Todd Ostomel

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New ITC 337 Investigation Powered by Battery Design Patents

Monday’s announcement of the institution of a section 337 investigation of Certain Batteries and Products Containing the Same, 337-TA-1244, is notable as the first time in recent memory that a battery company has sued in the US International Trade Commission (ITC) for design patent infringement. Battery patents typically cover new and useful features of a … Continue Reading

Beware! Inventors Include Those Who Significantly Contributed to a Claimed Invention – Even if their Contribution is Not Recited in the Claim

In the U.S., patent ownership vests with inventors, and each inventor can exploit their rights without accounting to the other. Neglecting to identify the true inventors of a claimed invention, and obtain assignments of their rights, can create chaos. This is what happened in Dana-Farber Cancer Institute, Inc. v. Ono Pharmaceutical (Fed. Circ., 2020), where … Continue Reading

Squire Patton Boggs Celebrates World IP Day

Today is World IP Day, a day established by the World Intellectual Property Organization (WIPO) to “learn about the role that intellectual property (IP) rights play in encouraging innovation and creativity.” The theme for 2020 is “Innovation for a Green Future,” and WIPO’s website and magazine contemplate how various IP regimes matter for addressing climate … Continue Reading

Are You Protecting All of Your Company’s IP?

Running a start-up requires addressing big challenges with limited resources. Protecting the company’s intellectual property (IP) is one of the most important. Does your company have a system in place to encourage communication between the employees who generate patentable inventions and trade secrets, and those tasked with protecting them? A company benefits when the employees … Continue Reading

Providing Scientific Information in Patents after Nautilus

Scientific information—features of an invention that are known through physical analysis—often provides the foundation for patent claims.  But providing such information can also risk the validity of a patent if it is not clearly explained in the patent.  Since the Supreme Court’s 2014 decision in Nautilus, Inc. v. Biosig Instruments, Inc. heightened the patent law … Continue Reading

PRIOR ART SEARCHING BEFORE PATENT FILING CAN SAVE BOTH TIME AND MONEY – Judicious Budgeting Decisions for Patent Portfolio Owners

Since US patent law switched from a first-to-invent­ to first-to-file system, some patent applicants have been racing to the PTO, concerned that a competitor might first file an application potentially covering the same invention. In their haste, these patent applicants may file quickly-prepared provisional applications that adequately describe the invention but that fail to articulate … Continue Reading

BASF Wins Big in Battery Battle

Electric vehicles (EV) will soon get a boost in power and energy due to a relatively new cathode material known colloquially as NMC for its nickel-manganese-cobalt oxide chemistry. Battery experts predict NMC will, in the immediate future, replace the currently commercially used cobalt oxides and nickel-cobalt-aluminum oxides in EV and many other electronic applications. While … Continue Reading

The Federal Circuit Clarifies When Claim Scope is Disavowed

The claims of an issued patent describe the metes-and-bounds of the invention. However, that depends on the court’s interpretation, i.e., construction, of the claimed terms. Statements made by an inventor in her patent application, or those made during prosecution, may be deemed during claim construction to have disavowed subject matter which an inventor thought was … Continue Reading

Valuable but Unpatentable

As set forth in Article I, §8 of the US Constitution, patent law is a utilitarian system designed “[t]o promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries.”  Yet, today valuable life sciences patents are being invalidated by … Continue Reading
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