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DOJ Guidance on IEEE Letter Hotly Debated

April 16, 2015 | Blog | By Dionne Lomax

The most hotly debated issue at this year’s GCR IP & Antitrust Conference, held on April 14 in Washington, DC, was the DOJ’s guidance issued in a February business review letter to the Institute of Electrical and Electronics Engineers (IEEE).

House Judiciary Committee Holds Hearing on Innovation Act, Fee-Shifting

April 15, 2015 | Blog | By Michael Renaud, Robert Moore

Tuesday, April 14, the House Judiciary Committee convened to discuss H.R. 9, the “Innovation Act,” which was introduced in February 2015 by the Committee’s Chairman, Rep. Bob Goodlatte (R-VA).
In a decision released on March 25, 2015, FDA denied a Citizen’s Petition that would have effectively made the information and patent exchange described in § 262 of the Biologics Price Competition and Innovation Act (“BPCIA”) a precondition for approval.
Under Secretary of Commerce for Intellectual Property and USPTO Director, Michelle Lee, announced on Friday that a series of actual and proposed rulemakings aimed at improving post-grant proceedings before the PTAB will be forthcoming—some effective immediately and others rolling out over the summer and beyond.
Fifty years ago, the Supreme Court held in Brulotte v. Thys Co., 379 U.S. 29 (1964) that a license agreement requiring royalty payments for use of a patented invention after expiration of the patent term is unlawful per se.
In a recent decision, the International Trade Commission rejected a petitioner’s attempt to use allegations of unfair competition and unfair acts as a possible way of working around the Federal Circuit’s bar on claims of induced infringement.
Filing an appeal brief with the Patent Trial and Appeal Board (PTAB) can be an effective way to advance prosecution and secure allowable claims. Last November, we summarized Tips for Writing Effective PTAB Briefs to help propel applicants to PTAB victory.
In an order released on March 19, 2015, U.S. District Court Judge Richard Seeborg of the Northern District of California denied Amgen’s motion for judgment on the pleadings as well as its request for a preliminary injunction to prevent Sandoz from marketing its drug Zarxio®.
The U.S.I.T.C. instituted its first investigation under its 100-day pilot program for early determination of a specific potentially case-dispositive issue.

Understanding Post-AIA Power of Attorney Procedures

March 19, 2015 | Blog | By Christina Sperry, Colleen Witherell

Applicants identified upon a U.S. patent application’s filing can impact the ownership rights to the patent application throughout prosecution. Prior to implementation of relevant aspects of the America Invents Act (AIA) on September 16, 2012, patent application Applicants could only be Inventors. 
On March 12, the United States District Court for the Southern District of Indiana joined the District of Delaware and Eastern District of Texas as the first courts to consider a generic drug manufacturer’s motion to dismiss a Hatch-Waxman patent infringement action for an alleged lack of personal jurisdiction following the Supreme Court’s decision in Daimler AG v. Bauman, 134 S.Ct. 746 (2014).

A "Solution" In Search of a Problem?

March 13, 2015 | Blog | By Michael Renaud, Peter Snell, Robert Moore

The Innovation Act introduced in the House on February 5, 2015 is designed to curb patent abuse, but as currently drafted it doesn't address the worst forms of the problem.

Second Bites At the Post-Grant Apple?

March 13, 2015 | Blog | By Howard Wisnia

The America Invents Act (AIA) gives the Board broad discretion in deciding whether or not to institute an IPR or CBM when the Petition addresses substantially the same prior art or arguments to those previously considered by the PTO.
The general rule is that a patent claim’s preamble does not limit the claim unless the preamble breathes life and meaning into the claim. The Federal Circuit’s recent decision in Pacing Techs. v. Garmin Int’l, No. 2014-1396 (Feb. 18, 2015) highlights some application drafting choices that, under post-issuance scrutiny, resulted in limitations being read into an independent claim.

European patents to take effect in Morocco

March 3, 2015 | Blog | By David Wraige, Isobel Finnie

From 1 March 2015, a new agreement will come into force that allows European patents to be validated in Morocco. This is the first time that a non-member country of the European Patent Organisation will have recognised European patents as national patents.

Bayer Given a Headache by Trial Court Decision in FLANAX US Trademark Dispute

February 25, 2015 | Blog | By Susan Neuberger Weller

On February 6, 2015, a US District Court issued a ruling which underscores the territorial nature of trademark rights and the need to seek formal protection for your marks where possible in all countries of interest.

Prepare for the Japanese Patent Opposition System Coming Soon

February 23, 2015 | Blog | By Christina Sperry, Linda Azrin

The Japanese Patent Act was revised on May 14, 2014 to provide for post-grant oppositions within one year of the rule change, i.e., by May 14, 2015 (the exact effective date has not yet been set). Under the new opposition system, any party, including non-interested parties and straw men, will be able to file an opposition within 6 months of patent issuance and thus potentially cause invalidation soon after patent grant.

The En Banc Federal Circuit Hears Argument in Suprema, Inc. v. ITC

February 12, 2015 | Blog | By Nick Armington

On Thursday, February 5, 2015, the en banc Federal Circuit heard oral argument in the matter of Suprema, Inc. v. ITC, reviewing its controversial panel decision holding that in ITC investigations induced infringement cannot be found where no direct infringement occurs until after importation.

Don’t Even Think About Advertising a SUPER BOWL Party!

January 26, 2015 | Blog | By Susan Neuberger Weller

What do sports fans, party-goers, third-party advertisers, and any non NFL affiliated businesses have in common? No legal right to use the words “SUPER BOWL” without the risk of trademark infringement!

RCEs and the New USPTO Patent Term Adjustment Rules

January 14, 2015 | Blog | By Christina Sperry

On January 9, 2015, the Federal Register published final rules implementing changes to patent term adjustment (PTA) in view of Novartis v. Lee, which the Federal Circuit decided last January. The new rules affect patents where a request for continued examination (RCE) was filed during prosecution.
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