Supreme Court Rejects USPTO's Attempt to Recover Attorney's Fees in All District Court "Appeals" from PTAB Decisions -
In Peter v. NantKwest, Inc., decided by the U.S. Supreme Court, the Court considered whether the U.S....more
A patent applicant dissatisfied with a decision by the USPTO’s Patent Trial and Appeal Board (“PTAB”) has two options for review of that decision. Most commonly—by far—the applicant can appeal the decision to the U.S. Court...more
When post-grant proceedings under the America Invents Act began, the USPTO's Patent Trial and Appeals Board ("PTAB") treated motions to amend in those proceedings like most other motions: the movant, here the patentee, bore...more
On the first day of the 2019-20 term, the Supreme Court heard oral argument in Peter v. NantKwest, Inc., a case raising the question of whether a patent applicant should be responsible to pay all of the PTO's attorneys' fees...more
The sponsors of the STRONGER Patents Act of 2019 -- introduced to the Senate on July 10, 2019 -- may be from both political parties, but they share one clear trait: they hate what post-grant proceedings have done to patent...more
Although patentees generally do not have great concerns about the Freedom of Information Act (FOIA) because of the U.S. Patent and Trademark Office's secrecy requirements, they may lose control over their information under...more
7/5/2019
/ Appeals ,
Confidential Information ,
Congressional Intent ,
Exemptions ,
FOIA ,
Food Marketing Institute v Argus Leader Media ,
Motion to Compel ,
Private Commercial or Financial Information ,
Protected Disclosures ,
Reversal ,
SCOTUS ,
SNAP Program ,
Statutory Interpretation ,
Substantial-Competitive-Harm Test ,
Trade Secrets ,
USDA
Every patent must include a written description of the invention sufficient to enable a person of ordinary skill in the art to make and use the invention. A broadening reissue under 35 U.S.C. § 251 must meet a more exacting...more
In this case, the question ultimately answered by the Federal Circuit was a straightforward question of statutory interpretation: in determining whether a party is time-barred from filing a petition for inter partes review...more
In a 6-3 decision, the Supreme Court today held that federal government agencies cannot avail themselves of America Invents Act (AIA) post-grant proceedings. This decision was based on the Court's determination that the...more
In a 6-3 decision rendered earlier on June 10, 2019, the Supreme Court decided that federal agencies are not “persons” who can petition for post-issuance review of patents under the America Invents Act (AIA). Thus, the...more
Parties often push experts to testify outside their area of expertise and leave it up to the expert to push back when uncomfortable. If the expert fails to do so, a party's aggressiveness may come back to haunt it before the...more
AVX Corporation and Presidio Components are long-standing competitors in the market for electronic components, including capacitors. Their competition has caused animosity, which in turn has resulted in patent infringement...more
Employers have a number of tools they can use to protect against their employees walking off with trade secrets; among them, restrictive covenants or non-compete agreements can be extremely powerful. Such agreements avoid the...more
On the same day that the Supreme Court decided what the term "full costs" means under the Copyright Act, it granted certiorari to consider what "all the expenses of [a district court review] proceeding" means under the Patent...more
Earlier today, February 19, 2019, the Supreme Court heard oral argument in Return Mail, Inc. v. U.S. Postal Service, which presented the simple question whether the federal government is a "person" entitled to petition for...more
In AIA post-grant proceedings -- specifically, Post-Grant Review ("PGR"), Inter Partes Review ("IPR"), and Covered Business Method ("CBM") review -- the patentee has the right to seek to amend the claims rather than fight...more
On Friday, October 26, 2018, the Supreme Court granted certiorari in Return Mail, Inc. v. U.S. Postal Service, in order to answer the question whether the government can bring post-grant review proceedings under the...more
Under a new PTO administrative rule published today, October 11, 2018, the PTAB will apply the same claim construction standards in IPRs, PGRs, and CBMs filed on November 13, 2018 or later as would apply in litigation. 83...more
En Banc Federal Circuit Finds § 145 Appellants Generally Will Not Be Liable for Patent Office's Attorneys' Fee -
The Federal Circuit handed down its en banc decision on Friday regarding the question of whether under 35...more
Intelligent Machines - Engines of Intellectual Property Creation? -
Recently, artificial intelligence (AI) has become an increasing part of our daily lives. Many of us utilize virtual assistants such as Apple’s Siri and...more
Two cases this year have demonstrated that, although trade secret protections have become better aligned with protecting high tech trade secrets, there is still a long way to go. First, in Waymo v. Uber, the hard-fought...more
As the saying goes, hard cases make bad law. And it certainly looked improper when Sergey Aleynikov downloaded high-frequency trading ("HFT") source code as he was leaving his job as a Goldman Sachs programmer, at least to...more
On April 17th, the American Bar Association provided a formal opinion regarding the requirement that attorneys disclose errors to clients. Its opinion was based on Rule 1.4 of the Model Rules of Professional Conduct, which...more
In reversing an appellate court decision that had caused concerns throughout the patent world, the Texas Supreme Court recognized that communications between patent agents and clients could be covered by the attorney-client...more
Earlier on November 7, 2017, the U.S. Patent and Trademark Office's Patent Trial and Appeal Board ("PTAB") published its Final Rule establishing the attorney-client privilege for application in PTAB proceedings. Before the...more