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
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 →
Feb
01
Patent Owner Precluded from Asserting in Litigation Claims Obtained Through Ex Parte Reexamination by Matthew George Hartman & Rubén H. Muñoz District Court, Infringement, Inter Partes Review, Northern District of California October 21, 2019 A district court has denied a request to amend patent infringement contentions to add claims obtained... read more →
Feb
01
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 January 3, 2020, a post by Gene Quinn announced that the USPTO has now... read more →
Sep
30
Contributors: Knobbe Martens Mere Potential for Future Appeal Does Not Prevent Triggering Estoppel of Inter Partes Reexamination When Party Fails to Seek Relief in the First Instance In Virnetx Inc. v. Apple Inc., Appeal Nos. 2017-1591, -1592, -1593, the Federal Circuit determined that failure to petition for certiorari on the... read more →
Sep
30
Contributors: Akin Gump Judge Gilstrap Issues Standing Order Governing Subject Matter Eligibility Contentions by Jason Weil & Charles Everingham IV Patent Trial and Appeal Board, 35 U.S.C. § 102, 35 U.S.C. § 103, Eastern District of Texas For nearly two decades, the Eastern District of Texas has been a hotbed... read more →
Sep
30
Internet Sightings 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 August 30, 2019, a post discussed the Federal Circuit opinion relating to... read more →
Sep
02
Metadata Could Help Independently Corroborate Inventor Testimony of Prior Conception In Kolcraft Enterprises, Inc. v. Graco Children’s Products, Inc., Appeal Nos. 2018-1259, 2018-1260, inventor testimony of prior conception must be independently corroborated. Kolcraft owns two design patents directed to children’s play equipment. Graco petitioned for inter partes review challenging both... read more →
Sep
02
Contributors: Akin Gump PTAB: Informal Delivery of Complaint Does Not Start One-Year Clock for Filing IPR by Matthew George Hartman & Rubén H. Muñoz Patent Trial and Appeal Board, 35 U.S.C. § 315(b), Inter Partes Review. A Patent Trial and Appeal Board (PTAB or Board) panel has determined that emailing... read more →