McDonnell Boehnen Hulbert & Berghoff LLP

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300 South Wacker Drive
Chicago, Illinois 60606-6709, United States
Phone: 312.913.0001
Fax: 312.913.0002
Areas of Practice
  • Intellectual Property
  • Litigation
Locations
Other U.S. Locations
  • California
  • North Carolina
Number of Attorneys
50-100 Attorneys

MBHB Snippets: Review of Developments in Intellectual Property Law - Volume 12, Issue 1 (Winter 2014)

In This Issue: Experience with the USPTO’s First Action Interview Program; “Patent Trolls” Beware – Congress Tackles Vexatious Patent Litigation; Evolving Data Protection Regimes in the Asia-Pacific Arena and Their Impact…more

Asia, Copyright Infringement, Cross-Border Transactions, Music Industry, Patent Litigation

See all updates »

MBHB Snippets: A review of developments in Intellectual Property Law - Volume 15, Issue 2

Preparing patent applications for examination at the United States Patent and Trademark Office (USPTO) requires proficient writing, detailed knowledge of the requirements of the Patent Act, and technical acumen. Once a patent…more

Copyright, Counterfeiting, Halo v Pulse, Patent Prosecution, Patents

See all updates »

MBHB Snippets: A review of developments in Intellectual Property Law - Volume 14, Issue 3

Supplemental Examination: Potential Benefits vs. Guaranteed Risks - The America Invents Act of 2011 introduced supplemental examination of patents as a post-grant process intended to limit expensive and unpredictable…more

3D Printing, America Invents Act, Compulsory Licenses, Defend Trade Secrets Act (DTSA), Digital Media

See all updates »

Lessons Learned from AIA Invalidity Proceedings in the Bio/Pharma Space

September 16, 2016, marked the fourth anniversary of the effective date for the invalidity proceedings before the Patent Trial and Appeal Board (PTAB or Board) created by the America Invents Act (AIA). These new AIA proceedings,…more

America Invents Act, Biotechnology, Covered Business Method Proceedings, Inter Partes Review (IPR) Proceeding, Patent Ownership

See all updates »

AMP v. Myriad: A Bad Day At Black Rock

Last week, The Supremes once again stepped into an area of science/law where their limited knowledge of both fields will create more harm than good. The Supremes' say that the problem with isolated and purified DNA is that it…more

AMP v Myriad, DNA, Human Genes, Myriad, Patent-Eligible Subject Matter

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Intellectual Ventures I LLC v. Erie Indemnity Co. (Fed. Cir. 2017)

Intellectual Ventures I (IV) brought an action against Erie Indemnity Company in the Western District of Pennsylvania, alleging infringement of U.S. Patent No. 7,757,298. Erie filed a motion to dismiss under Rule 12(b)(6),…more

CLS Bank v Alice Corp, Patent Infringement, Patent Litigation, Patent-Eligible Subject Matter, Patents

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Patent Profile: DermTech Receives Patent for Method of Detecting Melanoma in Human Subjects

The U.S. Patent and Trademark Office recently issued a notice of allowance for U.S. Application No. 14/199,900, which is entitled "Diagnosis of Solar Lentigo by Nucleic Acid Analysis." The '900 application, which is assigned to…more

Biotechnology, Cancer, DNA, Healthcare, Patents

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The IP Owner’s Guide to Brexit: Don’t Panic

By now, everyone has likely heard about the United Kingdom’s vote last week to leave the European Union. Few things are certain at this time, as governments around the world are still making plans to deal with Brexit. Further,…more

Community Designs, EU, European Patent Convention, European Patent Office, Intellectual Property Protection

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MBHB Snippets: Review of Developments in Intellectual Property Law - Winter 2013 - Volume 11, Issue 1: If I Prioritize Examination of My Application, Should the Patent Office?

Applications under the US Patent and Trademark Office’s (USPTO) prioritized examination program are given “special status” and examined out-of-turn until a final disposition is reached. This program has considerably reduced…more

America Invents Act, Patent Applications, Patent Reform, Patents, Prioritized Examination

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PTAB Life Sciences Report - November 2017 #2

About the PTAB Life Sciences Report: Each month we will report on developments at the PTAB involving life sciences patents. Sawai USA, Inc. v. Astellas Pharma Inc. PTAB Petition: IPR2018-00079; filed October 16,…more

Life Sciences, Patent Litigation, Patent Trial and Appeal Board, Patents, Pharmaceutical Industry

See all updates »

MBHB Snippets: Review of Developments in Intellectual Property Law - Volume 12, Issue 2 (Spring 2014)

In This Issue: - “Patent Trolls” in the Crosshairs – But How Will Patent Reform Legislation Impact the Rest of Us - USPTO Guidance Takes an Expansive View of Patent-Ineligible Subject Matter - Functional Claim…more

Data Protection, Non-Practicing Entities, Patent Exhaustion, Patent Litigation, Patent Reform

See all updates »

CAFC Issues Writ of Mandamus reversing Eastern District of Texas 4-Factor Test for a “Regular and Established Place of Business” Under §1400(b)

In In re: Cray, Inc, No. 2017-129, the CAFC issued a writ of mandamus vacating Judge Gilstrap’s decision involving venue under 28 U.S.C. §1400(b) in Raytheon Co. v. Cray Inc., Case No. 15-cv-1554 (E.D. Texas). That earlier…more

Appeals, CAFC, Principal Place of Business, Reversal, TC Heartland LLC v Kraft Foods

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Lessons Learned from AIA Invalidity Proceedings in the Bio/Pharma Space

September 16, 2016, marked the fourth anniversary of the effective date for the invalidity proceedings before the Patent Trial and Appeal Board (PTAB or Board) created by the America Invents Act (AIA). These new AIA proceedings,…more

America Invents Act, Biotechnology, Covered Business Method Proceedings, Inter Partes Review (IPR) Proceeding, Patent Ownership

See all updates »

MBHB Snippets: Review of Developments in Intellectual Property Law - Summer 2014 - Vol. 12, Issue 3

In This Issue: - The Analysis for Design Patent Infringement Post-Egyptian Goddess - Supreme Court Issues Decision in Alice Corp. v. CLS Bank - Capitol Records, LLC v. Pandora Media, Inc.: Future of Digital…more

Capitol Records, CLS Bank v Alice Corp, Copyright, Design Patent, Digital Media

See all updates »

MBHB Snippets: Review of Developments in Intellectual Property Law - Volume 12, Issue 2 (Spring 2014)

In This Issue: - “Patent Trolls” in the Crosshairs – But How Will Patent Reform Legislation Impact the Rest of Us - USPTO Guidance Takes an Expansive View of Patent-Ineligible Subject Matter - Functional Claim…more

Data Protection, Non-Practicing Entities, Patent Exhaustion, Patent Litigation, Patent Reform

See all updates »

Strategies for Expediting the Patenting Process

Intellectual property protection, particularly patent protection, is important for many companies, and the ability to speed up the patenting process may be essential for a variety of reasons. For instance, one or more issued…more

Corporate Counsel, Fast Track Process, Intellectual Property Protection, Patent Litigation, Patent Prosecution

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MBHB Snippets: A review of developments in Intellectual Property Law - Volume 14, Issue 3

Supplemental Examination: Potential Benefits vs. Guaranteed Risks - The America Invents Act of 2011 introduced supplemental examination of patents as a post-grant process intended to limit expensive and unpredictable…more

3D Printing, America Invents Act, Compulsory Licenses, Defend Trade Secrets Act (DTSA), Digital Media

See all updates »

MBHB Snippets: A review of developments in Intellectual Property Law - Volume 15, Issue 3

The DTSA After One Year: Has the Federal Trade Secrets Law Met Expectations? - On May 11, 2017, the Defend Trade Secrets Act (DTSA) – the law that created a Federal cause of action for trade secret misappropriation –…more

Defend Trade Secrets Act (DTSA), Forum Selection, Intellectual Property Protection, Marijuana, Misappropriation

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Allergan, Inc. v. Apotex, Inc. (Fed. Cir. 2014)

In a not particularly well-written opinion that breaks no new ground, the Federal Circuit considered a consolidated appeal of two patents directed to methods of promoting hair growth, including, in particular, eyelash hair…more

Allergan Inc, ANDA, Apotex, Appeals, Claim Construction

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Biotech Institute's Growing Patent Portfolio -- U.S. Patent No. 9,095,554 and the Path Forward

As with any billion dollar market, patents are an important consideration for the cannabis industry. Despite its current classification as a Schedule I drug under the Controlled Substances Act, however, the U.S. Patent and…more

Biotechnology, Marijuana, Patents, USPTO

See all updates »

MBHB Snippets: A review of developments in Intellectual Property Law - Volume 15, Issue 2

Preparing patent applications for examination at the United States Patent and Trademark Office (USPTO) requires proficient writing, detailed knowledge of the requirements of the Patent Act, and technical acumen. Once a patent…more

Copyright, Counterfeiting, Halo v Pulse, Patent Prosecution, Patents

See all updates »

MBHB Snippets: A review of developments in Intellectual Property Law - Volume 15, Issue 2

Preparing patent applications for examination at the United States Patent and Trademark Office (USPTO) requires proficient writing, detailed knowledge of the requirements of the Patent Act, and technical acumen. Once a patent…more

Copyright, Counterfeiting, Halo v Pulse, Patent Prosecution, Patents

See all updates »

Secured Mail Solutions LLC v. Universal Wilde, Inc. (Fed. Cir. 2017)

Patents Directed to Mail Barcodes Found to be Directed to Ineligible Subject Matter - Secured Mail Solutions LLC appealed from the U.S. District Court for the Central District of California's grant of a motion to dismiss on…more

Abstract Ideas, CLS Bank v Alice Corp, Patent-Eligible Subject Matter, Patents

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MBHB Snippets: Review of Developments in Intellectual Property Law - Spring 2013 - Volume 11, Issue 2: Implementing the New Micro Entity Status at the U.S. Patent Office

As part of new rules introduced by the Leahy-Smith America Invents Act (AIA), a new section that defines a “micro entity” was added to Title 35 of the United States Code. As a subset of small entity status, micro entity status…more

America Invents Act, Fees, Micro Entity Status, Patent Applications, Patent Reform

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MBHB Snippets: Review of Developments in Intellectual Property Law - Volume 12, Issue 2 (Spring 2014)

In This Issue: - “Patent Trolls” in the Crosshairs – But How Will Patent Reform Legislation Impact the Rest of Us - USPTO Guidance Takes an Expansive View of Patent-Ineligible Subject Matter - Functional Claim…more

Data Protection, Non-Practicing Entities, Patent Exhaustion, Patent Litigation, Patent Reform

See all updates »

The Status of Patent Laches after Petrella v. MGM

Today in Petrella v. Metro-Goldwyn-Mayer, Inc. (case number 12-1315), the U.S. Supreme Court ruled that the doctrine of laches could not be invoked to bar a copyright claim that was brought within the statutorily allowed…more

Copyright, Copyright Infringement, Laches, Lanham Act, Petrella v. MGM

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Review of Section 101 Decisions by the Federal Circuit

Since the Supreme Court decided Alice Corp. v. CLS Bank Int’l in 2014, patent practitioners and the courts alike have struggled to find clarity in the patent eligibility framework of 35 U.S.C. § 101. For the Federal Circuit in…more

CLS Bank v Alice Corp, Corporate Counsel, Enfish v Microsoft, Patent-Eligible Subject Matter, Patents

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General Plastic Industrial Co. v. Canon Kabushiki Kaisha (PTAB 2017)

In a decision entered last week, the Patent Trial and Appeal Board (PTAB) of the U.S. Patent and Trademark Office made clear its intention going forward to weigh seven factors in determining whether to deny follow-on inter…more

Inter Partes Review (IPR) Proceeding, Patent Trial and Appeal Board, Patents, USPTO

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MBHB Snippets: A review of developments in Intellectual Property Law - Volume 15, Issue 1

In 2011, the Leahy-Smith America Invents Act (“AIA”) established new post-issuance procedures for challenging the validity of a granted patent before the Patent Trials and Appeal Board (“PTAB” or “Board”). Inter partes reviews…more

America Invents Act, Covered Business Method Patents, Covered Business Method Proceedings, Estoppel, Inter Partes Review (IPR) Proceeding

See all updates »

Biotech Institute's Growing Patent Portfolio -- U.S. Patent No. 9,095,554 and the Path Forward

As with any billion dollar market, patents are an important consideration for the cannabis industry. Despite its current classification as a Schedule I drug under the Controlled Substances Act, however, the U.S. Patent and…more

Biotechnology, Marijuana, Patents, USPTO

See all updates »

PTAB Life Sciences Report -- Part IV

About the PTAB Life Sciences Report: Each month we will report on developments at the PTAB involving life sciences patents. Smith & Nephew, Inc. v. ConforMIS, Inc. - PTAB Petition: IPR2017-00510; filed December 20,…more

Inter Partes Review (IPR) Proceeding, Life Sciences, Patent Litigation, Patent Trial and Appeal Board, Patents

See all updates »

MBHB Snippets: A review of developments in Intellectual Property Law - Volume 15, Issue 1

In 2011, the Leahy-Smith America Invents Act (“AIA”) established new post-issuance procedures for challenging the validity of a granted patent before the Patent Trials and Appeal Board (“PTAB” or “Board”). Inter partes reviews…more

America Invents Act, Covered Business Method Patents, Covered Business Method Proceedings, Estoppel, Inter Partes Review (IPR) Proceeding

See all updates »

MBHB Snippets: A review of developments in Intellectual Property Law - Volume 15, Issue 2

Preparing patent applications for examination at the United States Patent and Trademark Office (USPTO) requires proficient writing, detailed knowledge of the requirements of the Patent Act, and technical acumen. Once a patent…more

Copyright, Counterfeiting, Halo v Pulse, Patent Prosecution, Patents

See all updates »

MBHB Snippets: A review of developments in Intellectual Property Law - Volume 15, Issue 1

In 2011, the Leahy-Smith America Invents Act (“AIA”) established new post-issuance procedures for challenging the validity of a granted patent before the Patent Trials and Appeal Board (“PTAB” or “Board”). Inter partes reviews…more

America Invents Act, Covered Business Method Patents, Covered Business Method Proceedings, Estoppel, Inter Partes Review (IPR) Proceeding

See all updates »

MBHB Snippets: Review of Developments in Intellectual Property Law - Volume 11, Issue 3 (Summer 2013)

In This Issue: Not Just a Flook? Consideration of Prior Art When Evaluating Subject Matter Eligibility; The USPTO Adopts New Rules of Professional Conduct; and Trademark Functionality in the Beverage…more

Aesthetic Functionality, Code of Conduct, Legal Ethics, Patent-Eligible Subject Matter, Prior Art

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Bayer Pharma AG v. Watson Laboratories, Inc. (Fed. Cir. 2017)

The Federal Circuit reversed a finding of non-obviousness on Friday based on clear error by the District Court on factual underpinnings of its obviousness determination, in Bayer Pharma AG v. Watson Laboratories, Inc. Such…more

ANDA, Bayer, Obviousness, Patents, Pharmaceutical Industry

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MBHB Snippets: A review of developments in Intellectual Property Law - Volume 15, Issue 2

Preparing patent applications for examination at the United States Patent and Trademark Office (USPTO) requires proficient writing, detailed knowledge of the requirements of the Patent Act, and technical acumen. Once a patent…more

Copyright, Counterfeiting, Halo v Pulse, Patent Prosecution, Patents

See all updates »

MBHB Snippets: Review of Developments in Intellectual Property Law - Volume 11, Issue 4 (Fall 2013)

In This Issue: The Blurred Lines of What Constitutes Copyright Infringement of Music: Robin Thicke v. Marvin Gaye’s Estate; Terminology in a Computer Readable Medium Claim —“Physical,” “Tangible,” or “Storage”— Can Pose…more

Copyright, Copyright Infringement, Inter Partes Reexamination, Inter Partes Review (IPR) Proceeding, Music

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Tiffany vs. Costco: Jury Awards Tiffany Substantial Damages for Costco’s Sale of Counterfeit Diamond Rings

In a highly publicized decision of over a year ago, Judge Swain of the U.S. District Court of the Southern District of New York ruled in favor of the luxury retailer Tiffany and Co., deciding that Costco Wholesale Corp., the…more

Costco, Counterfeiting, Fair Use, Jury Trial, Lanham Act

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Court Report - September 2016

About Court Report: Each week we will report briefly on recently filed biotech and pharma cases. Horizon Therapeutics, Inc. v. Lupin Ltd. et al. 1:16-cv-04438; filed July 21, 2016 in the District Court of New Jersey…more

Actavis Inc., Allergan Inc, ANDA, AstraZeneca, Biotechnology

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MBHB Snippets: A review of developments in Intellectual Property Law - Volume 14, Issue 3

Supplemental Examination: Potential Benefits vs. Guaranteed Risks - The America Invents Act of 2011 introduced supplemental examination of patents as a post-grant process intended to limit expensive and unpredictable…more

3D Printing, America Invents Act, Compulsory Licenses, Defend Trade Secrets Act (DTSA), Digital Media

See all updates »

Amgen v. Sandoz – Did the Federal Circuit Just Doom the New Biosimilar Approval Pathway?

Congress passed the Biologics Price Competition and Innovation Act (“BPCIA”) in 2009 in an effort to bring biosimilar drug products to market. The goal was for the BPCIA to mimic for biologic drugs the Hatch-Waxman statute for…more

aBLA, Biologics, Biosimilars, BPCIA, Disclosure Requirements

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SCOTUS: Supreme Court Holds Disparagement Clause of the Lanham Act Violates the Free Speech Clause of the First Amendment

On June 19, 2017, in Matal v. Tam, previously Lee v. Tam, the Supreme Court handed down its most impactful interpretation of the disparagement clause of the Lanham Act to date by holding that at its intersection with the First…more

Disparagement, First Amendment, Free Speech, Lanham Act, Matal v Tam

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MBHB Snippets: Review of Developments in Intellectual Property Law - Winter 2013 - Volume 11, Issue 1: InterDigital Communications v. ITC: (Some) Non-Practicing Entities are Welcome

On January 10, 2013, the Federal Circuit in InterDigital Communications v. ITC denied a combined petition for panel rehearing and for rehearing en banc, holding that InterDigital’s patent licensing alone met the domestic…more

InterDigital Communications v ITC, ITC, Nokia, Non-Practicing Entities, Tariff Act of 1930

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MBHB Snippets: Review of Developments in Intellectual Property Law: Spring 2015 - Vol. 13, Issue 4

Issues to Be Aware of When Seeking Trademark Protection - Trademarks are valuable tools for businesses since they allow a trademark holder to identify and distinguish its goods from those manufactured or sold by others…more

Advertising Substantiation, Corporate Social Responsibility, Costco, FTC, Green Guides

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USPTO Issues Final Rule Establishing Patent Agent Privilege

Earlier on November 7, 2017, the U.S. Patent and Trademark Office's Patent Trial and Appeal Board ("PTAB") published its Final Rule establishing the attorney-client privilege for application in PTAB proceedings. Before the…more

Attorney-Client Privilege, Patent Agent Privilege, Patent Trial and Appeal Board, Patents, USPTO

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MBHB Snippets: Review of Developments in Intellectual Property Law - Spring 2013 - Volume 11, Issue 2: Comments on New AIA Rules

On March 16, 2013, the final (and most significant) portion of the Leahy-Smith America Invents Act (AIA) took effect, and the United States broke from a first-to-invent regime to a first-inventor-to-file (FITF) regime. Of…more

America Invents Act, First-to-File, First-to-Invent, Patent Applications, Patent Reform

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MBHB Snippets: Review of Developments in Intellectual Property Law - Winter 2013 - Volume 11, Issue 1: Conducting Efficient Patent Litigation Discovery, Part 2

The costs associated with discovery, and particularly electronic document discovery, in patent litigation can be effectively controlled with upfront planning, preparation, and coordination between in­house and outside counsel…more

Discovery, Document Coding, Document Productions, Patents, Work Product Privilege

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Biotech Institute's Growing Patent Portfolio -- U.S. Patent No. 9,095,554 and the Path Forward

As with any billion dollar market, patents are an important consideration for the cannabis industry. Despite its current classification as a Schedule I drug under the Controlled Substances Act, however, the U.S. Patent and…more

Biotechnology, Marijuana, Patents, USPTO

See all updates »

Alice Corp. v. CLS Bank Int’l: General Purpose Computers Cannot Save Claims Directed to Abstract Ideas

In the U.S. Supreme Court’s decision today in Alice Corp. v. CLS Bank International, the Court affirmed the invalidity of Alice’s patents for computer implemented methods of reducing settlement risk. This case reached the high…more

Alice Corporation, CLS Bank, CLS Bank v Alice Corp, Mayo v. Prometheus, Patent Litigation

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FDA Announces "Purple Book"

The new phone book is here? No, but close. The Food and Drug Administration ("FDA") announced on Friday that it has published its first listing of approved biologic drugs. The list will be supplemented with approved…more

Biologics, FDA, Patent Litigation, Patents, Pharmaceutical Patents

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Supreme Court Preview -- Oil States Energy Services, LLC v. Greene's Energy Group, LLC

On November 27, 2017, the Supreme Court will hear arguments in two cases that were ultimately appealed from IPR Final Written Decisions issued by the PTAB. The first of these, Oil States Energy Services, LLC v. Greene's Energy…more

Inter Partes Review (IPR) Proceeding, Patent Trial and Appeal Board, Patents, SCOTUS, USPTO

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U.S. Supreme Court Rules That the Decision to Award Attorney Fees in Patent Cases Rests Squarely in the District Court’s Discretion

The Supreme Court, on April 29, 2014, unanimously ruled on two cases related to the Patent Act’s fee shifting provision under 35 U.S.C. § 285.1 In Octane Fitness LLC v. Icon Health & Fitness Inc. (case number 12-1184), the Court…more

Attorney's Fees, Brooks Furniture, Highmark v. Allcare, Octane Fitness v. ICON, Patent Infringement

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Supreme Court Reverses Apple’s $400 Million Damage Award Against Samsung

On December 6, 2016, the Supreme Court ruled unanimously, in an opinion by Justice Sotomayor, that an award of total profits for infringing a design patent need not be calculated based only on the end product sold to an ordinary…more

Apple, Apple v Samsung, Damages, Design Patent, Patent Infringement

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Bioquark Seeks to Reverse Brain Death

Last year, two biotech companies announced that they had received institutional review board (IRB) approval for a study focused on the clinical intervention of brain death in humans. The study, entitled "Non-randomized,…more

Biotechnology, Life Sciences, Patent Applications, Patents, Pharmaceutical Industry

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