In a recent district court decision, Judge Stark (D. Del.) further clarified the scope of the rights derived from a Patent Term Extension (PTE) during the extension period. On January 7, 2020, Judge Stark granted a Rule 12(c) motion for judgment on the pleadings in Biogen Int’l GmbH v. Banner Life Sciences, dismissing Biogen’s complaint.[1] … Continue Reading
The Federal Circuit sent Google an early valentine on February 13, 2020, when it granted the petition for mandamus in In re Google, Case No. 19-126, directing that the Eastern District of Texas either dismiss Super Interconnect Technologies LLC’s (“SIT”) infringement action or transfer it under 28 U.S.C. § 1406(a). The court’s precedential opinion held that … Continue Reading
Following the Patent Trial and Appeal Board’s (PTAB) Precedential Opinion Panel’s selection of Hulu, LLC v. Sound View Innovations, LLC[1] as precedential, on January 23, 2020, the PTAB issued a non-precedential decision in Cisco Systems, Inc. v. Centripetal Networks, Inc.[2] In Cisco, the PTAB provided yet more discussion of criteria for determining whether a printed … Continue Reading
In a November 2019 blog post, Intel’s Executive Vice President and General Counsel Steven R. Rodgers announced Intel’s new diversity requirements.[1] “Beginning Jan. 1, 2021, Intel will not retain or use outside law firms in the U.S. that are average or below average on diversity.” Intel’s new “above-average” rule requires that firms doing work for … Continue Reading
In a recent ruling in Personal Audio, LLC v. CBS Corp., the Federal Circuit affirmed the District Court’s final judgment, which reversed a prior $1.3 Million jury verdict in Plaintiff’s favor. It found Personal Audio’s constitutional arguments raised in its appeal to the Federal Circuit were barred by its prior appeal of the US Patent … Continue Reading
On January 28, 2020, the US Federal Trade Commission will hold a public workshop on voice cloning technologies. As the federal agency charged with protecting consumers from fraudulent and deceptive marketing practices, the FTC workshop will review the potential misuse of voice cloning technologies as well as its benefits. The workshop will include three panel … Continue Reading
In a decision that will delight patent applicants, on December 11, 2019, the U.S. Supreme Court decided Peter v NantKwest, Inc.[1], holding that the US Patent and Trademark Office (USPTO) was not entitled to recover pro rata salaries for legal staff (in the context of the USPTO, attorney’s fees) as “expenses” in district court litigation. … Continue Reading
On November 25, 2019, the Patent Trial and Appeal Board (PTAB) of the United States Patent and Trademark Office (USPTO) affirmed an appeal from IBM that its invention fails to recite patent-eligible subject matter under 35 U.S.C. §101. U.S. Patent Application Number 15/212,216 claimed a method for mining threaded online discussions, where an information handling … Continue Reading
Although the U.S. Supreme Court recently denied certiorari in Acorda Therapeutics v. Roxane Laboratories, which sought review of the “blocking patent” doctrine, expecting the doctrine’s appearance in obviousness cases across all technologies is logical and will undoubtedly speed the development of the law on a number of unanswered questions. Partner David Manspeizer explains further in an … Continue Reading
Steven Auvil, partner and leader of our US IP litigation practice will serve as a moderator at IAM’s Patent Litigation: Navigating the Law and Policy Landscape in the U.S., on November 5th in Washington DC. Steven’s panel, “Navigating the US Litigation Climate” will discuss lessons IP owners can learn from this past year’s docket, the … Continue Reading
In its recently issued opinion in Automotive Body Parts Association v. Ford Global Technologies, LLC, the Federal Circuit reaffirms the importance of design patents and their value in an overall patent portfolio strategy for automotive manufacturers and others who may be threatened by aftermarket sales of replacement parts. It also provides guidance on the arguments … Continue Reading
While prosecuting a patent application before the USPTO, you receive a novelty or obviousness rejection in which the cited prior art seems very familiar… because it is your own reference. Is this proper? Can a US patent examiner use your own disclosures against you? Like many legal questions, the answer is “it depends.” When … Continue Reading
Squire Patton Boggs is thrilled that our outstanding IP team continues to be recognised for its expertise. Partner Ron Lemieux has recently been listed in the IAM Patent 1000 as one of the world’s leading patent professionals. Ron is based in our Palo Alto office and we are so pleased that his work and dedication … Continue Reading
The U.S. Supreme Court issued a 6-3 decision on June 10, 2019 holding that the Government was not a “person” capable of instituting one of the three AIA patent review proceeding described below. This holding overturned a prior decision by Court of Appeals for the Federal Circuit (Federal Circuit) in favor of the United States … Continue Reading
In VersaTop Support Sys., LLC v. Ga. Expo, Inc., 2019 U.S. App. LEXIS 11404 (Fed. Cir. Apr. 19, 2019), the Federal Circuit turned its eye to the Trademark Statute and reaffirmed that the cornerstone of an infringement action under the Lanham Act – with or without “use in commerce” as that term is defined in … Continue Reading
The Supreme Court’s decision today in Mission Product Holdings, Inc. v. Tempnology LLC resolved longstanding uncertainty at the intersection of trademark and bankruptcy law. In particular, the Court determined whether the rejection of a trademark license in a bankruptcy case deprives the trademark licensee of its rights under the license for which it had likely … Continue Reading
On April 22, 2019, the US Patent and Trademark Office (“USPTO”) published a notice in the Federal Register regarding the existing options available for Patent Owners to amend their patents during or after an America Invents Act (“AIA”) challenge proceeding. This notice did not amend or alter existing USPTO practices, but instead summarized and clarified … Continue Reading
The theme for this year is “Reach for Gold: IP and Sports.” Accordingly, the Global Intellectual Property & Technology Blog would like to acknowledge the contributions of all innovators and creators involved in sports, as well as the commitment of the professionals who help secure and enforce their intellectual property and resolve intellectual property issues. … Continue Reading
On April 9, 2019, my IP colleagues Kerry Lee and Matt Jones published an informative post about using the ® and ™ trademark symbols – which are internationally used and recognized to signal trademark registration. As their post had a UK perspective, we thought it would be useful to provide a US perspective as well. … Continue Reading
The Copyright Act often seems to lag behind technology, with infringements rampant on the Wild Internet. Not so, as was evidenced by the robust discussions at the third public meeting on Developing the Digital Marketplace for Copyrighted Works, hosted by the US Department of Commerce’s Internet Policy Task Force on March 28, 2019. The Internet … Continue Reading
In post-patent issuance proceedings before the US Patent and Trademark Office (USPTO) – inter partes review (IPR), covered business method (CBM), and post-grant review (PGR) – parties almost invariably submit expert testimony. Depending on the type of post-issuance proceeding, the testimony can relate to prior art, claim construction, patent-eligibility, or formal requirements for patentability including … Continue Reading
The best preparation for diligence begins well in advance of any discussions with companies interested in investing in or purchasing assets of the innovating company. Ideally, the innovating company should implement policies and practices from day one of the company to help avoid problems that will inexorably come to light under the scrutiny of diligence. … Continue Reading
ArsTechnica published an excellent piece on how the United States’ “broken” patent system permitted Theranos to obtain hundreds of patents for technology that did not work and did not meet the “enablement” requirement of 35 U.S.C. section 112. According to author Daniel Nazer, the USPTO did virtually nothing to ensure that Theranos’ technology had been … Continue Reading
