October 11, 2018 | Blog | By Brad M Scheller, Daniel Weinger, Courtney Herndon
Today the Patent Trial and Appeal Board announced a final rule changing the claim construction standard for interpreting claims in inter partes review (“IPR”), post-grant review (“PGR”), and covered business method patent (“CBM”) proceedings. The Board retired the broadest reasonable interpretation (“BRI”) standard in favor of the standard used to construe patent claims in federal court and the International Trade Commission (“ITC”) as articulated in Phillips v. AWH Corp. In doing so, the Board announced that it will now consider prior constructions, either from a federal district court or the ITC, in construing a claim term in an IPR, PGR, or CBM, where such prior constructions are timely made of record. This rule change is another positive development for patent owners and should provide for consistent construction of the same term across multiple tribunals going forward.
October 4, 2018 | Alert | By Michael Renaud, James Wodarski, Aarti Shah, Robert Moore, Marguerite McConihe
Read about an International Trade Commission in which a judge ruled that Apple infringed a valid Qualcomm patent, but recommended against an exclusion order for Qualcomm.
Federal Circuit Upholds Trade Show Catalog As Prior Art in Nobel Biocare Servs. AG v. Instradent USA, Inc.
September 25, 2018 | Blog | By Peter Cuomo, Courtney Herndon
Recently in Nobel Biocare Services AG v. Instradent USA, Inc., the Federal Circuit affirmed a decision of the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board (“the Board”) in an inter partes review (“IPR”) finding certain claims of U.S. Patent No. 8,714,977 (“the ’977 Patent”), directed to dental implants, unpatentable as anticipated. The Nobel decision is the latest in a recent line of Federal Circuit cases holding that materials distributed at conferences, trade shows, and meetings are publically available “printed publications” within the meaning of pre-AIA 35 U.S.C. § 102(b).
Franchised Automobile Dealerships Count as Regular and Established Places of Business for Purposes of Proper Patent Infringement Venue
September 19, 2018 | Blog | By Andrew DeVoogd, Anthony Faillaci
In our continuing post-TC Heartland coverage, Judge Rodney Gilstrap of the Eastern District of Texas recently issued an interesting decision regarding the venue analysis for car companies selling into a particular jurisdiction. In Blitzsafe Texas v. BMW, Judge Gilstrap concluded that independently owned and operated BMW dealerships count as a regular and established place of business for purposes of establishing proper venue as to BMW of North America (“BMWNA”). (The court also concluded summarily that venue was proper as to BMWNA’s foreign parent company.) BMWNA argued in the main that the four dealerships located within the district were not their regular and established places of business because the dealerships are franchised. BMWNA also argued that it is not permitted to “own or control” the dealerships within the District pursuant to the Texas Occupations Code.
PTAB Finds Recycled Art and Advanced State of Parallel District Proceeding Warrant Denial of IPR Trial
September 17, 2018 | Blog | By Peter Snell, Daniel Weinger, Vincent Ferraro, Chris Duerden
Last week the Patent Trial and Appeal Board (“PTAB”) provided yet another arrow in the patent owner’s quiver for defending against institution of IPRs. In NHK International Corp. v. Intri-Plex Technologies, Inc., IPR2018-00752, the PTAB exercised its discretion under 35 U.S.C. § 325(d) and denied institution because the asserted art was already considered during the original examination of the patent. The PTAB also found that denial was warranted under 35 U.S.C. § 314(a) in light of the additional factor that a district court trial on the same patent was imminent.
September 13, 2018 | Blog | By Peter Snell, Daniel Weinger, Kara E. Grogan
On September 7, 2018, RPX Corporation (“RPX”) requested a rehearing en banc of the Federal Circuit’s July 2018 Applications in Internet Time, LLC v. RPX Corp. decision, which held that the Patent Trial and Appeal Board (“PTAB”) must use a flexible approach when determining what entities constitute real parties in interest for the purpose of inter partes review (“IPR”).
September 11, 2018 | Blog | By Brad M Scheller, Daniel Weinger, Courtney Herndon
Last week, the Patent Trial and Appeal Board (the “Board”) denied a second challenge to a patent where the petitioners were co-respondents in an ITC investigation.
Federal Circuit Holds that the Petitioner Bears the Burden to Show All Real Parties in Interest are Properly Named in a Petition for IPR
September 10, 2018 | Blog | By Peter Snell, Daniel Weinger, Anthony Faillaci
Six months later, and more than 2.5 years after service of the complaint on Activision, Bungie filed IPRs challenging Worlds’ patents.
September 6, 2018 | Blog | By Michael Renaud, Nicholas Armington
On October 1, 2018, Massachusetts will become the 49th state to adopt a version of the Uniform Trade Secrets Act. The version of the UTSA that Massachusetts will adopt bears notable similarities to the Defend Trade Secrets Act, the two year old federal trade secrets statute.
September 4, 2018 | Blog | By Lisa Adams, Linda Azrin, Derek Constantine
Most people are familiar with blockchain technology because of its use in cryptocurrency, but its use is going to be far more widespread than just as a ledger for digital currency.
August 27, 2018 | Video | By Ken Jenkins
Ken Jenkins discusses the confusion surrounding inventorship and the need for inventors to maintain proper documentation once the initial inventorship determination is made to protect themselves as their patents gain value.
August 27, 2018 | Video | By Terri Shieh-Newton
Terri Shieh-Newton explains how a valuable IP portfolio is one that not only protects the company against competitors but also provides reassurances for investors.
August 20, 2018 | Blog | By Andrew DeVoogd, Daniel Weinger, Anthony Faillaci
In our continued post-TC Heartland coverage, the Southern District of New York recently held that an employee’s home office in New York constituted a “regular and established place of business” in the state as required by the patent venue statute, 28 U.S.C. § 1400(b).
Updates to the PTAB Trial Practice Guide Memorialize Current Practices While Leveling the Playing Field for Patent Owners
August 16, 2018 | Blog | By John Bauer, Vincent Ferraro
The Patent Trial and Appeal Board (PTAB) issued an August 2018 update to the American Invents Act Trial Practice Guide (the “Updated TPG”). The Updated TPG incorporates the PTAB’s current practices and provides further explanation of certain aspects of the PTAB’s standard practices to the public.
Google’s servers housed by a third-party ISP qualify as a regular and established place of business to establish proper venue in the Eastern District of Texas
August 15, 2018 | Blog | By Andrew DeVoogd, Anthony Faillaci
In our continued post-TC Heartland coverage, Judge Gilstrap in the Eastern District of Texas recently held that venue was proper because Google exercises exclusive control over physical servers implicated by the litigation, as well as the physical space within which the server is located and maintained.
August 6, 2018 | Alert | By Michael Renaud, James Wodarski, Aarti Shah, Andrew DeVoogd, Matthew Galica, Tiffany Knapp
A recent International Trade Commission decision, Vacuum Cleaning Devices, improves a patent owner’s ability to demonstrate that it possesses a statutorily required “domestic industry” and can therefore obtain relief from the Commission when others infringe its intellectual property. This alert reviews the Vacuum Cleaning Devices ruling, which serves to better align the statutory purpose of the ITC’s domestic industry requirement with contemporary business practices.
Lessons about Prosecution History Estoppel and Design Patents from Advantek Marketing, Inc. v. Shanghai Walk-Long Tools Co.
August 3, 2018 | Blog | By Christina Sperry
Patent practitioners are probably well familiar with circumstances in which prosecution history estoppel can limit the scope of a U.S. utility patent’s claims. Examples include claim amendments and statements made by the applicant during prosecution in papers filed with the U.S. Patent and Trademark Office (USPTO).
August 2, 2018 | Blog | By Christina Sperry
Is there any possible danger in using the abbreviation “i.e.” in the specification of a U.S. patent application? The Federal Circuit’s recent decision in TF3 Limited v. TRE Milano, LLC shows that the answer is “yes.”
August 2, 2018 | Blog | By Andrew DeVoogd, Anthony Faillaci
In our continuing post-TC Heartland coverage, the District of Nevada recently identified a key factor in analyzing venue challenges in patent litigation: whether the public can access the defendant corporation or its services in the respective forum.
July 24, 2018 | Blog | By Marc Morley, Melissa Brayman
Some inventions require testing before they are ready for patenting, and sometimes that testing requires use by the public. A recent decision from the Federal Circuit provides additional guidance on what activities qualify for the experimental use exception to the public use bar of 35 U.S.C. § 102(b).
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