct ownership or exclusive...more

Some Practical Approaches to Prosecution of Patents for Computer or Software Implemented Inventions

The patentability of inventions implemented with a computer or based on software have come under increased scrutiny in recent years. One of the primary issues related to the increased scrutiny is whether the patent...more

Subject Matter Conflicts of Interest in Patent Prosecution – Training Your Team

This article series is focusing on subject matter conflict of interest issues that are a significant concern for attorneys. Patent practitioners have an additional layer of concern with respect to subject matter conflicts of...more

Singapore: New Positive Assessment Examination Procedure

On 10 July 2012 Singapore passed the Patent (Amendment) Bill and the Intellectual Property (Miscellaneous Amendments) Bill. One of the biggest changes is that Singapore has moved away from a self-assessment system to a...more

Be Careful What You Draw: Prosecution History Estoppel Applies to Design Patents - Pacific Coast Marine v. Malibu Boats, LLC

Addressing for the first time the applicability of prosecution history estoppel in design patent cases, the U.S. Court of Appeals for the Federal Circuit reversed the lower court, holding that while prosecution history...more

IP: Subject Matter Conflicts of Interest in Patent Prosecution – Case Law

As discussed in the introductory article of this series, conflict of interest issues are a significant concern for attorneys. Patent practitioners have an additional layer of concern with respect to subject matter conflicts...more

Australia Joins the Global Patent Prosecution Highway

The Australian Patent Office is one of 13 patent offices from around the globe that have joined forces to create a Global Patent Prosecution Highway (GPPH) pilot program, which commenced on 6 January 2014. ...more

Addition of "No-Charge" Limitation During Prosecution Costs Inventor His Patent

On December 11, 2013, Judge Susan Illston of the United States District Court for the Northern District of California found the asserted claims of Ho Keung Tse's U.S. Patent No. 6,665,797 (the "'797 patent") invalid for lack...more

New Global Patent Prosecution Highways to Accelerate Examination of Patents

The Patent Prosecution Highway (PPH) gives applicants the opportunity to accelerate the examination of their patent applications in multiple countries once they have received a favourable report in one country. This is...more

New Proposed USPTO Rules for International Design Protection

U.S. design patents and their international counterparts (generally termed “industrial designs”) protect the ornamental appearance of an article of manufacture. Design protection has been the subject of increased attention...more

IPO White Paper Calls for Update to Patent Examination System

A white paper authored by two members of the Intellectual Property Owners Association (IPO) U.S. Patent Office Practice Committee argues that the current patent examination system "has run its course," and needs to be...more

AGs To The Front Lines: State Attorneys General Begin Wielding Unfair Competition Laws Against Foreign IP Thieves

Companies victimized by intellectual property theft may have a new weapon: asking state attorneys general for civil prosecution under unfair competition laws. ...more

In Uship Federal Circuit Finds Prosecution History Disclaimer in Arguments Against Restriction Requirement

In Uship Intellectual Properties, LLC v. United States, the Federal Circuit upheld the claim construction applied by the Court of Federal Claims when it held that the United States and IBM Corporation did not infringe the...more

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