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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.
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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.
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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 Cir., Sep. 9, 2016) (nonprecedential) (per curiam).
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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.
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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.
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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.
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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.
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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).
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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.
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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.
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USPTO Fast-Tracks Cancer Immunotherapy Patent Applications

July 8, 2016 | Blog | By Terri Shieh-Newton

Effective June 29, 2016, the United States Patent and Trademark Office (USPTO) implemented a pilot program to provide for earlier review of patent applications pertaining to cancer immunotherapy.
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Focusing on the Second Step of Alice, Federal Circuit Finds Inventive Concept in Software Patent in BASCOM

July 6, 2016 | Blog | By Andrew DeVoogd, Matthew Karambelas

Arming software-patentees with additional precedent in favor of eligibility for software patents post-Alice, the Federal Circuit on June 27, 2016 handed down its decision in BASCOM Global Internet Servs., Inc. v. AT&T Mobility LLC, et al., No. 2015-1763, 2016 U.S. App. LEXIS 11687 (Fed. Cir. June 27, 2016), vacating the lower court’s decision.
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IP For Start-Ups: Part V

July 5, 2016 | Blog | By Michael Van Loy

In our fifth "IP for Start-Ups” video, “Copyrights versus Patents to Protect Software Innovations”, Mike discusses the pros and cons of using copyrights or patents to protect your software.
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Fed Circuit's "Amgen v. Apotex" Decision: Clarification of a BPCIA Riddle (Unless, of course, the Supreme Court Steps In)

July 5, 2016 | Blog | By Thomas Wintner

On July 5, the Federal Circuit issued another important decision regarding the meaning of certain provisions of the Biologics Price Competition and Innovation Act (BPCIA).
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Pitfalls When Refiling a Priority Application under Article 4 of the Paris Convention

June 30, 2016 | Blog | By Terri Shieh-Newton

Patent applicants who have filed a priority application (such as a U.S. Provisional application) may wish to abandon and then refile that priority application to extend the time available for filing a utility application.
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Supreme Court Decides Two Key Aspects of IPR in Cuozzo Speed Techs., LLC v. Lee

June 30, 2016 | Blog | By Brad M Scheller, Gurneet Singh, Catherine Xu

The U.S. Supreme Court ruled on June 20, 2016 in Cuozzo Speed Techs., LLC v. Lee that: (1) the statutory authority of the Patent Trial and Appeal Board (“Board”) in instituting an inter partes review (“IPR”) proceeding is final and non-appealable, thereby not being subject to judicial review, and (2) it is appropriate for the Board to construe claims in an issued patent according to their broadest reasonable interpretation, rather than their plain and ordinary meaning as in district court litigation.
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District Court Judge Issues TRO and Preliminary Injunction Under the Defend Trade Secrets Act

June 28, 2016 | Blog | By Michael Renaud, Nick Armington

In some of the first decisions under the newly enacted Defend Trade Secrets Act, on June 10 and 22, 2016, United States District Judge Jon S. Tigar granted a temporary restraining order and preliminary injunction in Henry Schein, Inc. v. Cook, No. 16-cv-03166-JST (N.D. Cal. June 10, 2016) that prevents a sales consultant from accessing, using or sharing confidential data that she allegedly stole from her former employer before leaving the company in violation of trade secret laws and employment agreements.
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IP for Start-Ups: Part IV

June 28, 2016 | Blog | By Michael Van Loy

In our fourth "IP for Start-Ups" video, "Are U.S. Patents Good Outside of the USA?", Mike discusses how geography plays into patent protection, both inside the U.S. and internationally.
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Keep Calm and IP On: Planning for UK IP Post-Brexit

June 27, 2016 | Blog | By Michael Renaud, Brad M Scheller

This past Thursday the Brexit vote sent shockwaves around world, including the IP community and in particular with respect to IP rights in the UK and Europe. But concerns at the moment are speculative as nothing yet has changed.
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Federal Circuit Rules That “Same-Day Continuations” Are Proper

June 22, 2016 | Blog | By Brad M Scheller

The Federal Circuit yesterday issued a decision that will make many patent owners and IP practitioners breathe easier.  In Immersion Corp. v. HTC Corp. the Court reversed a district court holding that a continuation application filed on the same day that its parent application issued is not entitled to the parent priority date.
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