The Orange County Intellectual Property Law Association (OCIPLA) is currently accepting nominations for a first-year board member. To be considered, or to nominate a potential candidate, please email the OCIPLA Board of Directors at ocipla_board@ocipla.org. A non-profit organization founded in 1983, OCIPLA’s diverse membership includes intellectual property law practitioners, business... read more →
Nov
05
Sep
27
by Frederic M. Douglas and James E. Hawes This column highlights some of the more notable recent online notices, newsletters, and blogs dealing with IP prosecution issues. IPWatchdog – a patent law blog – IPwatchdog.com ▪ On May 24, 2020, Susan Russell and Paula Estrada de Martin posted an article... read more →
Sep
27
$5 Million Attorneys’ Fee Award Affirmed Because Government’s Litigation Position Not Substantially Justified In HITKANSUT LLC V. UNITED STATES, Appeal No. 19-1884, the Federal Circuit held that fee-shifting under 28 U.S.C. § 1498(a) turns on whether “the position of the United States was substantially justified.” The relevant inquiry is the government’s... read more →
Jun
06
Attorneys and Clients Behaving Badly – Deliberately Withheld Offer for Sale Is Inequitable Conduct In Gs Cleantech Corp. v. Adkins Energy LLC, Appeal No. 16-2231,withholding and obscuring evidence of a pre-critical date offer for sale rendered a patent unenforceable for inequitable conduct. On August 1, 2003, CleanTech sent Agri-Energy a... read more →
Jun
05
Cancellation of Patent Claims through Reexamination Insufficient to Mount Collateral Attack on Multimillion-Dollar Jury Verdict by Caitlin E. Olwell, Matthew George Hartman & Rubén H. Muñoz District Court, Reexamination Proceedings, Eastern District of Texas Mar. 02, 2020 Judge Gilstrap in the Eastern District of Texas has denied defendants’ motion to... read more →
Jun
05
by Frederic M. Douglas and James E. Hawes This column highlights some of the more notable recent online notices, newsletters, and blogs dealing with IP prosecution issues. Patently-O – a blog written by Dennis Crouch – www.patentlyo.com. ▪ On March 25, 2020, Professor Crouch discussed the combination of the transitional... read more →
Apr
06
Examiner Amendments Can Trigger Prosecution History Estoppel In Amgen, Inc. v. Amneal Pharms. LLC, Appeal No. 18-2414, the Federal Circuit held that an examiner amendment may give rise to prosecution history estoppel, even when the examiner suggests the amendment in the absence of a pending office action. Amgen sued multiple... read more →
Apr
06
USPTO Precedential Opinion Panel (POP) Addresses What Evidence Is Required to Establish That a Reference Qualifies as a “Printed Publication” at the Institution Stage by Melissa R. Gibson & C. Brandon Rash Patent Trial and Appeal Board, Inter Partes Review January 2, 2020 On December 20, 2019, the Precedential Opinion... read more →
Apr
06
by Frederic M. Douglas and James E. Hawes This column highlights some of the more notable recent online notices, newsletters, and blogs dealing with IP prosecution issues. Patently-O – a blog written by Dennis Crouch – www.patentlyo.com. ▪ On February 25, 2020, Professor Crouch discussed a Federal Circuit opinion, HZNP Finance... read more →
Feb
01
Patentee’s Lexicography Negates Infringement Despite Defendant’s Use of Claim Term in Product Literature In Plastic Omnium Advanced Innovation and Research v. Donghee America, Inc., Appeal No. 18-2087, the patentee’s lexicography of “parison” excluded the allegedly infringing product even though the alleged infringer’s product literature specifically described a “parison.” Plastic... read more →