Intellectual Property

Viewpoints

Filter by:

Latest Post-Alice Guidance from the Federal Circuit

May 17, 2016 | Blog | By Michael Van Loy, Howard Wisnia

On Thursday, May 12, 2016, the Federal Circuit reversed a lower court’s finding of invalidity under 35 U.S.C. § 101, as an unpatentable abstract idea, of a software patent concerning a “self-referential” database in Enfish v. Microsoft. In so doing, the Federal Circuit provided some helpful guidance on avoiding Alice rejections for software patents.
Read more

Protections of the Newly Enacted Defend Trade Secrets Act

May 12, 2016 | Blog | By Michael Renaud, Nick Armington

On May 11, 2016, President Obama signed the Defend Trade Secrets Act (DTSA) into law. This important new legislation creates a federal private civil cause of action for trade secret misappropriation in which “[a]n owner of a trade secret that is misappropriated may bring a civil action . . . if the trade secret is related to a product or service used in, or intended for use in, interstate or foreign commerce.”
Read more

Explaining the Provisions of the Defend Trade Secrets Act

May 5, 2016 | Blog | By Michael Renaud, Nick Armington

The Defend Trade Secrets Act (DTSA) is now one signature away from becoming law. On April 4, 2016, the Senate unanimously passed the DTSA and, last week, on April 27th, the House of Representatives followed suit, passing the DTSA by a vote of 410-2.
Read more

Not Obvious to Combine for a Person of Ordinary Skill in the Art (POSITA)

May 3, 2016 | Blog | By Michael Van Loy, Monique Winters Macek

Summary: Appellant appealed to the Patent Trial and Appeal Board (“Board”) an obviousness rejection to claims directed to a user interface that displays currency trading information.
Read more

Between a Rock and a Hard Place: Federal Circuit Says Its Required to Accord the PTAB Deference Until Instructed Otherwise by SCOTUS or Congress

April 27, 2016 | Blog | By Brad M Scheller

On Tuesday, April 26, 2016, the Federal Circuit issued an order denying a petition filed by Merck & Cie for rehearing en banc of an Inter Partes Review (“IPR”) final written decision by the Patent Trial and Appeal Board holding several Merck patents invalid as obvious.
Read more

Failure to Update Infringement Contentions with New Reexamination Claims Fatal for Patentee

April 25, 2016 | Blog | By Brad M Scheller

On April 22, 2016, a three judge panel of the United States Court of Appeals for the Federal Circuit, consisting of Judges Prost, Dyk and O’Malley, affirmed a district court’s decision to dismiss as moot a patent case involving only cancelled claims.
Read more

Federal Circuit Flushes Appeal Relating to Infringement of Airline Toilet Patents; Waives-Off Challenge to Finding of Assignor Estoppel

April 25, 2016 | Blog | By William Meunier, Nick Armington

On March 23, 2016, the Federal Circuit in MAG Aerospace Indus., Inc. v. B/E Aerospace, Inc., Nos. 2015-1370, -1426, upheld a decision concerning U.S. patents directed to vacuum toilets found on commercial aircraft.
Read more

Key Lessons from Patent Litigation for Drafting and Prosecuting Utility Patent Applications

April 15, 2016 | Blog | By Fred Hernandez, Gurneet Singh

In almost every U.S. patent suit, the patentee’s counsel considers how the case could have been facilitated had the patent at issue been drafted and prosecuted differently. These considerations demonstrate that patents should be drafted and prosecuted with an eye toward the possibility of litigation.
Read more

Federal Circuit Decides Not to Rehear ClearCorrect Operating, LLC v. ITC, Finding the ITC Does Not Have Jurisdiction over Digital Imports

April 6, 2016 | Blog | By Nick Armington

On March 31, 2016, in a blow to the software and entertainment industries, the Federal Circuit denied the International Trade Commission’s (“ITC”) request for a rehearing en banc of the Federal Circuit’s November 10, 2015 decision in ClearCorrect Operating, LLC v. ITC, in which the Federal Circuit found that the ITC’s jurisdiction was limited to “material things” and did not include the ability to bar digital imports.
Read more

Four Reasons to File an RCE with a Request to Suspend Processing

March 29, 2016 | Blog | By Christina Sperry

The U.S. Patent and Trademark Office (USPTO) allows a Request for Continued Examination (RCE) to be filed with a request to suspend processing of the RCE for up to 3 months, in accordance with 37 CFR 1.103(c).
Read more

Supreme Court Decides to Hear Samsung v. Apple, Appears Ready to Weigh-In on Patent Damage Calculations

March 28, 2016 | Blog

This week, in Samsung Electronics Co. v. Apple Inc., No. 15-777, the Supreme Court granted Samsung’s petition for certiorari and agreed to hear the case about Apple’s smartphone design patents in its upcoming term.
Read more

Federal Circuit Finds Personal Jurisdiction over Mylan in Two Hatch-Waxman Appeals

March 24, 2016 | Blog | By Adam Samansky, Joe Rutkowski

On Friday, March 18, the Court of Appeals for the Federal Circuit affirmed two District of Delaware rulings that non-resident defendant generic ANDA filer, Mylan, is subject to personal jurisdiction in two Hatch-Waxman suits filed in the state.
Read more

Maintaining a Wall Around U.S. Intellectual Property: Federal Circuit says Disputes over U.S. Patents, Trademarks and Copyrights should be Decided by U.S. Courts

March 23, 2016 | Blog | By Brad M Scheller

The Federal Circuit rejected an attempt by accused infringers of U.S. intellectual property rights to have claims litigated in a foreign country in Halo Creative & Design Ltd. v. Comptoir Des Indes, Inc., No. 15-1375 (Fed. Cir. Mar. 14, 2016).
Read more

PTAB Cannot Rely on Key Factual Assertions First Made at Oral Argument—Patent Owners are Entitled to Notice of and a Fair Opportunity to Meet All Grounds

March 18, 2016 | Blog | By Brad M Scheller

This week the Federal Circuit handed a positive development to Patent Owners working to keep their patent rights before the Patent Trial and Appeal Board.
Read more

Could the Eastern District of Texas’s Reign Come to an End?

March 17, 2016 | Blog | By Brad M Scheller, Robert Moore, Serge Subach

It has become a patent litigation trope, discussed at every Silicon Valley water cooler, that patent litigation is broken because all patent cases are tried in the plaintiff-friendly Eastern District of Texas. While this reputation is arguably undeserved, the Eastern District of Texas does end up with the majority of patent cases.
Read more

What are the USPTO’s Patent Plans for Fiscal Year 2017?

March 14, 2016 | Blog | By Christina Sperry

The U.S. Patent and Trademark Office (USPTO) explains several patent prosecution trends, goals, and programs to justify proposed spending of its collected fees in its recently-issued Fiscal Year 2017 Congressional Justification report.
Read more

BPCIA Patent Litigation Webinar Recap

March 11, 2016 | Blog | By Thomas Wintner, Joe Rutkowski, Matthew Show

Our Biosimilar webinar series continued this month with Tom Wintner’s BPCIA Patent Litigation presentation. Tom discussed the general framework of litigation under the Biologics Price Competition and Innovation Act (“BPCIA”), including the “patent dance” information exchange under 42 U.S.C. §262(l), and three case studies that inform our current understanding of emerging judicial interpretation of BPCIA requirements.
Read more

The Federal Circuit Newly Recognizes Patent-Agent Privilege

March 11, 2016 | Blog | By Christina Sperry

On March 7, 2016, the Court of Appeals for the Federal Circuit recognized “a patent-agent privilege extending to communications with non-attorney patent agents when those agents are acting within the agent’s authorized practice of law before the Patent Office.” 
Read more

USPTO Data Supports Notion That Filing A Patent Owner Preliminary Response May Raise the Likelihood of Denial of an IPR or CBM Petition

March 10, 2016 | Blog | By William Meunier, Nick Armington

Following the filing of a petition with the Patent Trial and Appeal Board (PTAB) seeking to initiate either an Inter Partes Review (IPR) or Covered Business Method (CBM) Review, the patent owner may file a preliminary response addressing the arguments in the petition and also potentially raising arguments regarding statutory bars that may prevent the IPR or CBM proceeding from being initiated.
Read more

In Daubert Ruling Excluding Both Parties’ Damages Experts, Judge Andrews Rejects FRAND Portfolio Rate as Ceiling on Reasonable Royalty, and Finds Use of Surveys Not Properly Tied to Relevant Technology

March 3, 2016 | Blog | By Robert Moore

On February 25, 2016, Judge Richard Andrews granted the parties’ cross-motions to exclude both sides’ damages experts in M2M Solutions LLC v. Motorola Solutions, Inc., C.A. No. 12-33-RG.
Read more

Subscribe

Sign up to receive email updates from Mintz.
Subscribe Now
Mintz_Monetization_PDF_blog_button

Infographic: Comprehensive Approach to Patent Monetization

Patent Transactions Promo Button

Focus on Patent Transactions

International Comparative Legal Guides 2022 Chapter 27

International Comparative Legal Guide – Patent

Chapter 27

Viewpoint Editors

Explore Other Viewpoints:

I'm Looking For...