The United States Patent and Trademark Office (USPTO) has announced new rules governing amendment practice in trial proceedings under the America Invents Act (AIA), making certain provisions of the motion to amend pilot...more
In patent litigation, expert witnesses play a crucial role in providing specialized knowledge to the court. In a recent case where Osseo Imaging LLC sued Planmeca USA Inc. for patent infringement, the Federal Circuit...more
The recent case involving United Therapeutics' patent on Tyvaso and Liquidia's Yutrepia sheds light on the complexities of patent law. The Federal Circuit's initial infringement finding, followed by the Patent Trial and...more
Recent cases show the U.S. Patent and Trademark Office director's interest in using director review to address substantive issues like obviousness, not just procedural matters or changes in the law. Grants in these cases,...more
The Court of Appeals for the Federal Circuit has sparked debate following a recent ruling on the Patent Trial and Appeal Board's (PTAB) application of estoppel provisions in invalidating amended claims in inter partes...more
United States Patent and Trademark Office Director Kathi Vidal's recent sanctions decisions have been notable for their seriousness and impact. In each case, Vidal invoked the Director Review process, a measure implemented...more
The U.S. Supreme Court's decision to no longer give deference to government agency interpretations could lead to challenges against U.S. Patent and Trademark Office rules....more
The Patent Trial and Appeal Board (PTAB) has seen a steady increase in the invalidation rate of patents in the past five years, reaching 71% for the first two quarters of 2024. In 2023, challenged claims were invalidated 68%...more
Judge Alan D. Albright, sitting by designation at the Federal Circuit, penned his inaugural appellate decision in Apple v. Omni MedSci on Friday. The unanimous ruling favored Apple, who contested Omni MedSci’s patent via...more
The U.S. Patent & Trademark Office (PTO) has introduced new rules enhancing the independence of administrative patent judge (APJ) panels. The final rule, building on Standard Operating Procedure 4, prohibits senior PTO...more
So far in 2024, Director Review decisions have shifted from primarily sua sponte DRs to party-initiated DRs. In addition, there has been an increasing number of DR requests by petitioners this year....more
Lynk Labs has presented an argument to the Federal Circuit, asserting that patent applications should only be utilized to invalidate patents in inter partes reviews based on their publication date. Currently, the filing date...more
The Patent Trial and Appeal Board (PTAB) recently made a notable pair of decisions invalidating patents held by Wildseed Mobile LLC as obvious over art asserted by Google. Wildseed Mobile, a mobile technology company,...more
The NPRM proposals align with interim guidance on requesting director review for key AIA trial decisions. Following the Arthrex v. Smith & Nephew ruling, director review by the USPTO Director remains crucial for addressing...more
The NPRM introduces a significant procedural change by creating a separate briefing process for discretionary denials in post-grant trials, streamlining the current practice where petitioners must reserve space for addressing...more
On Tuesday, the en banc Federal Circuit released its highly anticipated decision in LKQ v. GM Global Technology Operations LLC, rejecting as “improperly rigid” the previous standard for evaluating whether a design patent is...more
5/24/2024
/ Design Patent ,
En Banc Review ,
Intellectual Property Litigation ,
Intellectual Property Protection ,
Inter Partes Review (IPR) Proceeding ,
Obviousness ,
Patent Litigation ,
Patent Prosecution ,
Patent Trial and Appeal Board ,
Patents ,
Precedential Opinion ,
Prior Art ,
USPTO ,
Utility Patents
The recent decision in SAS Institute v. Iancu — in combination with the proposed shift from a broadest reasonable interpretation (BRI) standard to the Phillips standard for claim construction used in district court — moves...more
7/11/2018
/ America Invents Act ,
Broadest Reasonable Interpretation Standard ,
Claim Construction ,
Inter Partes Review (IPR) Proceeding ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Phillips Standard ,
SAS Institute Inc. v Iancu ,
SCOTUS ,
USPTO
In This Issue -
US Taxation of IP After Tax Reform -
U.S. taxation of intellectual property has become astoundingly more complex after the Tax Cuts and Jobs Act. The new rules are so complex that the IRS and Treasury...more
7/11/2018
/ America Invents Act ,
Appeals ,
Artists ,
Claim Construction ,
Copyright ,
Copyright Infringement ,
Defend Trade Secrets Act (DTSA) ,
Disgorgement ,
Evidence ,
Expert Testimony ,
Fair Use ,
Film Industry ,
Foreign Derived Intangible Income (FDII) ,
Franchises ,
Income Taxes ,
Indefiniteness ,
Injunctive Relief ,
Intellectual Property Litigation ,
Intellectual Property Protection ,
Inter Partes Review (IPR) Proceeding ,
IRS ,
Misappropriation ,
New Rules ,
Patent Infringement ,
Patent Litigation ,
Patent Royalties ,
Patent Trial and Appeal Board ,
Patents ,
Phillips Standard ,
Popular ,
SAS Institute Inc. v Iancu ,
SCOTUS ,
Summary Judgment ,
Tax Code ,
Tax Cuts and Jobs Act ,
Tax Planning ,
Tax Reform ,
The Copyright Act ,
Trade Secrets ,
Trademark Litigation ,
Trademarks ,
Transfer Taxes ,
U.S. Treasury ,
Uniform Trade Secrets Acts ,
USPTO
In the Winter 2017 edition of the Intellectual Property Bulletin, we reported on IP-related changes expected with the incoming Trump administration and the new Congress. Here we look at two such changes currently underway:...more
11/7/2017
/ Administrative Appointments ,
Copyright ,
Copyright Office ,
Cyber Crimes ,
Defend Trade Secrets Act (DTSA) ,
Disney ,
DMCA ,
Fair Use ,
Film Industry ,
Intellectual Property Protection ,
Legislative Agendas ,
Misappropriation ,
Patent Infringement ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patent-Eligible Subject Matter ,
Patents ,
Proposed Legislation ,
Trade Secrets ,
Trademark Registration ,
Trademarks ,
Trump Administration ,
USPTO
Judge Sue L. Robinson of the U.S. District Court for the District of Delaware recently identified a logical fallacy in the “statutory estoppel” jurisprudence with respect to 35 U.S.C. § 315(e)(1).
According to the...more
In my previous post, I provided an explanation of Abstract Ideas under Alice, emphasizing that to be an ineligible abstract idea, a claim must recite a fundamental building block of human ingenuity. How then does an examiner...more
On June 25, 2014, just six days after the Supreme Court decided Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347 (2014), the USPTO issued its Preliminary Examination Instructions (“Guidance”) in view of the case. ...more
By now, we've all heard of the controversy regarding the lax oversight at the USPTO of examiners in the Office's Telework Program--what I'll unofficially dub as "Telegate." Now, the House Oversight and Government Reform...more
In my recent analysis of the Alice decision, I wrote the following:
In Benson, the Court believed (wrongly it turned about, but that’s beside the point) that the claims covered the basic algorithm for converting...more
On the final day of its 2013 term, the Supreme Court issued some interesting orders in Section 101 cases dealing with computer-implemented business methods.
First, in WildTangent, Inc. v. Ultramercial, LLC (13-255),...more