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Federal Circuit Reverses PTAB Claim Interpretation in Dispute over Credit Card Security Patent
December 22, 2016 | Blog | By William B. Kezer
The Federal Circuit reversed the invalidation of two patents directed to providing security for credit card purchases in an opinion released earlier today. The patents at issue, U.S. Patent Nos. 7,840,486 and 8,036,988, disclose methods for effecting secure credit-card purchases by minimizing merchant access to credit card numbers.
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USPTO Proposes Fee Increases for FY 2017
December 21, 2016 | Blog | By Mark Pino
The USPTO has published its notice of proposed rulemaking for the FY 2017 patent fee schedule in the Federal Register. The USPTO proposes fee increases to recover its estimated costs for patent operations and achieve its strategic goals of optimizing patent quality and timeliness and increasing international efforts to improve IP policy, protection, and enforcement.
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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.
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The Federal Circuit Confirms That It Will Review PTAB’s CBM Determinations … To A Certain Extent
December 2, 2016 | Blog | By William Meunier , Serge Subach
The Federal Circuit has again addressed which types of patents are eligible for Covered Business Method (“CBM”) review before the Patent Trial & Appeals Board.
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Changes to the “But-For” Standard For Materiality at the U.S. Patent and Trademark Office?
December 1, 2016 | Blog | By Christina Sperry
On October 28, 2016, the United States Patent and Trademark Office (PTO) issued a notice of proposed rulemaking in the Federal Register proposing revisions to the materiality standard for the duty to disclose information in patent applications and reexamination proceedings in light of Therasense, Inc. v. Becton, Dickinson & Co., 649 F.3d 1276 (Fed. Cir. 2011) (en banc).
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PTAB’s Definition of CBM Patent is Wrong and Too Broad, Federal Circuit Says
November 23, 2016 | Blog | By William Meunier
The America Invents Act (“AIA”) mandates that a Covered Business Method Review is available only for challenging the validity of covered business method patents.
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Federal Circuit Corrects the Board’s “Too Exacting” Diligence Standard
November 21, 2016 | Blog | By Brad M Scheller
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.
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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.
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Jawbone Fails to Prove Trade Secret Misappropriation by Fitbit at the ITC
November 16, 2016 | Blog | By Michael Renaud, Nick Armington
Trade secret theft is a growing threat to American businesses. One obstacle to addressing misappropriation through a lawsuit can be a lack of direct evidence of theft.
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District Court Finds General Description of Trade Secret Sufficient to Satisfy Pleading Standard under Defend Trade Secrets Act
November 16, 2016 | Blog | By Michael Renaud, Nick Armington
An important question for any plaintiff alleging trade secret misappropriation is: “How much detail should I provide about the stolen trade secrets in the complaint?” Answering this question often requires the balancing of two important considerations.
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Failure to Let Patent Owner Address Unpatentability Arguments Relied on by the Board Violates Administrative Procedures
November 15, 2016 | Blog | By Brad M Scheller
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.
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An Ombudsman in Shining Armor: Spotlight on the USPTO Patents Ombudsman Program
November 11, 2016 | Blog | By Christina Sperry
The United States Patent and Trademark Office (“USPTO”) introduced the Ombudsman Program on April 6, 2010 with the ostensible goal of advancing patent applications that have stalled during the examination process.
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DJ Mark Ronson and Bruno Mars Get “Funked” With New Copyright Suit Over “Uptown Funk”
November 10, 2016 | Blog | By Brad M Scheller , Daniel Weinger, Anthony Faillaci
On Friday, October 28, 2016, musicians Mark Ronson and Bruno Mars were hit with a copyright infringement suit based on their wildly popular hit “Uptown Funk.”
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The USPTO’s Latest Memo on Subject Matter Eligibility Provides Hope for Modern Innovators
November 8, 2016 | Blog | By Michael Van Loy
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.
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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.
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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.
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ITC Institutes “Certain Silicon-on-Insulator Wafers” Investigation – Only the Fourth 100-Day Pilot Program Ordered
October 31, 2016 | Blog | By Michael Renaud, Daniel Weinger
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.”
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Kyle Bass’ First IPR Win At The PTAB
October 28, 2016 | Blog | By Christina Sperry
Since Kyle Bass founded Coalition for Affordable Drugs X LLC (CFAD) to challenge pharmaceutical patents, CFAD has filed numerous petitions with the Patent Trial and Appeal Board (PTAB) of the U.S. Patent and Trademark Office (Office) seeking to institute inter partes review (IPR) proceedings to invalidate a number of pharmaceutical patents, including three patents owned by Anacor Pharmaceuticals, Inc., as previously discussed at Global IP Matters.
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PTAB Vacating Its Initial Institution Decision is Not Appealable, Federal Circuit Says
October 28, 2016 | Blog | By William Meunier
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.
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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.
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