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 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 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 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).
With its Vanda Pharma and Berkheimer Memos, USPTO Provides Increased Clarity and Predictability in the Patent Eligibility Determination in a Further Boost for Stakeholders and Innovators in Personalized Medicine
July 19, 2018 | Advisory | By Muriel M. Liberto, PhD, Esq.
In the time since the Federal Circuit issued its Vanda Pharma decision in April, Vanda Pharm. Inc. v West-Ward Pharm. Intl. Ltd. 887 F.3d 1117 (Fed. Cir. 2018), we have had more good news for the patent eligibility of claims relating to diagnostic or similar tests utilized in treating patients.
The U.S. Trademark Office Adopts New Rule Requiring Appointment of U.S. Counsel to Represent a Non-US Domiciliary in Trademark Matters
July 18, 2018 | Blog | By Susan Neuberger Weller, F. Jason Far-hadian
Effective August 3, 2019, the United States Patent and Trademark Office (USPTO) will require foreign entity applicants, registrants, or parties to a trademark proceeding whose domicile is not located within the United States or its territories to be represented by qualified U.S. counsel (i.e., an attorney who is an active member of a state bar in the U.S.).
July 17, 2018 | Blog | By Aarti Shah, Andrew DeVoogd, Tiffany Knapp, Matthew Galica
A recent decision by the International Trade Commission (“ITC” or the “Commission”) improves intellectual property holders’ ability to prove that they have a “domestic industry” and obtain relief for infringement from the Commission.
July 11, 2018 | Blog | By Christina Sperry, Elissa Kingsland
This article is first in a two-part series focusing on various issues related to priority claims in U.S. patent applications. Part 1 is a general overview of how to make a proper priority claim, without addressing how to correct an improper priority claim, which will be examined in Part 2.
June 22, 2018 | Blog | By Michael Renaud, James Wodarski, Sandra Badin
Patent owners have a new arrow in their quiver. The Supreme Court has held that patent owners can recover foreign lost profits for the use or sale of infringing products abroad if the products were assembled from components of the patented invention exported from the United States.
June 19, 2018 | Blog | By William Geary, Linda Azrin
Further to our previous blog post, the U.S. Patent and Trademark Office reported that the 10 millionth patent issued today with the new patent cover design.
Is a “necessary distributor” enough to qualify as a regular and established place of business for purposes of satisfying proper venue?
June 15, 2018 | Blog | By Andrew DeVoogd, Anthony Faillaci
According to the Eastern District of Texas, no. In our continued post-TC Heartland coverage, for the purpose of establishing venue, courts typically will decline to treat the place of business of one corporation as the place of the business of the other, even when the two are related, so long as a formal separation of entities is preserved.
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