Intellectual Property

Viewpoints

Filter by:

Another Friendly Reminder from the CAFC - Use of "the Present Invention" is Clear and Unequivocal Evidence of Disavowal

October 18, 2016 | Blog | By Michael Van Loy, Nicholas Mouton

Disavowal can occur when a patent holder disavows the full scope of claim terms in the specification or during prosecution (e.g., through the doctrine of prosecution history estoppel). In either event, disavowal requires clear and unequivocal evidence that the claimed invention includes or does not include a particular feature. 
Read more

FTC and DOJ Issue Proposed Updates to Antitrust Guidelines for Licensing IP

October 14, 2016 | Blog | By Michael Renaud, Robert Kidwell, Andrew DeVoogd, Marguerite McConihe

For the first time in 26 years, the FTC and DOJ (the “Agencies”) have issued proposed updates to the Antitrust Guidelines for the Licensing of Intellectual Property, last revised in 1995.
Read more

Pleading Standard Defined– CAFC Holds that Joint Infringement Complaint Requires Identification of All Required Claim Steps

October 12, 2016 | Blog | By Adam Samansky, Peter Cuomo

Plaintiffs bringing patent infringement complaints under the Iqbal/Twombly pleading standard should take notice.  On September 30, 2016, a panel of the Federal Circuit affirmed a district court’s dismissal of a deficient complaint under Rule 12(b)(6).
Read more

Think Before You Settle: Protegrity Teaches Timing is Important When Negotiating Settlement Agreements

October 4, 2016 | Blog | By William Meunier, Matthew Galica

As a patent owner involved in patent litigation, you must consider numerous factors when negotiating a settlement agreement. An important contemplation is timing, because finalizing a settlement agreement at the wrong juncture of your legal proceedings can have devastating results.
Read more

Five things academic scientists should know when pursuing their first patent - Five-Part Series

October 3, 2016 | Blog | By Ingrid A. Beattie, PhD

We’ll start with the first question a patent attorney might ask you: Have you told anyone about your invention?
Read more

CAFC's Husky Decision Makes Sledding Tougher for Patent Owners in PTAB Appeals

September 30, 2016 | Blog | By William Meunier

The Federal Circuit recently determined that it lacked jurisdiction to review the Patent Trial and Appeal Board’s determination that assignor estoppel has no affect in an inter partes review (“IPR”).
Read more

Explaining the Defend Trade Secrets Act

September 29, 2016 | Blog | By Michael Renaud, Nick Armington

Three attorneys from Mintz Levin’s IP and Employment practices are featured writers in the American Bar Association’s Business Law Today publication, explaining the ins-and-outs of the Defend Trade Secrets Act (DTSA).
Read more

“Processing System” Does Not Render Claims Indefinite

September 29, 2016 | Blog | By Michael McNamara, Michael Renaud

The Federal Circuit relied on Nautilus to preserve functional language of a method claim in a decision published last Friday.  In Cox Comm, Inc. v. Sprint, No. 2016-1013, the Federal Circuit held that the term “processing system” did not render the asserted claims indefinite.
Read more

Federal Circuit Revisits Willfulness Post Halo

September 29, 2016 | Blog | By Brad M Scheller, Adam Rizk

On remand from the Supreme Court’s decision in Halo Elecs., Inc. v. Pulse Elecs., Inc., 136 S. Ct. 1923 (2016), the Federal Circuit recently issued a revised decision in Stryker Corp. v. Zimmer, Inc., No. 2013-1668 (Fed. Cir. 2016). The decision provides insight into the court’s interpretation of the Halo standard and enhanced damages.
Read more

In McRO, Federal Circuit Provides Further Guidance on Section 101

September 22, 2016 | Blog | By Michael Renaud, Michael Newman, Matthew Karambelas

Two years after the Central District of California invalidated two 3-D animation patents under Section 101, the Federal Circuit reversed that court’s decision, finding that the lower court oversimplified the claims of a computer-related invention.
Read more

Apotex to Supreme Court: Review BPCIA 180-Day Notice Requirement

September 21, 2016 | Blog | By Thomas Wintner

On September 9, 2016, Apotex Inc. filed a petition for writ of certiorari in the U.S. Supreme Court seeking review of the Federal Circuit’s decision in Amgen Inc. v. Apotex Inc., Case No. 2016-1308.
Read more

Markman at the ITC and Its Effect on an Investigation

September 20, 2016 | Blog | By Michael Renaud, Michael Newman

Several months ago, we were struck with the question of whether, as counsel for a patent owner at the ITC, our clients’ case would benefit from a Markman hearing. Claim construction during an ITC investigation was routinely performed as part of the evidentiary hearing in an investigation, rather than as part of earlier Markman proceedings.
Read more

Federal Circuit: Go whole-hog on validity below if you want to contest an independent determination of invalidity on appeal

September 15, 2016 | Blog | By Michael Newman

Think you’ve won on validity at the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board (PTAB) and your claims are safe on appeal? “Not so fast,” says the Federal Circuit in Software Rights Archive, LLC v. Facebook Inc., Nos. 2015-1649 through 2015-1563 (Fed. Cir., Sep. 9, 2016) (nonprecedential) (per curiam).
Read more

ITC Declines to File Petition for Certiorari – CAFC Holding that ITC Does Not Have Jurisdiction over Digital Imports Stands

September 1, 2016 | Blog | By Daniel Weinger, Nick Armington

The deadline has come and gone for the ITC and patentee Align to file petitions for certiorari seeking review by the Supreme Court of the Federal Circuit’s decision in ClearCorrect. On November 10, 2015, a panel of the Federal Circuit found that the ITC does not have jurisdiction to bar digital downloads or imports where there was no physical article to bar from importation.
Read more

Industrial Espionage and the Defend Trade Secrets Act

August 24, 2016 | Blog | By Michael Renaud, Nick Armington

American corporations are facing an ever increasing threat of misappropriation of their valuable trade secrets through industrial espionage, defined as the theft of a company’s trade secrets by an actor intending to convert the trade secret to the economic benefit of a competitor.
Read more

Federal Circuit Emphasizes that an Obviousness Analysis Based on Common Sense Must be Supported by Substantial Evidence and Explained with Sufficient Reasoning

August 23, 2016 | Blog | By Andrew DeVoogd

A recent decision by the Federal Circuit suggests that relying on “common sense” in analyzing whether a patent is obvious in view of prior art cannot always be based on common sense alone.
Read more

The Specter of Alice Looms Large Even in PGRs

August 15, 2016 | Blog | By Brad M Scheller

On August 3, 2016, the Patent Trial and Appeal Board issued a post-grant review decision that bears one striking similarity to its previous post-grant review decisions, namely invalidation of claims under Alice Corp. Pty. v. CLS Bank Int’l, further bolstering the salience of patent ineligibility challenges in post-grant proceedings.
Read more

Ninth Circuit Provides Clarification Concerning the Definition of Trade Secret

August 1, 2016 | Blog | By Michael Renaud, Nick Armington

On July 5, 2016, in United States v. Nosal, the Ninth Circuit Court of Appeals clarified the definition of “trade secret,” finding that data derived from a compilation of publicly available information can constitute a protectable trade secret in a case involving allegations under the Economic Espionage Act (EEA).
Read more

IP for Start-ups: Part VI

July 19, 2016 | Blog | By Michael Van Loy

In our sixth "IP for Start-Ups” video, “Getting the Correct Named Inventors on a Patent”, Mike discusses the importance of including all of the inventors on a patent and why it's important to name anyone who has a reasonable proximity to the invention.
Read more

What Type of Sale Constitutes an On-Sale Bar?

July 13, 2016 | Blog | By Brad M Scheller, Monique Winters Macek

An invention cannot be patented if it was ready for patenting and was subject to a commercial offer for sale more than one year before the application was filed.
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...