Topics covered in this month’s patent group presentation include proposed federal trade secret legislation, recent case law regarding the presumption of irreparable harm, and recent case law regarding factual findings and new grounds for rejections.
Topics covered in this month’s patent prosecution presentation included:
- Discussion of inequitable conduct cases post-Therasense
- A recent claim construction case in which the Federal Circuit was somewhat in conflict over the best manner for claim construction
- The business method patent review section of the HR 1249-America Invents Act
- Recent Supreme Court cases Kappos v. Hyatt and Caraco Pharm. Labs., Ltd. v. Novo Nordisk A/S.
Topics covered in this month’s patent group presentation include prioritized examination, discussion of a case regarding the De Novo standard of review, and discussion of recent case law following the Bilski decision.
Topics covered in this month’s presentation included:
• Federal Circuit “computer readable medium” claim eligibility
• Update on patent eligibility of isolated DNA
• USPTO’s Ombudsman Program became permanent
• USPTO just issued Patent No. 8,000,000
The document summarizes several topics discussed at a prosecution group luncheon meeting at the Patent and Trademark Office (PTO) in October 2012. It discusses the decreasing patent application backlog at the PTO due to hiring initiatives. It also summarizes a proposed rule for derivation proceedings and tips for related US and European patent filings. Additionally, it outlines a proposal to generally adopt ABA Model Rules of Professional Conduct for patent practitioners and summarizes recent court cases related to patent eligibility of software and the use of prior art references in inter partes reexaminations.
The America Invents Act was passed by Congress and is expected to be signed by the President on Friday. Most provisions will take effect either 12 or 18 months after enactment. Key changes include moving from a first to invent to a first to file system, new post-grant review procedures such as inter partes review, allowing supplemental examination to address possible inequitable conduct, and expanding the prior user defense.
Topics covered in this month’s patent prosecution presentation include the Supreme Court’s ruling in the Microsoft v. i4i case upholding the clear and convincing standard. Case law dealing with “analogous art” for mechanical cases is also addressed. Finally, recent case law from the U.S. Court of Appeals for the Federal Circuit (CAFC) dealing with inequitable conduct and Bayh-Dole Act is presented.
Topics covered in this month's patent prosecution presentation include recent case law from the U.S. Court of Appeals for the Federal Circuit (CAFC) dealing with reissue applications and dependent claims. A brief overview of the arguments being presented in the Microsoft v. i4i case is also reviewed. Oral arguments in this case were recently heard by the United States Supreme Court. Case law developments dealing with written description for mechanical cases is also addressed. Finally, an overview on the breakdown of patent applications filed in Europe in 2010 is presented.
The document summarizes several topics related to patent prosecution ethics:
1) It discusses a recent Supreme Court ruling on claim construction appeals and the implications for patent prosecution. It also notes potential ethical issues around defining terms.
2) It overviews common ethical issues like subject matter conflicts, inventor conflicts and representation, failure to supervise staff, and signature requirements.
3) It provides details on recent ethics cases involving subject matter conflicts, inventor representation conflicts, failure to supervise staff who fabricated documents, and mistakenly changing a priority claim without client consent.
Topics covered in this month’s patent prosecution presentation included:
- Discussion of inequitable conduct cases post-Therasense
- A recent claim construction case in which the Federal Circuit was somewhat in conflict over the best manner for claim construction
- The business method patent review section of the HR 1249-America Invents Act
- Recent Supreme Court cases Kappos v. Hyatt and Caraco Pharm. Labs., Ltd. v. Novo Nordisk A/S.
Topics covered in this month’s patent group presentation include prioritized examination, discussion of a case regarding the De Novo standard of review, and discussion of recent case law following the Bilski decision.
Topics covered in this month’s presentation included:
• Federal Circuit “computer readable medium” claim eligibility
• Update on patent eligibility of isolated DNA
• USPTO’s Ombudsman Program became permanent
• USPTO just issued Patent No. 8,000,000
The document summarizes several topics discussed at a prosecution group luncheon meeting at the Patent and Trademark Office (PTO) in October 2012. It discusses the decreasing patent application backlog at the PTO due to hiring initiatives. It also summarizes a proposed rule for derivation proceedings and tips for related US and European patent filings. Additionally, it outlines a proposal to generally adopt ABA Model Rules of Professional Conduct for patent practitioners and summarizes recent court cases related to patent eligibility of software and the use of prior art references in inter partes reexaminations.
The America Invents Act was passed by Congress and is expected to be signed by the President on Friday. Most provisions will take effect either 12 or 18 months after enactment. Key changes include moving from a first to invent to a first to file system, new post-grant review procedures such as inter partes review, allowing supplemental examination to address possible inequitable conduct, and expanding the prior user defense.
Topics covered in this month’s patent prosecution presentation include the Supreme Court’s ruling in the Microsoft v. i4i case upholding the clear and convincing standard. Case law dealing with “analogous art” for mechanical cases is also addressed. Finally, recent case law from the U.S. Court of Appeals for the Federal Circuit (CAFC) dealing with inequitable conduct and Bayh-Dole Act is presented.
Topics covered in this month's patent prosecution presentation include recent case law from the U.S. Court of Appeals for the Federal Circuit (CAFC) dealing with reissue applications and dependent claims. A brief overview of the arguments being presented in the Microsoft v. i4i case is also reviewed. Oral arguments in this case were recently heard by the United States Supreme Court. Case law developments dealing with written description for mechanical cases is also addressed. Finally, an overview on the breakdown of patent applications filed in Europe in 2010 is presented.
The document summarizes several topics related to patent prosecution ethics:
1) It discusses a recent Supreme Court ruling on claim construction appeals and the implications for patent prosecution. It also notes potential ethical issues around defining terms.
2) It overviews common ethical issues like subject matter conflicts, inventor conflicts and representation, failure to supervise staff, and signature requirements.
3) It provides details on recent ethics cases involving subject matter conflicts, inventor representation conflicts, failure to supervise staff who fabricated documents, and mistakenly changing a priority claim without client consent.
The document summarizes various intellectual property news items, including a report finding waste and mismanagement at the Patent Trial and Appeal Board due to unused paralegals, a potential $6 million malpractice suit over an incorrectly claimed bra insert patent, the upcoming vote on Scottish independence and its potential intellectual property implications, the USPTO pulling patent allowances in view of the Alice decision, and upcoming intellectual property events.
July’s practice group lunch included an overview of recent decisions, the Court of Appeals for the Federal Circuit, and the United States Supreme Court. The Supreme Court addressed a number of patent law topics this year, including the standard of review for patent claim construction (Teva Pharmaceuticals v. Sandoz), royalties on expired patents (Kimble v. Marvel Enterprises), and defenses to claims of induced infringement (Commil v. Cisco). The initial wave of appeals in post-issuance proceedings provided by the America Invents Act are now being decided by the Federal Circuit. These include cases involving whether the decision to institute is reviewable (In re Cuozzo Speed Technologies) and discussion of the claim construction standards that apply (Microsoft v. Proxyconn). The relationship between administrative challenges and related litigation is also an evolving area (ePlus v. Lawson Software).
This document summarizes several recent and upcoming Supreme Court cases related to intellectual property law. It discusses key holdings and issues in cases like Cuozzo v. Lee regarding the appealability of Patent Office decisions, Halo v. Pulse regarding standards for enhanced patent damages, and Samsung v. Apple regarding the scope of design patent damages. It also previews several patent cases the Supreme Court has agreed to hear in its upcoming 2016 term.
The document summarizes notes from the October 2014 Patent Prosecution Luncheon. It discusses China joining the Patent Document Exchange program and Korea joining the Cooperative Patent Classification system. The After Final Consideration Pilot Program has been extended through September 2015. A Federal Circuit case found inequitable conduct for failure to disclose relevant prior art documents. Another case determined that a claim amendment resulted in estoppel and no infringement under the doctrine of equivalents.
The Supreme Court affirmed the USPTO Board's decision to invalidate claims in Cuozzo's speedometer patent. The Court held that the Board's decision to institute IPR of dependent claims not explicitly challenged in the petition was not appealable. The Court also upheld the Board's use of the "broadest reasonable interpretation" standard for construing claim terms during IPR, rather than the narrower standard used in district court. The decision increases the USPTO's power to reconsider and invalidate issued patents through the IPR process.
Enhanced Damages for Patent Infringement - Workman NydeggerWorkman Nydegger
Enhanced damages in patent infringement suits in recent years have been limited due to the application of the Seagate test. This test was developed as a standard used by courts to determine when to award enhanced damages. The Supreme Court’s recent decision in Halo v. Pulse found the Seagate test to be unduly rigid and inconsistent with the actual statute regarding enhanced damages. The Court restored the process of awarding enhanced damages to its intended scope.
We review the history of enhanced damages in patent infringement suits, including the introduction of the Seagate test. Halo v. Pulse is reviewed and the Supreme Court’s reasoning behind eliminating the Seagate test is described. We also discuss the impact the removal of the Seagate test has on patent infringement suits and potential patent infringers.
http://www.wnlaw.com/blog/enhanced-damages-patent-infringement-halo-v-pulse/
The following presentation describes a recently passed, and soon to be signed, Indiana law regarding how to address the problem of bad-faith assertions of patent infringement by patent assertion entities, sometimes referred to as "patent trolls." The law provides a definition of what constitutes bad faith assertion of patent infringement as well as gives guidance on basic information that is required for patent cease and desist or demand letters. It also provides procedures for having the entity post a pre-trial bond and/or be subject to damages or other remedies for bad faith assertion of patent infringement.
The document discusses three recent Supreme Court rulings related to patent litigation. The Apple v. Samsung ruling found that design patents do not require proving causation for total profit awards under section 289. There is also disagreement among Federal Circuit judges regarding standards for enhanced damages. Additionally, the Commil v. Cisco ruling determined that an invalidity belief is not a defense against induced infringement charges. It held that infringement and validity are separate issues, and allowing an invalidity defense would undermine the presumption of validity.
Georgetown Univ. Law Center Conference: Patent Law Developments in the Suprem...WilmerHale
From The Georgetown University Law Center Conference: The Changing Patent Landscape held on March 23, 2015.
This presentation covers:
- Patent Eligibility: The Alice Effect
- Attorney’s Fees: The Octane/Highmark Fallout
- Indefiniteness: The Nautilus Voyage
- Patent Damages: Reasonable royalties after VirnetX and D-Link
- Injunctive Relief: eBay, Apple/Samsung, and the ITC
- Inter Partes Reviews: The Gathering Appellate Storm
- The Next Wave: Teva, Commil, Kimble, Google
Topics covered in this month’s patent prosecution presentation include a discussion of the new extended missing parts program, the Microsoft v. i4i case in which the clear and convincing standard for the presumption of validity is being challenged, the Costco v. Omega case regarding foreign first sale doctrine, patent office appeals practice, and joint infringement.
Georgetown Univ. Law Center Conference: Post-Grant Patent Proceedings: Are th...WilmerHale
From The Georgetown University Law Center Conference: The Changing Patent Landscape held on March 23, 2015.
This presentation covers:
- Statistics on Post-Grant Proceedings
- Rule Changes for Post-Grant Proceedings
- IPR as Part of a Litigation Strategy
- Patent Owner’s Strategy in an IPR
- IPR Termination
The document summarizes the Supreme Court's 2010 decision in Bilski v. Kappos regarding business method patents. The Court ruled that the "machine-or-transformation" test was not the sole test for determining patent eligibility but was still a useful tool. However, four justices would have banned business method patents altogether. The Court provided little additional guidance and left many questions unanswered, ensuring further debate around the patent eligibility of software, business methods, and other technologies. Litigators are expected to increasingly challenge such patents based on subject matter eligibility and obviousness.
Session V. Estoppel and Privity in US PTO Post-Grant ProceedingsWilmerHale
This document summarizes a presentation on estoppel and privity in post-grant proceedings at the USPTO. It discusses how estoppel applies to petitioners as well as those in privity, including real parties in interest. Privity is a fact-dependent concept evaluated on a case-by-case basis considering control, financial contribution, and other factors. Issues of privity typically arise when the patent owner seeks to prevent a proceeding or assert estoppel, and presenters provided practice tips for evaluating privity and addressing related arguments.
The document provides an overview of the U.S. patent process from conception of an invention to filing a patent application. It discusses key steps and considerations including scientific research and discovery, disclosure to a technology transfer office, evaluation of patentability, drafting the application, and filing as a provisional or non-provisional application. Important dates, prior art, record keeping, evaluation factors, and application types and strategies are covered in detail.
Georgetown Univ. Law Center Conference: Strategies for Worldwide Patent Litig...WilmerHale
From The Georgetown University Law Center Conference: The Changing Patent Landscape held on March 23, 2015.
This presentation covers:
- Trend toward globalization of IP litigation
- The world is becoming increasingly interconnected
* Global supply and distribution chains
* Markets outside the U.S. taking on even greater importance
* Proliferation of standards
- Litigation outside the U.S. may offer important strategic advantages
The Federal Circuit Review is a monthly newsletter featuring the latest case summaries handed down from the U.S. Court of Appeals for the Federal Circuit.
In this Issue:
• Judgment of Infringement Entered as Sanction
• Patent Exhaustion Does Not Apply to Harvested Seeds
• Judges Disagree on § 101 Standards
• Litigation Is Not a Domestic Industry
Patents on Software and Business Methods: Have the Rules Changed?Karl Larson
The standard for patentable subject matter under Bilski is a “machine-or-transformation test,” which restricts patenting to inventions that are either tied to a particular machine or apparatus, or that transform a particular article into a different state or thing.
The document discusses the doctrine of equivalents in patent law. The doctrine allows a court to find infringement even if the accused device does not literally infringe a patent claim, if it is equivalent to the claimed invention. It provides that an equivalent device performs substantially the same function in substantially the same way to achieve substantially the same result. The doctrine balances protecting patent holders' inventions with providing clear notice of a patent's scope.
In order to speed up searching, the US Patent and Trademark Office (USPTO) has a number of new programs that not only help searchers speed up the patent searching process but also have an impact on examination. The presentation discusses the new Global Patent Search Network (GPSN) in which Chinese patent applications in English are available at the USPTO website. In addition, the presentation describes the new Cooperative Patent Classification (CPC) system which has been implemented at the USPTO and will be the sole patent classification system effective January 1, 2015.
The presentation discusses different techniques for using US Patent and Trademark Office (USPTO) invalidity proceedings to invalidate issued patents. The presentation specifically discusses the new procedures available under the America Invents Act (AIA). Topics include Post-Grant Review (PGR) and Inter Partes Review (IPR) and cover business method review (CBM) programs. Deadlines as well as specific scheduling orders for these programs are discussed as well as how best to use the new programs at the USPTO.
The document summarizes various intellectual property news items, including a report finding waste and mismanagement at the Patent Trial and Appeal Board due to unused paralegals, a potential $6 million malpractice suit over an incorrectly claimed bra insert patent, the upcoming vote on Scottish independence and its potential intellectual property implications, the USPTO pulling patent allowances in view of the Alice decision, and upcoming intellectual property events.
July’s practice group lunch included an overview of recent decisions, the Court of Appeals for the Federal Circuit, and the United States Supreme Court. The Supreme Court addressed a number of patent law topics this year, including the standard of review for patent claim construction (Teva Pharmaceuticals v. Sandoz), royalties on expired patents (Kimble v. Marvel Enterprises), and defenses to claims of induced infringement (Commil v. Cisco). The initial wave of appeals in post-issuance proceedings provided by the America Invents Act are now being decided by the Federal Circuit. These include cases involving whether the decision to institute is reviewable (In re Cuozzo Speed Technologies) and discussion of the claim construction standards that apply (Microsoft v. Proxyconn). The relationship between administrative challenges and related litigation is also an evolving area (ePlus v. Lawson Software).
This document summarizes several recent and upcoming Supreme Court cases related to intellectual property law. It discusses key holdings and issues in cases like Cuozzo v. Lee regarding the appealability of Patent Office decisions, Halo v. Pulse regarding standards for enhanced patent damages, and Samsung v. Apple regarding the scope of design patent damages. It also previews several patent cases the Supreme Court has agreed to hear in its upcoming 2016 term.
The document summarizes notes from the October 2014 Patent Prosecution Luncheon. It discusses China joining the Patent Document Exchange program and Korea joining the Cooperative Patent Classification system. The After Final Consideration Pilot Program has been extended through September 2015. A Federal Circuit case found inequitable conduct for failure to disclose relevant prior art documents. Another case determined that a claim amendment resulted in estoppel and no infringement under the doctrine of equivalents.
The Supreme Court affirmed the USPTO Board's decision to invalidate claims in Cuozzo's speedometer patent. The Court held that the Board's decision to institute IPR of dependent claims not explicitly challenged in the petition was not appealable. The Court also upheld the Board's use of the "broadest reasonable interpretation" standard for construing claim terms during IPR, rather than the narrower standard used in district court. The decision increases the USPTO's power to reconsider and invalidate issued patents through the IPR process.
Enhanced Damages for Patent Infringement - Workman NydeggerWorkman Nydegger
Enhanced damages in patent infringement suits in recent years have been limited due to the application of the Seagate test. This test was developed as a standard used by courts to determine when to award enhanced damages. The Supreme Court’s recent decision in Halo v. Pulse found the Seagate test to be unduly rigid and inconsistent with the actual statute regarding enhanced damages. The Court restored the process of awarding enhanced damages to its intended scope.
We review the history of enhanced damages in patent infringement suits, including the introduction of the Seagate test. Halo v. Pulse is reviewed and the Supreme Court’s reasoning behind eliminating the Seagate test is described. We also discuss the impact the removal of the Seagate test has on patent infringement suits and potential patent infringers.
http://www.wnlaw.com/blog/enhanced-damages-patent-infringement-halo-v-pulse/
The following presentation describes a recently passed, and soon to be signed, Indiana law regarding how to address the problem of bad-faith assertions of patent infringement by patent assertion entities, sometimes referred to as "patent trolls." The law provides a definition of what constitutes bad faith assertion of patent infringement as well as gives guidance on basic information that is required for patent cease and desist or demand letters. It also provides procedures for having the entity post a pre-trial bond and/or be subject to damages or other remedies for bad faith assertion of patent infringement.
The document discusses three recent Supreme Court rulings related to patent litigation. The Apple v. Samsung ruling found that design patents do not require proving causation for total profit awards under section 289. There is also disagreement among Federal Circuit judges regarding standards for enhanced damages. Additionally, the Commil v. Cisco ruling determined that an invalidity belief is not a defense against induced infringement charges. It held that infringement and validity are separate issues, and allowing an invalidity defense would undermine the presumption of validity.
Georgetown Univ. Law Center Conference: Patent Law Developments in the Suprem...WilmerHale
From The Georgetown University Law Center Conference: The Changing Patent Landscape held on March 23, 2015.
This presentation covers:
- Patent Eligibility: The Alice Effect
- Attorney’s Fees: The Octane/Highmark Fallout
- Indefiniteness: The Nautilus Voyage
- Patent Damages: Reasonable royalties after VirnetX and D-Link
- Injunctive Relief: eBay, Apple/Samsung, and the ITC
- Inter Partes Reviews: The Gathering Appellate Storm
- The Next Wave: Teva, Commil, Kimble, Google
Topics covered in this month’s patent prosecution presentation include a discussion of the new extended missing parts program, the Microsoft v. i4i case in which the clear and convincing standard for the presumption of validity is being challenged, the Costco v. Omega case regarding foreign first sale doctrine, patent office appeals practice, and joint infringement.
Georgetown Univ. Law Center Conference: Post-Grant Patent Proceedings: Are th...WilmerHale
From The Georgetown University Law Center Conference: The Changing Patent Landscape held on March 23, 2015.
This presentation covers:
- Statistics on Post-Grant Proceedings
- Rule Changes for Post-Grant Proceedings
- IPR as Part of a Litigation Strategy
- Patent Owner’s Strategy in an IPR
- IPR Termination
The document summarizes the Supreme Court's 2010 decision in Bilski v. Kappos regarding business method patents. The Court ruled that the "machine-or-transformation" test was not the sole test for determining patent eligibility but was still a useful tool. However, four justices would have banned business method patents altogether. The Court provided little additional guidance and left many questions unanswered, ensuring further debate around the patent eligibility of software, business methods, and other technologies. Litigators are expected to increasingly challenge such patents based on subject matter eligibility and obviousness.
Session V. Estoppel and Privity in US PTO Post-Grant ProceedingsWilmerHale
This document summarizes a presentation on estoppel and privity in post-grant proceedings at the USPTO. It discusses how estoppel applies to petitioners as well as those in privity, including real parties in interest. Privity is a fact-dependent concept evaluated on a case-by-case basis considering control, financial contribution, and other factors. Issues of privity typically arise when the patent owner seeks to prevent a proceeding or assert estoppel, and presenters provided practice tips for evaluating privity and addressing related arguments.
The document provides an overview of the U.S. patent process from conception of an invention to filing a patent application. It discusses key steps and considerations including scientific research and discovery, disclosure to a technology transfer office, evaluation of patentability, drafting the application, and filing as a provisional or non-provisional application. Important dates, prior art, record keeping, evaluation factors, and application types and strategies are covered in detail.
Georgetown Univ. Law Center Conference: Strategies for Worldwide Patent Litig...WilmerHale
From The Georgetown University Law Center Conference: The Changing Patent Landscape held on March 23, 2015.
This presentation covers:
- Trend toward globalization of IP litigation
- The world is becoming increasingly interconnected
* Global supply and distribution chains
* Markets outside the U.S. taking on even greater importance
* Proliferation of standards
- Litigation outside the U.S. may offer important strategic advantages
The Federal Circuit Review is a monthly newsletter featuring the latest case summaries handed down from the U.S. Court of Appeals for the Federal Circuit.
In this Issue:
• Judgment of Infringement Entered as Sanction
• Patent Exhaustion Does Not Apply to Harvested Seeds
• Judges Disagree on § 101 Standards
• Litigation Is Not a Domestic Industry
Patents on Software and Business Methods: Have the Rules Changed?Karl Larson
The standard for patentable subject matter under Bilski is a “machine-or-transformation test,” which restricts patenting to inventions that are either tied to a particular machine or apparatus, or that transform a particular article into a different state or thing.
The document discusses the doctrine of equivalents in patent law. The doctrine allows a court to find infringement even if the accused device does not literally infringe a patent claim, if it is equivalent to the claimed invention. It provides that an equivalent device performs substantially the same function in substantially the same way to achieve substantially the same result. The doctrine balances protecting patent holders' inventions with providing clear notice of a patent's scope.
In order to speed up searching, the US Patent and Trademark Office (USPTO) has a number of new programs that not only help searchers speed up the patent searching process but also have an impact on examination. The presentation discusses the new Global Patent Search Network (GPSN) in which Chinese patent applications in English are available at the USPTO website. In addition, the presentation describes the new Cooperative Patent Classification (CPC) system which has been implemented at the USPTO and will be the sole patent classification system effective January 1, 2015.
The presentation discusses different techniques for using US Patent and Trademark Office (USPTO) invalidity proceedings to invalidate issued patents. The presentation specifically discusses the new procedures available under the America Invents Act (AIA). Topics include Post-Grant Review (PGR) and Inter Partes Review (IPR) and cover business method review (CBM) programs. Deadlines as well as specific scheduling orders for these programs are discussed as well as how best to use the new programs at the USPTO.
The presentation discusses techniques for speeding up allowance of patent applications at the US Patent and Trademark Office (USPTO). In particular, the presentation discusses the After Final Consideration Pilot Program 2.0 which can help applicants avoid Requests for Continued Examination (RCEs).
The US Patent and Trademark Office (USPTO) has proposed rules for the implementation of the Patent Law Treaty (PLT) that will help filers speed up patent filing. The presentation discusses the proposed rules which allow applications to be filed without claims as well as facilitate incorporating prior filings by reference. In addition, a proposed two-month grace period is provided for foreign filing and provisional applications.
The presentation discusses techniques for speeding up the issuance of patents at the US Patent and Trademark Office (USPTO). The presentation focuses on the newly implemented Quick Path Information Disclosure Statement (QPIDS) Program which allows applicants to submit Information Disclosure Statements (IDSs) without the expense and delay of submitting a Request for Continued Examination (RCE). The presentation discusses requirements of the program as well as illustrates possible outcomes using the QPIDS.
The presentation discusses the different techniques for speeding up examination at the US Patent and Trademark Office (USPTO). Topics covered in this presentation include petitions to make special, accelerated examination, prioritized examination, Patent Prosecution Highway (PPH), and the First Action Interview Pilot Program. In addition, some different filing scenarios using these techniques are discussed.
The document summarizes discussions from recent prosecution group luncheons. It discusses the PTO requesting comments on ways to enhance patent quality, including clarifying the scope of claims and meaning of claim terms. It also summarizes recent court decisions on written description requirements for design patents and on fighting obviousness determinations.
- The UK now requires examination requests within 6 months of publication rather than 33 months from priority for most applications.
- The Federal Circuit ruled that a petitioner who was not engaged in potentially infringing activity lacked standing to appeal an adverse IPR decision.
- In re van Os clarified that the PTAB cannot rely solely on a conclusion that a combination would be "intuitive" or "common sense" but must provide a reasoned analysis and explicit motivation to combine references to support an obviousness rejection.
Topics covered in this month’s trademark group presentation include USPTO’s Report to Congress on Trademark Litigation Tactics, USPTO seeks comments on fee-processing methods, case law updates concerning topics including privacy of e-mails, the "Red Cross Statute,” and contributory dilution.
Topics covered in this month’s trademark group presentation include Trademark Document Retrieval 2.0, case law updates concerning topics including right of publicity, natural scope of expansion, bona fide intent, related goods, and Google Adwords in Europe.
Topics covered in this month’s Trademark Group presentation include:
• US Patent and Trademark Office (USPTO) is now emailing acceptance of 8 & 15 declarations,
• a proposed rule to permit the USPTO to require more than one specimen for declarations of use,
• .XXX domain names,
• a review of the case concerning John Dillinger’s right of publicity,
• a case concerning the MUSCLE MAIZE trademark is descriptive, and
• a case concerning word reversal in trademarks.
The OIG report identified significant amounts of unsupported work hours by patent examiners at the USPTO, equating to millions of dollars in potential waste. Specifically, the report found approximately 138,000 unsupported hours over 9 months and over 288,000 unsupported hours over 15 months. A number of examiners with high amounts of unsupported hours received above-average performance ratings. The report also found issues with USPTO policies that limit its ability to prevent and detect time and attendance abuse. The OIG provided recommendations to address these issues.
This document summarizes several 2016 Federal Circuit court decisions regarding software patentability. Key points include: patents were upheld for software solutions to technical problems, while those merely applying existing technology to a business problem were rejected. Specifically, patents on self-referential databases, distributed data enhancement networks, and automated 3D animation using specific rules were found eligible. Conversely, patents on anonymous loan shopping, content filtering, and power grid monitoring were found to recite only abstract ideas without additional inventive concepts. The document provides practice tips for drafting software patents, such as defining the technical problem and claiming the technical solution.
With the upcoming Super Bowl in Indianapolis, it is expected that legal issues surrounding ambush marketing will become more prevalent, especially in view of the clean zone ordinance recently adopted by the City of Indianapolis. Ambush Marketing can be defined as when one brand pays to become the official sponsor of an event (e.g., the Olympics, the NFL, the World Cup) and another competing brand connects itself with the event without paying sponsorship fees.
The presentation discusses ambush marketing and ways to combat it. The presentation also covers laws used to prevent ambush marketing, such as the Olympics Symbol Act in relation to the 2012 Olympics in London, and the clean zone ordinances, adopted by Dallas for the 2011 Super Bowl as well as Indianapolis for the 2012 Super Bowl.
This document provides information about various options for responding to a final rejection from the USPTO, including the After Final Consideration Pilot Program (AFCP), Pre-Appeal Brief Review, and the new Post-Prosecution Pilot (P3). The AFCP allows filing a response with a non-broadening amendment without an RCE fee. Pre-Appeal Brief Review involves filing a notice of appeal and brief for panel review. P3 allows filing arguments and an optional amendment for panel consideration without an RCE. The document compares the options and provides guidance on which to select based on the examiner's position and whether an appeal is ready to be filed.
The document summarizes several new patent programs and initiatives:
1) The Post-Prosecution Pilot (P3) combines features of two existing programs and allows applicants to submit proposed amendments for consideration by a panel of examiners and present to the panel.
2) The eMod Text Pilot Program allows uploading and downloading applications and office actions as text documents. It has requirements for document formatting and supported fonts.
3) Recent changes to patent procedures and laws in India, the UK, and the USPTO are noted.
The document discusses a Web-Based Issue Fee Form (Web 85b) that can be accessed online with a password through a provided URL or by submitting a USPTO Change of Address for Practitioners Form. It also summarizes a Patent Trial and Appeal Board decision that dismissed three Inter Partes Review proceedings against the University of Florida Research Foundation based on the university's claim of sovereign immunity, as well as new USPTO subject matter eligibility examples related to business methods that are available at a provided URL.
The Court of Federal Claims rejected the government's arguments to dismiss a pre-award bid protest filed by Jacobs Technology Inc. against the U.S. Special Operations Command. The court found that it had jurisdiction over Jacobs' challenge to the agency's decision to resolicit the contract, and that the challenge was ripe for review. The court also determined that Jacobs had standing as an interested party. The government's arguments conflated different grounds for jurisdiction and were contradicted by both the plain language of the Tucker Act and precedent.
This document discusses the legal concept of legitimate expectation (LE) in administrative law. It defines LE as the relationship between the public administration and individuals during their dealings, fueled by promises or conduct that cause expectations. LE is now recognized as the third limb of natural justice. The document outlines the requirements for LE, including that the expectation be clear and unambiguous, not unlawful, and made by someone with actual authority. It distinguishes between procedural LE (e.g. expectation of consultation) and substantive LE (expectation of a binding benefit) and analyzes different standards of judicial review for each. Exceptions exist where other public interests outweigh the LE.
This document is a summary of the Supreme Court case Bilski v. Kappos regarding the patent eligibility of business methods and processes. The Court affirmed the Federal Circuit's judgment that the patent application in question claimed an unpatentable abstract idea, but rejected the Federal Circuit's view that the machine-or-transformation test is the sole test for determining patent eligibility of a process under Section 101 of the Patent Act. The Court held that while the machine-or-transformation test is a useful clue for determining patent eligibility, it is not the sole test. The Court also rejected a categorical exclusion of business methods from Section 101's definition of patentable processes.
The Supreme Court affirmed the Federal Circuit's ruling that the claimed invention in the patent application is not patent eligible. The Court rejected two approaches advocated by the Federal Circuit and respondents: 1) that the machine-or-transformation test is the sole test for determining patent eligibility of a process, and 2) that business methods are categorically excluded from patentability. However, the Court found that the claimed invention in this case was attempting to patent the abstract idea of hedging risk, which is not patent eligible subject matter.
Federal Circuit will review en banc two recent panel decision relating to joint infringement of method claims — Akamai Technologies, Inc. v. Limelight Networks, Inc., 629 F.3d 1311 (Fed. Cir. 2010) and McKesson Technologies Inc. v. Epic Systems Corp., 98 U.S.P.Q.2d 1281 (Fed. Cir. 2011).
Singapore High Court issues guidance on grant of super priority - Re Attilan ...Abraham Vergis
The Singapore High Court issued its first guidance on granting super priority status for rescue financing under recent changes to the Companies Act. In Re Attilan Group Ltd, the Court outlined three conditions for granting super priority status and clarified the differences between the two provisions for super priority in the Companies Act. While denying super priority in this case due to insufficient evidence, the Court established precedent for evaluating such applications and looked to US case law for guidance, leaving room for further development of jurisprudence in this area.
The petitioner, Harry Barko, is requesting a writ of certiorari from the Supreme Court to review a decision made by the Court of Appeals for the D.C. Circuit regarding a discovery dispute. The petitioner argues that the Court of Appeals erred in four ways: 1) by granting mandamus without a finding of "manifest injustice"; 2) by allowing an important legal issue to be resolved through emergency writ instead of final judgment; 3) by expanding the scope of attorney-client privilege in contradiction to Supreme Court precedent; and 4) by adopting a new test for legal intent that contradicts multiple circuit courts. The petitioner believes Supreme Court review is warranted to resolve conflicts and confusion caused by the Court of Appeals decision.
Supreme Court Agrees to Hear Two Cases on Attorneys' Fees in Patent CasesPatton Boggs LLP
The Supreme Court agreed to hear two cases that deal with awarding attorneys' fees in patent cases. In the first case, Octane Fitness v. ICON Health, the Court will consider whether to lower the standard for determining an "exceptional case" in which fees can be awarded. In the second case, Highmark v. Allcare Health, the Court will determine how much deference appellate courts must give to lower court decisions on awarding fees. These rulings could make it easier for prevailing parties to recoup fees and deter patent holders from filing weak infringement claims.
Fiduciary obligations and breach of confidence examining the high court’s g...Atul
This document examines whether the High Court of Australia provides adequate guidance to lower courts on the development of commercial equity law, specifically regarding fiduciary obligations and breach of confidence. It finds that while the High Court provides clear direction in some cases, other judgments leave ambiguity. It also considers if breach of confidence could be extended to protect consumer privacy but finds the courts reluctant to recognize a general right to privacy without legislative involvement. Overall, the High Court expects lower courts to follow its precedents closely, though not all of its guidance is well-defined, creating some uncertainty lower courts.
BoyarMiller – Navigating Your Company through Spoliation Claims and Strategie...BoyarMiller
A Penny Saved is a Penny Earned:
Navigating Your Company through Spoliation Claims and Strategies to Maximize Recovering Attorneys’ Fees
presented by:
Chris Hanslik, Craig Dillard & Matt Veech
The document discusses the obligation of judicial, administrative and arbitral bodies to provide reasons for decisions, and whether inadequacy of reasons alone constitutes an error of law. It notes that while some cases have found inadequacy can be an error, the Victorian Court of Appeal in Sherlock v Lloyd found otherwise for decisions under the Administrative Law Act. The implications for reviewing decisions of VCAT and other decision-makers are discussed.
2005-01-18 CBA JR Record and Affidavit ArticleScott McCrossin
The document discusses the proper use of affidavits on judicial review applications in Nova Scotia courts. It begins by explaining the limited scope of judicial review, noting that courts aim to ensure the propriety of decision-making processes rather than determine if decisions were correct. It then discusses what constitutes the "record" in a judicial review proceeding in Nova Scotia, including transcripts, exhibits, and documents before the tribunal. The document aims to determine what further material beyond the record, such as affidavits, may be properly submitted on judicial review applications.
The Supreme Court unanimously affirmed the rejection of Bilski's business method patent claims, but did not adopt the Federal Circuit's "machine-or-transformation" test as the sole test for patent eligibility. While business method patents are not categorically excluded, Bilski's claims were directed to an abstract idea. The decision provides little guidance but encourages the Federal Circuit to develop additional limiting criteria consistent with the Patent Act. The Court will likely address patent eligibility further in future cases.
This document summarizes a law journal article that analyzes how courts have applied the Supreme Court's 2006 eBay v. MercExchange decision regarding when permanent injunctions should be granted for patent infringement. It finds that while some early post-eBay cases denied injunctions, courts have increasingly returned to granting injunctions in the majority of cases, especially when the patent holder and infringer are competitors. The article analyzes over 60 post-eBay district court cases between 2006-2009 to examine how the standards for irreparable harm and inadequate legal remedies have evolved over time.
SCOTUS Amicus Brief filed in Alice Corp. v CLS Bank case.Patrick Delaney
This amicus brief supports endorsing the analytical framework laid out in Chief Judge Rader's concurring opinion in CLS Bank v. Alice Corp., which included a "claim as a whole" test consistent with Diehr. The brief argues this would be an incremental clarification of the law for evaluating computer-implemented inventions under 35 U.S.C. 101 that embraces the machine-or-transformation test endorsed in Bilski while achieving consensus with Judge Lourie's CLS Bank opinion. The framework is also fully consistent with Supreme Court precedent and clarifies that a claim must meaningfully limit an abstract idea to a specific application or machine to be patent eligible.
The document discusses patentable subject matter under 35 USC §101. It provides an overview of the categories of invention that can be patented (processes, machines, manufactures and compositions of matter). It also discusses exceptions for laws of nature, natural phenomena and abstract ideas. The document summarizes the Bilski v. Kappos Supreme Court case which involved a method for hedging risk in commodities trading, and established that the machine-or-transformation test is not the sole test for determining patent eligibility.
Appellate practice standards of review in civil casesUmesh Heendeniya
This document summarizes the standards of review that federal appellate courts use in civil cases. There are four main standards: de novo review (no deference), clearly erroneous review (highly deferent), substantial evidence review, and abuse of discretion review. The standard applied depends on the specific legal issue or ruling being reviewed. Factual findings are generally reviewed for clear error while legal conclusions receive de novo review. Various pretrial matters and rulings are also summarized along with the applicable standard of review.
The document discusses an environmental enforcement case before the Supreme Court of Ohio regarding whether a single failed emissions test establishes a presumption of continuing violations. It argues that (1) the state bears the initial burden of proving each violation, including proving that a violation continued beyond the initial failed test; (2) a failed test only satisfies the first part of proving an initial violation, and the state must provide additional evidence that the violation likely continued; and (3) if a failed test alone established a presumption of continuing violations, it would improperly relieve the state of fully proving its case and subject defendants to excessive penalties without sufficient evidence.
This order declares a Georgia statute capping noneconomic damages in medical malpractice cases unconstitutional. The order discusses the facts of the case, in which a jury awarded damages to the plaintiffs that exceeded the statutory cap. The court considered motions to strike affidavits submitted by the plaintiffs and denied the motions. In a lengthy analysis, the court found that the statutory cap violates the right to a jury trial guaranteed by the Georgia constitution. The court examined the history and scope of the right to a jury trial and determined that the cap improperly infringes on this right. Therefore, the court declared the statutory cap unconstitutional.
Similar to October 2011 Patent Group Luncheon (20)
The document summarizes various patent office news items and rulings. It discusses a new computer-based training on e-petitions filed with the USPTO, as well as a recent Federal Circuit case confirming that examiners must interpret means-plus-function claim limitations based on the corresponding structure from the specification. It also provides updates on proposed changes in Brazil and Canada, including Brazil automatically granting long-pending applications and Canada's Supreme Court ruling that invalidated the "Promise Doctrine" used to invalidate patents.
Marta Paul spoke on recent developments in US trademark law at the August practice group lunch. Topics included the Supreme Court’s decision in Matal v. Tam on “disparaging” trademarks, as well as how the USPTO is handling similar parts of the trademark statute in the wake of the decision. More news from the USPTO included a new examination guideline on “merely informational matter” and recent cases from the TTAB. Finally, Marta discussed a recent precedential decision from the Court of Appeal for the Federal Circuit, In re I.AM.SYMBOLIC, LLC, involving likelihood of confusion and the effect of subject matter limitations in the identifications of goods or services used in trademark applications.
The Defend Trade Secrets Act of 2016 creates a federal civil cause of action for trade secret misappropriation. It does not preempt existing state trade secret laws. The Act defines trade secret misappropriation and improper means of acquiring a trade secret. It establishes a three-year statute of limitations and allows for remedies such as civil seizure, injunction, damages, and attorney fees in cases of willful and malicious misappropriation.
The document summarizes key points from a prosecution luncheon in July 2016. It proposes increasing USPTO fees for various filings and requiring additional specimens of use for multi-class trademark applications to ensure accuracy. It also discusses recent TTAB cases involving trademarks refused for goods not actually used in commerce, a mark found primarily descriptive for lottery services, and a mark refused as geographically descriptive without sufficient evidence the location was known to US consumers.
The document provides updates from the USPTO on various topics. It discusses the authorization for internet communication form, an on-sale bar case under pre-AIA and AIA, the Marrakesh Treaty on copyright, and a new Post-Prosecution Pilot program. The Post-Prosecution Pilot allows applicants to request a conference with a panel of examiners to discuss an application after a final rejection but before filing an appeal. Requirements and timing for the pilot are outlined. The document also briefly mentions a new website called Examiner.ninja for researching patent examiners.
The Federal Rules of Civil Procedure were updated effective December 1, 2015. Key changes include:
- Forms like the patent infringement complaint form were eliminated. Pleading standards were not altered, though legislation could heighten them.
- The time limit to serve defendants was shortened from 120 to 90 days.
- Rule 26 on the scope of discovery was rephrased to focus on relevance, proportionality, and that discovery need not be admissible to be discoverable.
- Rules regarding the timing of Rule 34 requests and responses were adjusted. Objections to requests must now state if materials are being withheld.
- Rule 37 on sanctions for lost ESI was amended to address prejudice and
The document summarizes key trademark cases and updates from January 2016. It discusses the 10th edition of the Nice Classification taking effect, an USPTO shutdown over winter holidays, a case finding TTAB opposition decisions have preclusive effect in infringement suits, a case requiring proof of bona fide intent to use a mark, a case finding user manuals are not goods, and a case where a single local pizza restaurant did not prove interstate commerce.
Simon Tam filed to register the trademark "THE SLANTS" but was rejected by the US Patent and Trademark Office under Section 2(a) which prohibits disparaging marks. The Federal Circuit took the case en banc and held Section 2(a) unconstitutional as a violation of free speech rights. The court found the provision was not viewpoint or content neutral, regulated expression rather than commercial speech, and significantly chilled protected expression. This ruling calls into question the pending Redskins trademark case and suggests Section 2(a) restrictions are an unconstitutional limitation on free speech.
This document summarizes several topics from a prosecution luncheon in January 2016. It describes recent outages on the USPTO EFS-Web system and an upcoming Supreme Court case on inter partes review. It also summarizes a Massachusetts Supreme Court decision on subject matter conflicts and new features for filing a corrected or enhanced initial web-based application data sheet. Finally, it lists upcoming events from the Indianapolis Bar Association.
The document discusses key aspects of international intellectual property law and agreements. It summarizes the Trans-Pacific Partnership agreement which establishes minimum standards for intellectual property protection among member countries. It then explains some fundamental concepts, including that copyright protects the expression of ideas but not the ideas themselves. International treaties establish minimum protections while national laws govern within each country, meaning intellectual property rights are territorial in nature.
The document discusses several new initiatives and programs from the USPTO, including:
1) A web-based issue fee form (Web 85b) that allows electronic filing of issue fees and reduces errors;
2) An extension until September 30, 2016 of the After Final Consideration Program 2.0 and Quick Path IDS programs, which allow examination of amendments and IDSs after payment of issue fees;
3) The Quick Path IDS program allows examiners to consider an IDS through a petition to withdraw from issuance and conditional RCE instead of a petition to withdraw and RCE.
The document discusses several key points regarding intellectual property (IP):
1) IP is likely the most valuable asset of many businesses, as the value of intangible assets like trademarks, patents, and copyrights makes up the majority of market value for S&P 500 companies.
2) All businesses, not just technology companies, rely on some form of IP like trademarks, copyrights, and trade secrets.
3) Failing to properly protect and manage IP can kill business deals and leave companies vulnerable to lawsuits. Proper ownership and licensing of IP is important.
The document provides information about upcoming events for patent prosecutors including the IPO Annual Meeting, an Indiana State Bar Association lunch and meeting, and new USPTO guidelines. It also summarizes proposed changes to PTAB rules regarding new evidence submissions, misconduct policies for practitioners, and motions to amend practices. Finally, it discusses the transition to classifying patents with the new Cooperative Patent Classification system including search strategies.
The document summarizes statistics from the first three years of America Invents Act (AIA) filings with the Patent Trial and Appeal Board. It reports that there were 3,655 petitions filed, most being inter partes reviews. The majority of petitions were in the electrical/computer field. Trial institutions ranged from 20-50% depending on the type of review. Overall, 12% of challenged claims were ultimately held invalid, down from 25% in the first year of inter partes reviews.
July’s practice group lunch included an overview of recent news from the U.S. Patent and Trademark Office (USPTO) and decisions from the Trademark Trial and Appeal Board (TTAB). The USPTO continues to revise its manuals for trademark practice (TMEP and TBMP) on a rolling basis, and has issued new rules and guidance on certain specific types of trademarks, such as collective marks and repeating patterns. The TTAB has decided that it will presume that, between a manufacture and an exclusive distributor, the manufacture owns the mark, subject to rebuttal (UVeritech v. Amax Lighting). Another TTAB case addresses the interaction between the courts and the USPTO, where the TTAB refused to vacate a decision even though the parties later settled the case while on appeal (University of Alabama v. Pitts).
Topics covered in this patent prosecution lunch presentation include information about newly appointed Federal Circuit Judge Kara Stoll and the Cooperative Patent Classification (CPC) system. In addition, the presentation describes recent problems of accessing Private PAIR/EFS Web using the Google Chrome browser as well as how to change an entity size in Private PAIR. It also discusses the new Expedited Patent Appeal Pilot program as well as the Collaborative Search Pilot Programs (CSP) between the US Patent and Trademark Office (USPTO), the Japan Patent Office (JPO), and Korean Intellectual Property Office (KIPO). Some recent decisions concerning divisional applications and their impact on the obviousness type double patenting rejections along with patent term adjustment are further analyzed.
The presentation provides some background information about intellectual property as related to businesses and how the intellectual property can be used as a security interest or collateral for obtaining financing for businesses.
1) By the 16th month, the International Searching Authority will prepare an International Search Report and Written Opinion on the patentability of the claimed invention.
2) By the 18th month, the patent application will be published. Around this time, the applicant will receive a Notice of Publication.
3) The International Search Report and Written Opinion may be received before or after publication, depending on whether the search was completed in time for publication. The applicant should report these documents to the client and file an Information Disclosure Statement for any related cases.
This document discusses how to file a Patent Cooperation Treaty (PCT) application. There are two main ways to prepare the paperwork - using PDF forms or PCT-SAFE software. PCT-SAFE allows for either a fully electronic filing with electronic documents attached, or a PCT-EASY mode where some paperwork is filed on paper with an accompanying physical medium containing electronic files. The presentation will show the PDF forms, which include the application, specification formatted to A4 paper with line numbers, claims, drawings with sheet numbers, abstract with reference numerals, transmittal, request, fee transmittal, and optional declarations. The document provides guidance on completing each of these forms.
More from Woodard, Emhardt, Henry, Reeves & Wagner, LLP (20)