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RPX Requests en banc Review in Applications in Internet Time v. RPX

September 13, 2018 | Blog | By Peter Snell, Daniel Weinger

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”).
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PTAB Denies Institution of IPR after Successive Petitions by Unrelated Co-Defendants

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. 
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Six months later, and more than 2.5 years after service of the complaint on Activision, Bungie filed IPRs challenging Worlds’ patents.
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Massachusetts Adopts Uniform Trade Secrets Act

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.

Not just for crypto – How blockchain technology will affect medical devices

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. 
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Inventorship

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.
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Valuable IP Portfolios

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.

A Sales Agent’s Home Office May Qualify as a Regular and Established Place of Business

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).
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. 
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.

International Trade Commission Clarifies Domestic Industry Requirements in Favor of Patent

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.
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).
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.” 

Improper Venue for Web-Based Company in light of In re Cray

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.

When Public Use Qualifies for the Experimental Use Exception to 35 U.S.C. § 102(b)

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).
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.

Recent ITC decision clarifies and eases domestic industry burden for patent holders

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. 

Understanding Priority Claims for U.S. Patent Applications: Part 1

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.

The Patent Act Allows for Full Compensation for All Forms of Infringement

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.

10 Millionth U.S. Patent Issues Today

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.

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