McDonnell Boehnen Hulbert & Berghoff LLP

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

ABA Provides Guidance on Required Disclosure of Attorney Errors

On April 17th, the American Bar Association provided a formal opinion regarding the requirement that attorneys disclose errors to clients. Its opinion was based on Rule 1.4 of the Model Rules of Professional Conduct, which…more
 /  Civil Procedure, Intellectual Property

Local Intelligence, LLC v. HTC America, Inc. (N.D. Cal. 2018)

Claims for Refreshing Phone Display Found Patent Eligible - Earlier this month, the U.S. District Court for the Northern District of California ruled that claims related to refreshing a phone's display are patent eligible…more
 /  Civil Procedure, Intellectual Property

Konami Gaming, Inc. v. High 5 Games, LLC (D. Nev.)

Slot Machine Patent Invalidated As Being Directed to Ineligible Subject Matter - Konami sued High 5 Games for patent infringement of U.S. Patent Nos. 8,096,869; 8,366,540; 8,662,810; and 8,616,955. The '869 patent, which is…more
 /  Civil Procedure, Intellectual Property, Science, Computers, & Technology

Not So Fast: Maybe America Will Agree to the CPTPP

On April 12th, various news outlets ("fake" and otherwise), as well as several Senators present at the White House, announced that the Trump administration had changed its position on the Trans Pacific Partnership (TPP)…more
 /  Administrative Law, International Law & Trade

Luitpold Pharmaceuticals, Inc. v. Pharmacosmos A/S (Fed. Cir. 2018)

Which parties to an IPR proceeding have standing to either appeal or participate in an appeal from an adverse final written decision by the Board? The Federal Circuit had previously held that a petitioner that did not otherwise…more
 /  Civil Procedure, Constitutional Law, Intellectual Property, Science, Computers, & Technology

FDA Permits Marketing of First AI-based Medical Device; Signals Fast Track Approach to Artificial Intelligence

"The first and only autonomous AI system authorized by the FDA" - On April 11, 2018, the U.S. Food and Drug Administration (FDA) permitted marketing of a medical device that utilizes artificial intelligence to diagnose eye…more
 /  Health, Science, Computers, & Technology

PTAB Grants Two Motions to Amend in March -- Aberration or Sign of Things to Come?

The U.S. Patent and Trademark Office appears to have taken the position that neither party has the burden of persuasion with regard to Motions to Amend after the Aqua Products v. Matal en banc decision. It was unclear, however,…more
 /  Civil Procedure, Intellectual Property

PTAB Institutes Its First Derivation Trial: Andersen Corp. v. GED Integrated Solutions, Inc.

Under the America Invents Act, the Patent Trial and Appeal Board has been busy handling inter partes review (IPR), covered business method review (CBM), and post-grant review (PGR) proceedings. Petitioners have filed thousands…more
 /  Civil Procedure, Intellectual Property

House Bill Would Establish National Security Commission on Artificial Intelligence

On March 20, 2018, Rep. Elise Stefanik (R-NY) introduced a bill (H.R. 5356) in the United States House of Representatives in an effort to establish a new National Security Commission on Artificial Intelligence. The Commission…more
 /  Privacy, Science, Computers, & Technology

Ex parte Gershfang (PTAB 2018)

PTAB Affirms Patent Eligibility of Virtual Reality Advertising Claims - In a decision issued last month, the Patent Trial and Appeal Board reversed the final rejection of all the pending claims in U.S. Application No…more
 /  Intellectual Property, Science, Computers, & Technology

DSS Technology Management, Inc. v. Apple Inc. (Fed. Cir. 2018)

Apple filed two petitions for inter partes review (IPR) against DSS's U.S. Patent No. 6,128,290. The Patent Trial and Appeal Board (PTAB) of the U.S. Patent and Trademark Office instituted the IPRs and issued final written…more
 /  Civil Procedure, Intellectual Property

Berkheimer Files Response to HP's Petition for En Banc Review

In early February, the Federal Circuit published an opinion in HP Inc. v. Berkheimer stating clearly –- for the first time -- that patent-eligibility under 35 U.S.C. § 101 should be determined as a matter of law, but with…more
 /  Civil Procedure, Intellectual Property

Putting on Your Best Face: Expanded PTAB Panels in IPRs and Other PTO Proceedings

There has been a great deal of angst generated by the practice before the U.S. Patent and Trademark Office's Patent Trial and Appeal Board (PTAB) of expanding panels from the customary three Administrative Patent Judges to…more
 /  Civil Procedure, Intellectual Property

Federal Circuit Issues Stay in St. Regis Mohawk Tribe Sovereign Immunity Appeal

The Federal Circuit has granted the St. Regis Mohawk Tribe's motion for stay in inter partes review proceedings before the Patent Trial and Appeal Board, in St. Regis Mohawk Tribe v. Mylan Pharmaceuticals Inc. In the Order, the…more
 /  Civil Procedure, Indigenous Peoples, Intellectual Property

Electronic Scripting Products, Inc. v. HTC America, Inc. (N.D. Cal. 2018)

Virtual Reality Patents Survive Patent-Eligibility Challenge - Last week, Judge Seeborg of the U.S. District Court for the Northern District of California ruled that claims related to virtual reality applications are patent…more
 /  Intellectual Property, Science, Computers, & Technology
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