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When Prior Terminal Disclaimers Continue to Punish Subsequent Applications: A Potential Danger in Filing an Overly-Broad Terminal Disclaimer

December 10, 2015 | Blog | By William Geary

A recent U.S. District Court decision has clarified a potential danger when filing terminal disclaimers that contain overly-broad language. The U.S. District Court for the Northern District of Illinois in Hagenbuch v. Sonrai Systems interpreted the terminal disclaimer language “I hereby disclaim the terminal part of any patent granted on the above-identified application or any continuation of it” as applying to any continuation application claiming priority from the application in which this terminal disclaimer was filed.
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Tips for Responding to New Grounds of Rejection in an Examiner’s Answer

December 10, 2015 | Blog | By Christina Sperry, Inna Dahlin

Filing an appeal brief with the Patent Trial and Appeal Board (PTAB) can be an effective way to advance prosecution and secure allowable claims. After an appellant’s filing of a PTAB appeal brief, an examiner may respond with an examiner’s answer. 37 C.F.R. §§ 41.37, 41.39.
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Federal Circuit Deems IPR Constitutional: The Patent Office Can Correct Its Own Mistakes

December 3, 2015 | Blog | By Brad M Scheller, Michael Renaud, Ping Hu

Yesterday the Federal Circuit ruled in MCM Portfolio LLC v. Hewlett-Packard Company that vesting the Patent Office with power to take back previously-conferred patent rights through inter partes review does not violate Article III or the Seventh Amendment.
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Mintz Convinces The Federal Circuit To Completely Reverse And Remand An Adverse IPR Final Written Decision For The First Time

November 30, 2015 | Blog | By Michael Renaud, William Meunier, Michael Newman, Nick Armington

Mintz has won extraordinary relief for its client, Straight Path IP Group, Inc., convincing the Federal Circuit to completely reverse and remand an IPR final written decision adverse to a patent owner for the first time.
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Understanding the Current State of Patent Subject Matter Eligibility Under § 101

November 19, 2015 | Blog | By Christina Sperry, Michael Van Loy

In July the U.S. Patent and Trademark Office issued additional guidelines for determining Subject Matter Eligibility under 35 U.S.C. § 101, as previously discussed at Global IP Matters. 
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PTAB May Allow a Petitioner to Correct An Improper IPR Reply Brief

November 11, 2015 | Blog | By William Meunier, Nick Armington

Last week, the Federal Circuit explained that the Patent Trial and Appeal Board did not err when it allowed a petitioner to revise its Inter Partes Review Reply brief after first cautioning the petitioner that the PTAB may reject the Reply in its entirety if it improperly raised new issues.
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Federal Circuit Rules That ITC Does Not Have Jurisdiction Over Digital Imports

November 11, 2015 | Blog | By Nick Armington

On November 10, 2015, the Federal Circuit issued its opinion in ClearCorrect Operating, LLC v. ITC, and struck a blow to both the ITC and the entertainment and software industries by overturning the ITC’s opinion and finding that “[t]he Commission’s decision to expand the scope of its jurisdiction to include electronic transmissions of digital data runs counter to the ‘unambiguously expressed intent of Congress’” and stating that the ITC’s jurisdiction is limited to “material things.”
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SCOTUS to Hear a Duo on Willful Patent Infringement

October 20, 2015 | Blog | By Andy Yu

On Monday, October 19, 2015, the U.S. Supreme Court granted certiorari to hear two patent infringement cases on the issue of willfulness. The first case is Stryker Corp. v. Zimmer Inc. and the second one is Halo Elecs., Inc. v. Pulse Elecs., Inc.
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Federal Circuit Holds That It Lacks Jurisdiction To Review PTAB’s § 315 Time-Bar Determination

October 9, 2015 | Blog | By William Meunier, Nick Armington

The Federal Circuit has again held that it lacks jurisdiction to review certain decisions of the U.S. Patent Trial & Appeal Board in Inter Partes Reviews, continuing the Court’s apparent “hands off” approach to reviewing PTAB decisions in IPRs.
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Apple v. Samsung Part IV: The Injunction May Not Be Dead

October 2, 2015 | Blog | By James Wodarski, Andrew DeVoogd, Michael Renaud

On Thursday, September 17, 2015, in the fourth Federal Circuit opinion arising out of the patent skirmishes between global high technology titans Apple and Samsung Electronics, a sharply divided Federal Circuit panel vacated the trial court’s denial of Apple’s post-trial motion for a permanent injunction against Samsung.
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U.S. International Trade Commission Publishes Proposed Changes to Procedural Rules of Practice

September 29, 2015 | Blog

The International Trade Commission proposed a series of new procedural rules, which were published in the Federal Register on September 24, 2015.
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Comparing U.S. and Australian Provisional Patent Applications

September 11, 2015 | Blog | By Christina Sperry

The United States and Australia each offer the option of filing a provisional patent application before filing a national or PCT non-provisional patent application.
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PTAB Summer Package of Proposed Rule Changes Now Available and Open for Public Comment

August 24, 2015 | Blog | By Brad M Scheller

On March 31 we posted about the Patent Office rolling out a series of rulemakings for improving post-grant proceedings before the Patent Trial and Appeal Board (PTAB) pursuant to public feedback to a Request for Comments published by the Office last June.
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Evolving SEP Jurisprudence and RAND Determinations in Microsoft v. Motorola

August 21, 2015 | Blog | By Rich Gervase, Sandra Badin, Michael Renaud

Last month, the Ninth Circuit Court of Appeals issued a pivotal decision in Microsoft v. Motorola regarding the licensing of standard essential patents (SEPs) on reasonable and non-discriminatory (RAND) terms.
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In Akamai v. Limelight, Unanimous Federal Circuit Outlines Framework for Direct Infringement of Method Claims

August 14, 2015 | Blog | By Michael Renaud, Sandra Badin

In a unanimous full court decision issued yesterday, the Federal Circuit availed itself of “the opportunity to revisit the § 271(a) question” left unanswered by the Supreme Court last year, and outlined “the governing legal framework for direct infringement” of method claims.
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Draft Legislation Proposes Favorable Treatment for Intellectual Property Transferred to the United States

August 13, 2015 | Blog

On July 29, Representatives Charles Boustany, Jr. (R-La.) and Richard E. Neal (D. Mass.) introduced draft legislation to the House Ways and Means Committee that would provide favorable tax treatment on certain intellectual property as a means of encouraging U.S. companies to bring their intellectual property back into the United States.
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ClearCorrect v. ITC: Federal Circuit Hears Argument in Case Which Will Decide Whether ITC Has Jurisdiction Over Digital Imports

August 12, 2015 | Blog | By Nick Armington

On Tuesday, August 11, the Federal Circuit heard oral arguments in ClearCorrect v. International Trade Commission, a case that will decide whether the ITC has the power to exclude intangible items that are imported digitally rather than physically.
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Suprema v. ITC: En Banc Federal Circuit Overturns Panel Decision, Finds ITC Has Jurisdiction Over Induced Infringement of Method Claims

August 11, 2015 | Blog | By Nick Armington

Yesterday morning, the full Federal Circuit issued its en banc opinion in Suprema, Inc. v. ITC and reversed the controversial Federal Circuit opinion that had effectively precluded the International Trade Commission from finding induced infringement in most cases involving method claims.
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ALJ Shaw Confirms ITC’s Post-Suprema Authority to Exclude Articles That Infringe After Importation Based on Contributory Infringement

August 10, 2015 | Blog | By Matthew Karambelas

The International Trade Commission has recently released the public version of the Administrative Law Judge’s Final Initial Determination in Certain Marine Sonar Imaging Devices, Including Downscan and Sidescan Devices, Products Containing the Same, and Components Thereof, Inv. No. 337-TA-921, Init Det. (July 2, 2015).
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Expediting Patent Prosecution with the New Collaborative Search Pilot Program

August 7, 2015 | Blog | By Christina Sperry

Two new Collaboration Search Pilot Programs are or will soon be available to patent applicants.  The Collaboration Search Pilot Program (CSP) between the United States Patent and Trademark Office (USPTO) and the Japan Patent Office (JPO) is available as of August 1, 2015.
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