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Supreme Court to Hear Patent Venue Case

December 15, 2016 | Blog | By Matthew Hurley, Brad M Scheller

The plot just thickened in the long-running debate over where patent cases should be litigated.

With the U.K.’s Announcement, the European Unified Patent Court Moves Toward Realization

December 7, 2016 | Advisory | By Michael Renaud, James Wodarski, Michael McNamara, Robert Moore

On November 28, 2016, Baroness Neville Rolfe, the United Kingdom Minister of State for Intellectual Property, announced that the U.K. would ratify the Unified Patent Court Agreement (UPCA), paving the way for the European Unified Patent Court (UPC).
Yesterday, the Supreme Court held that the relevant “article of manufacture” for arriving at a damages award for design patent infringement need not be the end product sold to the consumer, but may be only a component of that product.
The Federal Circuit has again addressed which types of patents are eligible for Covered Business Method (“CBM”) review before the Patent Trial & Appeals Board.
The America Invents Act (“AIA”) mandates that a Covered Business Method Review is available only for challenging the validity of covered business method patents.

Federal Circuit Corrects the Board’s “Too Exacting” Diligence Standard

November 21, 2016 | Blog | By Brad M Scheller, Vincent Ferraro

On November 15, 2016, a split panel of the Federal Circuit, consisting of Judges Moore and O’Malley, ruled that the antedating standard demanded by the Patent Trial and Appeal Board, requiring a “continuous exercise of reasonable diligence,” was too exacting and in conflict with Federal Circuit precedent.

Intellectual Ventures Petitions Federal Circuit for Full Court Review

November 18, 2016 | Blog | By Michael Renaud, Sandra Badin, Matthew Karambelas

Earlier this week, Intellectual Ventures (IV) petitioned the full Federal Circuit to review the panel opinion in Intellectual Ventures v. Symantec, which invalidated two of its patents under section 101.  Both patents—the ’050 and the ’610—are directed to filtering email or file content.
The Federal Circuit has ruled that the Patent Trial and Appeal Board cannot deny Patent Owner an opportunity to address portions of a prior art reference first discussed in Petitioner’s Reply, and then rely on those same portions to hold the claims unpatentable.
On November 2, 2016 the United States Patent and Trademark Office (USPTO) issued a memo to Examiners on its stance on subject matter eligibility in response to the McRO and BASCOM Federal Circuit decisions, previously discussed at Global IP Matters.

Why No One is Talking About Derivation Proceedings

November 2, 2016 | Blog | By Kevin Amendt

Someone stole your invention and filed for a patent on it? Derivation proceedings in the Patent Office may be an answer. The Leahy-Smith America Invents Act (AIA) amended 35 U.S.C. § 135 to replace interference proceedings with a new process called derivation proceedings.

Patent-Agent Privilege and the USPTO’s Proposed New Rule

November 1, 2016 | Blog | By Matthew Hurley, Matthew Galica, Anthony Faillaci

Several recent court decisions have shed light on the patent agent privilege, and now the U.S. Patent and Trademark Office (USPTO) is seeking to weigh-in on the issue.
On October 19, 2016, the ITC instituted Investigation No. 1025, based on a complaint filed on May 26, 2016, by Silicon Genesis Corporation (SiGen), against Soitec, S.A. (Soitec). As part of the institution, the ITC ordered that the ALJ issue an early initial determination regarding whether SiGen “has satisfied the economic prong of the domestic industry requirement.”
The Federal Circuit reaffirmed last week that the Patent Trial and Appeal Board’s (PTAB’s) decision to discontinue inter partes review (IPR) proceedings is not reviewable on appeal.

Analyzing Patent Claims Having Conditional Language – the PTAB Provides Clarity

October 21, 2016 | Blog | By Christina Sperry, Monique Winters Macek

The Patent Trial and Appeal Board (PTAB) recently designated Ex parte Schulhauser, Appeal 2013-007847 (PTAB April 28, 2016), as precedential.  In this decision the Board clarified how to interpret method and system claims that include conditional language.
Plaintiffs bringing patent infringement complaints under the Iqbal/Twombly pleading standard should take notice.  On September 30, 2016, a panel of the Federal Circuit affirmed a district court’s dismissal of a deficient complaint under Rule 12(b)(6).
As a patent owner involved in patent litigation, you must consider numerous factors when negotiating a settlement agreement. An important contemplation is timing, because finalizing a settlement agreement at the wrong juncture of your legal proceedings can have devastating results.

CAFC's Husky Decision Makes Sledding Tougher for Patent Owners in PTAB Appeals

September 30, 2016 | Blog | By William Meunier, Patrick Driscoll

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”).

“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.

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.

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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