Searching Content indexed under Trials & Appeals & Compensation by Marshall, Gerstein & Borun LLP ordered by Published Date Descending.
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"Music To Your Ears: Best Practices For Prosecuting Sound Mark Applications"
Over the past several decades, the registration of sound marks has become an increasingly valuable tool for brand owners. For example, the sound of MGM's famous lion roar imparts...
United States
11 Oct 2019
Federal Circuit Affirms Obviousness Decision By Board, Finds No APA Violation Based On New Characterization Of Passage Providing Motivation To Combine
In Smith & Nephew, Inc. v. Arthrocare Corp., Appeal No. IPR2016-00918 (Fed. Cir. Aug. 21, 2019), the Federal Circuit affirmed the Patent Trial and Appeal Board's decision in an IPR
United States
11 Sep 2019
"Five Years After Alice: Five Lessons Learned From The Treatment Of Software Patents In Litigation"
It has been five years since the Supreme Court's landmark decision in Alice Corp. v CLS Bank International. Alice established a two-part test to determine if a software patent
United States
10 Sep 2019
Federal Circuit Addresses Constitutional Issue Supreme Court Left Open
In consolidated appeals of a trio of Board decisions canceling pre-AIA patents in inter partes reviews (IPR), the Federal Circuit held "that the retroactive application of IPR proceedings to pre-AIA patents is not an...
United States
13 Aug 2019
Is The Written Description Requirement A Nose Of Wax?
In re Global IP Holdings LLC, Appeal 2018-1426 (Fed. Cir. July 5,2019), concerns patent law's written description requirement, under 35 USC § 112.
United States
22 Jul 2019
USPTO To Patent Owners – Don't Forget About Reexams And Reissues
Recently updated statistics from the USPTO provide little comfort for patent owners seeking to amend claims during an IPR proceeding.
United States
10 Jul 2019
Estoppel May Not Apply When Petitioner Lacks Standing To Appeal IPR Decision
In AVX Corp. v. Presidio Components, Inc., No. 2018-1106 (Fed. Cir. May. 13, 2019), the Federal Circuit determined that a manufacturer did not have standing to appeal an adverse decision
United States
17 Jun 2019
Three Indicators A Software Patent May Be Unenforceable
The U.S. patent system has always struggled with how to deal with software. Sometimes software patents were welcomed; sometimes they were not.
United States
6 Jun 2019
Estoppel May Arise After Trial
In an unusual fact situation, Judge Andrews of the U.S. District Court for the District of Delaware held that estoppel stemming ...
United States
28 May 2019
PTAB Judges Weigh In On Best Practices For Ex Parte Appeals
The PTAB Bar Association's Annual Conference in March included a panel of Administrative Patent Judges who offered commentary on best practices in ex parte appeals from original examination and reexaminations.
United States
1 May 2019
PTAB Must Consider All Grounds Raised In An Instituted Petition
In AC Technologies S.A. v., the Federal Circuit confirmed the PTO's interpretation of SAS Institute, Inc. v. Iancu, 138 S.Ct. 1348, 1355 (2018) ...
United States
4 Apr 2019
Have You Included Specific Reference To Every Document In Your Priority Claim?
Incorporation by reference is not sufficient to satisfy specific reference to each prior-filed patent application to be entitled to an earlier priority date
United States
29 Mar 2019
Patent Office Announces New Amendments Procedure For AIA Trials
The implemented program appears to address those concerns.
United States
28 Mar 2019
Newly Appointed Chief Judge Scott Boalick Addresses PTAB Bar Association
Addressing the PTAB Bar Association Conference in its opening session, newly appointed Chief Judge Scott Boalick explained that his goal ...
United States
26 Mar 2019
How The PTAB Reviews Software Inventions Under The 2019 Revised Subject Matter Eligibility Guidance
PTABWatch Takeaway: The United States Patent and Trademark Office (USPTO)'s 2019 Revised Patent Subject Matter Eligibility Guidance provides a useful, and effective,
United States
20 Mar 2019
What Qualifies As Prior Art?
This blog has previously reported on several PTAB and Federal Circuit decisions concerning what does and does not qualify as prior art:
United States
11 Mar 2019
Federal Circuit Invites Patent Office To Open Pandora's Box
The Office pointed to the drafting history of the petitioner estoppel provision to support its views.
United States
15 Feb 2019
"Supreme Court Decision Invites Confusion And Delay"
In Oil States Energy Services, LLC v. Greene's Energy Group, LLC, et al., Justice Thomas, writing for a 7-2 majority of the Supreme Court, explained that inter partes review proceedings do not violate Article III or...
United States
14 Feb 2019
"Hearsay & Authentication" From The PTAB Judges' Perspective
The PTAB recently hosted a Boardside Chat webinar on the topic of hearsay and authentication before the Board. The Administrative Patent Judges that presented were Michael Zecher, Tom Giannetti and Grace Obermann.
United States
5 Feb 2019
Supreme Court Confirms Secret Sales Can Invalidate Patents
On January 22, 2019, the Supreme Court issued a unanimous decision in Helsinn Healthcare S. A. v. Teva Pharmaceuticals USA, Inc., affirming the Federal Circuit's decision ...
United States
30 Jan 2019
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