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CAFC's Husky Decision Makes Sledding Tougher for Patent Owners in PTAB Appeals
September 30, 2016 | Blog | By William Meunier
The Federal Circuit recently determined that it lacked jurisdiction to review the Patent Trial and Appeal Board’s determination that assignor estoppel has no affect in an inter partes review (“IPR”).
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Explaining the Defend Trade Secrets Act
September 29, 2016 | Blog | By Michael Renaud, Nick Armington
Three attorneys from Mintz Levin’s IP and Employment practices are featured writers in the American Bar Association’s Business Law Today publication, explaining the ins-and-outs of the Defend Trade Secrets Act (DTSA).
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“Processing System” Does Not Render Claims Indefinite
September 29, 2016 | Blog | By Michael McNamara, Michael Renaud
The Federal Circuit relied on Nautilus to preserve functional language of a method claim in a decision published last Friday. In Cox Comm, Inc. v. Sprint, No. 2016-1013, the Federal Circuit held that the term “processing system” did not render the asserted claims indefinite.
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Federal Circuit Revisits Willfulness Post Halo
September 29, 2016 | Blog | By Brad M Scheller, Adam Rizk
On remand from the Supreme Court’s decision in Halo Elecs., Inc. v. Pulse Elecs., Inc., 136 S. Ct. 1923 (2016), the Federal Circuit recently issued a revised decision in Stryker Corp. v. Zimmer, Inc., No. 2013-1668 (Fed. Cir. 2016). The decision provides insight into the court’s interpretation of the Halo standard and enhanced damages.
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In McRO, Federal Circuit Provides Further Guidance on Section 101
September 22, 2016 | Blog | By Michael Renaud, Michael Newman, Matthew Karambelas
Two years after the Central District of California invalidated two 3-D animation patents under Section 101, the Federal Circuit reversed that court’s decision, finding that the lower court oversimplified the claims of a computer-related invention.
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Apotex to Supreme Court: Review BPCIA 180-Day Notice Requirement
September 21, 2016 | Blog | By Thomas Wintner
On September 9, 2016, Apotex Inc. filed a petition for writ of certiorari in the U.S. Supreme Court seeking review of the Federal Circuit’s decision in Amgen Inc. v. Apotex Inc., Case No. 2016-1308.
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Markman at the ITC and Its Effect on an Investigation
September 20, 2016 | Blog | By Michael Renaud, Michael Newman
Several months ago, we were struck with the question of whether, as counsel for a patent owner at the ITC, our clients’ case would benefit from a Markman hearing. Claim construction during an ITC investigation was routinely performed as part of the evidentiary hearing in an investigation, rather than as part of earlier Markman proceedings.
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Federal Circuit: Go whole-hog on validity below if you want to contest an independent determination of invalidity on appeal
September 15, 2016 | Blog | By Michael Newman
Think you’ve won on validity at the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board (PTAB) and your claims are safe on appeal? “Not so fast,” says the Federal Circuit in Software Rights Archive, LLC v. Facebook Inc., Nos. 2015-1649 through 2015-1563 (Fed. Cir., Sep. 9, 2016) (nonprecedential) (per curiam).
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ITC Declines to File Petition for Certiorari – CAFC Holding that ITC Does Not Have Jurisdiction over Digital Imports Stands
September 1, 2016 | Blog | By Daniel Weinger, Nick Armington
The deadline has come and gone for the ITC and patentee Align to file petitions for certiorari seeking review by the Supreme Court of the Federal Circuit’s decision in ClearCorrect. On November 10, 2015, a panel of the Federal Circuit found that the ITC does not have jurisdiction to bar digital downloads or imports where there was no physical article to bar from importation.
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Industrial Espionage and the Defend Trade Secrets Act
August 24, 2016 | Blog | By Michael Renaud, Nick Armington
American corporations are facing an ever increasing threat of misappropriation of their valuable trade secrets through industrial espionage, defined as the theft of a company’s trade secrets by an actor intending to convert the trade secret to the economic benefit of a competitor.
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Federal Circuit Emphasizes that an Obviousness Analysis Based on Common Sense Must be Supported by Substantial Evidence and Explained with Sufficient Reasoning
August 23, 2016 | Blog | By Andrew DeVoogd
A recent decision by the Federal Circuit suggests that relying on “common sense” in analyzing whether a patent is obvious in view of prior art cannot always be based on common sense alone.
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The Specter of Alice Looms Large Even in PGRs
August 15, 2016 | Blog | By Brad M Scheller
On August 3, 2016, the Patent Trial and Appeal Board issued a post-grant review decision that bears one striking similarity to its previous post-grant review decisions, namely invalidation of claims under Alice Corp. Pty. v. CLS Bank Int’l, further bolstering the salience of patent ineligibility challenges in post-grant proceedings.
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Ninth Circuit Provides Clarification Concerning the Definition of Trade Secret
August 1, 2016 | Blog | By Michael Renaud, Nick Armington
On July 5, 2016, in United States v. Nosal, the Ninth Circuit Court of Appeals clarified the definition of “trade secret,” finding that data derived from a compilation of publicly available information can constitute a protectable trade secret in a case involving allegations under the Economic Espionage Act (EEA).
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IP for Start-ups: Part VI
July 19, 2016 | Blog | By Michael Van Loy
In our sixth "IP for Start-Ups” video, “Getting the Correct Named Inventors on a Patent”, Mike discusses the importance of including all of the inventors on a patent and why it's important to name anyone who has a reasonable proximity to the invention.
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What Type of Sale Constitutes an On-Sale Bar?
July 13, 2016 | Blog | By Brad M Scheller, Monique Winters Macek
An invention cannot be patented if it was ready for patenting and was subject to a commercial offer for sale more than one year before the application was filed.
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USPTO Fast-Tracks Cancer Immunotherapy Patent Applications
July 8, 2016 | Blog | By Terri Shieh-Newton
Effective June 29, 2016, the United States Patent and Trademark Office (USPTO) implemented a pilot program to provide for earlier review of patent applications pertaining to cancer immunotherapy.
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Focusing on the Second Step of Alice, Federal Circuit Finds Inventive Concept in Software Patent in BASCOM
July 6, 2016 | Blog | By Andrew DeVoogd, Matthew Karambelas
Arming software-patentees with additional precedent in favor of eligibility for software patents post-Alice, the Federal Circuit on June 27, 2016 handed down its decision in BASCOM Global Internet Servs., Inc. v. AT&T Mobility LLC, et al., No. 2015-1763, 2016 U.S. App. LEXIS 11687 (Fed. Cir. June 27, 2016), vacating the lower court’s decision.
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IP For Start-Ups: Part V
July 5, 2016 | Blog | By Michael Van Loy
In our fifth "IP for Start-Ups” video, “Copyrights versus Patents to Protect Software Innovations”, Mike discusses the pros and cons of using copyrights or patents to protect your software.
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Fed Circuit's "Amgen v. Apotex" Decision: Clarification of a BPCIA Riddle (Unless, of course, the Supreme Court Steps In)
July 5, 2016 | Blog | By Thomas Wintner
On July 5, the Federal Circuit issued another important decision regarding the meaning of certain provisions of the Biologics Price Competition and Innovation Act (BPCIA).
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Pitfalls When Refiling a Priority Application under Article 4 of the Paris Convention
June 30, 2016 | Blog | By Terri Shieh-Newton
Patent applicants who have filed a priority application (such as a U.S. Provisional application) may wish to abandon and then refile that priority application to extend the time available for filing a utility application.
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