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Fifty years ago, the Supreme Court held in Brulotte v. Thys Co., 379 U.S. 29 (1964) that a license agreement requiring royalty payments for use of a patented invention after expiration of the patent term is unlawful per se.
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In a recent decision, the International Trade Commission rejected a petitioner’s attempt to use allegations of unfair competition and unfair acts as a possible way of working around the Federal Circuit’s bar on claims of induced infringement.
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Filing an appeal brief with the Patent Trial and Appeal Board (PTAB) can be an effective way to advance prosecution and secure allowable claims. Last November, we summarized Tips for Writing Effective PTAB Briefs to help propel applicants to PTAB victory.
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In an order released on March 19, 2015, U.S. District Court Judge Richard Seeborg of the Northern District of California denied Amgen’s motion for judgment on the pleadings as well as its request for a preliminary injunction to prevent Sandoz from marketing its drug Zarxio®.
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The U.S.I.T.C. instituted its first investigation under its 100-day pilot program for early determination of a specific potentially case-dispositive issue.
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Understanding Post-AIA Power of Attorney Procedures

March 19, 2015 | Blog | By Christina Sperry, Colleen Witherell

Applicants identified upon a U.S. patent application’s filing can impact the ownership rights to the patent application throughout prosecution. Prior to implementation of relevant aspects of the America Invents Act (AIA) on September 16, 2012, patent application Applicants could only be Inventors. 
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On March 12, the United States District Court for the Southern District of Indiana joined the District of Delaware and Eastern District of Texas as the first courts to consider a generic drug manufacturer’s motion to dismiss a Hatch-Waxman patent infringement action for an alleged lack of personal jurisdiction following the Supreme Court’s decision in Daimler AG v. Bauman, 134 S.Ct. 746 (2014).
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A "Solution" In Search of a Problem?

March 13, 2015 | Blog | By Michael Renaud, Peter Snell, Robert Moore

The Innovation Act introduced in the House on February 5, 2015 is designed to curb patent abuse, but as currently drafted it doesn't address the worst forms of the problem.
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Second Bites At the Post-Grant Apple?

March 13, 2015 | Blog | By Howard Wisnia

The America Invents Act (AIA) gives the Board broad discretion in deciding whether or not to institute an IPR or CBM when the Petition addresses substantially the same prior art or arguments to those previously considered by the PTO.
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The general rule is that a patent claim’s preamble does not limit the claim unless the preamble breathes life and meaning into the claim. The Federal Circuit’s recent decision in Pacing Techs. v. Garmin Int’l, No. 2014-1396 (Feb. 18, 2015) highlights some application drafting choices that, under post-issuance scrutiny, resulted in limitations being read into an independent claim.
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European patents to take effect in Morocco

March 3, 2015 | Blog | By David Wraige, Isobel Finnie

From 1 March 2015, a new agreement will come into force that allows European patents to be validated in Morocco. This is the first time that a non-member country of the European Patent Organisation will have recognised European patents as national patents.
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Bayer Given a Headache by Trial Court Decision in FLANAX US Trademark Dispute

February 25, 2015 | Blog | By Susan Neuberger Weller

On February 6, 2015, a US District Court issued a ruling which underscores the territorial nature of trademark rights and the need to seek formal protection for your marks where possible in all countries of interest.
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Prepare for the Japanese Patent Opposition System Coming Soon

February 23, 2015 | Blog | By Christina Sperry, Linda Azrin

The Japanese Patent Act was revised on May 14, 2014 to provide for post-grant oppositions within one year of the rule change, i.e., by May 14, 2015 (the exact effective date has not yet been set). Under the new opposition system, any party, including non-interested parties and straw men, will be able to file an opposition within 6 months of patent issuance and thus potentially cause invalidation soon after patent grant.
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The En Banc Federal Circuit Hears Argument in Suprema, Inc. v. ITC

February 12, 2015 | Blog | By Nick Armington

On Thursday, February 5, 2015, the en banc Federal Circuit heard oral argument in the matter of Suprema, Inc. v. ITC, reviewing its controversial panel decision holding that in ITC investigations induced infringement cannot be found where no direct infringement occurs until after importation.
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RCEs and the New USPTO Patent Term Adjustment Rules

January 14, 2015 | Blog | By Christina Sperry

On January 9, 2015, the Federal Register published final rules implementing changes to patent term adjustment (PTA) in view of Novartis v. Lee, which the Federal Circuit decided last January. The new rules affect patents where a request for continued examination (RCE) was filed during prosecution.
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Highlights of the USPTO Patent Public Advisory Committee 2014 Annual Report

December 31, 2014 | Blog | By Christina Sperry, Derek Constantine

The Patent Public Advisory Committee (PPAC) recently released its 2014 Annual Report evaluating a variety of programs at the U.S. Patent and Trademark Office (USPTO) and recommending that the USPTO take certain actions with respect to those programs.
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C.D. Cal. Swims Against the Tide of Software Patent Ineligibility in Caltech v. Hughes

December 31, 2014 | Blog | By Michael Van Loy, Inna Dahlin

Patent applicants from the software and business method fields took notice after the United States Supreme Court issued its opinion in Alice Corporation Pty. Ltd. V. CLS Bank International, et al. (“Alice,” 134 S. Ct. 2347 (2014)) on June 19, 2014, and the U.S. Patent and Trademark Office (“USPTO”) followed with preliminary guidelines (“Guidelines”) issued June 25, 2014 for examining subject matter eligibility under 35 U.S.C. § 101 of claims relating to a judicially created exception to patent eligibility.
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Turning Your Research Into Something More: Patents Versus Papers

December 17, 2014 | Blog | By Christina Sperry, Inna Dahlin

Scientific or technical journal writers like scientists, doctors, engineers, and academics are usually introduced early to the importance and strategy of writing and publishing papers, but patent applications having those same professionals as inventors are usually not so well explained and can be more of a mystery.
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For the First Time PTAB Upholds Validity of Pharma Patents

December 15, 2014 | Blog | By Dave Cotta

On December 9, 2014, the Patent Trial and Appeal Board (“PTAB”) upheld the validity of three Supernus Pharmaceutical’s patents relating to once-daily formulations of doxycycline.
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CAFC Finds Patent Claiming Software-Related Invention is Patentable

December 10, 2014 | Blog | By Matthew Karambelas, Sean Casey

For the first time since the Supreme Court’s Alice Corp.  v. CLS Bank Int'l decision this past summer, the United States Court of Appeals for the Federal Circuit has found that a patent claiming a software-related invention was patentable subject matter under 35 U.S.C. § 101 (with Judge Chen writing the majority opinion).
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