Awaiting and Anticipating Bilski

John A. Squires and Duane R. Valz — Thu, 18 Mar 2010 15:17:47 GMT

In this Analysis, John A. Squires and Duane R. Valz, both of Chadbourne & Parke LLP, attempt to surface the key issues in anticipation of the Supreme Court's imminent decision on

35 U.S.C. 135--Gateway to Priority and Derivation Determinations by the BPAI

W. Todd Baker — Tue, 09 Mar 2010 11:55:16 GMT

Priority and derivation cases at the US Patent and Trademark Office (PTO) offer many advantages over counterpart district court actions. However, 35 USCS § 135

When Can APJs Use Their Common Sense In Inter Partes Proceedings?

Charles Gholz — Tue, 09 Mar 2010 11:27:13 GMT

Brand v. Miller, 487 F.3d 862 (Fed. Cir. 2007) sharply limited the ability of the APJs to rely on their own technical expertise in deciding interferences. Two panels of APJs have react

Could the ATJs Learn Something From the APJs Concerning Handling Fraud Issues?

Charles Gholz — Tue, 09 Mar 2010 11:20:13 GMT

In re Bose Corp., 580 F.3d 1240 (Fed. Cir. 2009) overruled the Trademark Trial and Appeal Board’s (TTAB) opinion in In this Emerging Issues commentary, Stephen G. Kunin, Scott A. McKeown, W. Todd Baker and Vincent K. Shier answer questions about Ex Parte Reexamination and Inter Partes Reexamination. They've also included a table of relevant cases in this area of law. They write:

"Patent reexamination is a procedure by which a post grant review of an issued U.S. Patent is perf

Wyeth v. Kappos: The New Calculation for Patent Term Adjustment

Brian R. Dorn and Katherine M. Kowalchyk — Mon, 01 Mar 2010 10:37:17 GMT

In this Emerging Issues commentary, Dr. Brian Dorn and Dr. Katherine M. Kowalchyk of Merchant & Gould, P.C. discuss the decision of the US Court of Appeals for the Federal Circuit in The Federal Circuit held in Forest Group, Inc. v. Bon Tool Co., 2009 U.S. App. LEXIS 28380 (Fed. Cir. Dec. 28, 2009)<

Bensen on In re TS Tech USA Corp.: Motions to Transfer Venue in Patent Cases

Eric E Bensen — Mon, 25 Jan 2010 22:35:37 GMT

In re TS Tech United States Corp., 551 F.3d 1315 (Fed. Cir. 2008) opened the door for patent infringement defendant

Compensatory Damages Issues in Patent Infringement Cases: A Handbook for Federal District Court Judges

Patent Damages Handbook Committee Members — Mon, 25 Jan 2010 16:28:10 GMT

Chief Judge Paul R. Michel of the United States Court of Appeals for the Federal Circuit asked the Patent Damages Handbook Committee Members to develop a handbook for trial courts to consult when deciding issues of compensatory damages in patent infringement cases. The goal was to create a handbook, national in scope, with members from the bench, bar and academia, including in-house counsel from a variety of industries, and p

Sung on Standards Relaxation for Declaratory Judgment Jurisdiction for Patents

Lawrence M. Sung, Ph.D. — Mon, 18 Jan 2010 09:40:17 GMT

A declaratory judgment action may be brought where there is an actual controversy between interested parties. MedImmune, Inc. v. Genentech, Inc.,

Sung on the What's Not Indefinite Under 35 U.S.C. Sec. 112

Lawrence M. Sung, Ph.D. — Mon, 18 Jan 2010 09:29:41 GMT

A determination that a patent claim is invalid for failure to meet the definiteness requirement of 35 USCS § 11228 USCS § 1498 limits a patent owner to recourse only from the U.S. government and restricts the patent infringeme

Sung on the Perils of Claim Term Interchangeability: Edwards Lifesciences LLC

Lawrence M. Sung, Ph.D. — Wed, 13 Jan 2010 14:30:33 GMT

Patent infringement litigation depends heavily on the interpretation of the meaning of the terms used in the patent claims at issue. Indeed, it is against the trial court's proper claim construction that the fact finder weighs the accused product or process. In this Analysis, Lawrence Sung addresses In In re Bilski, 545 F.3d 943 (Fed. Cir. 2008) (en banc), the Federal Circuit h

Can You Contract with Independent Fact Witness Not to Speak to Opposing Counsel

Charles L. Gholz and Bryan L. Byerly — Wed, 13 Jan 2010 09:54:37 GMT

In this Analysis, Charles L. Gholz and Bryan L. Byerly address the following question: Whether or not you are going to represent an independent fact witness at his or her deposition, can you put him or her under a contract that provides that he or she will not talk to opposing counsel except at the deposition? They write:

In a case of first impression, the Federal Circuit held in Stanford University v. Roche Molecular Systems
Gholz on How Should "Copied" Claims Be Interpreted

Charles Gholz — Mon, 11 Jan 2010 16:21:54 GMT

How should copied claims be interpreted? Robertson v. Timmermans, 90 U.S.P.Q.2D (BNA) 1898

The Board Must Afford Interferents Due Process

Charles Gholz and Robert Nissen — Mon, 11 Jan 2010 10:44:52 GMT

Enzo Therapeutics v. Yeda Research & Dev. Co., 477 F. Supp. 2d 699 (E.D. Va. 2007) is a

Sung on Patent Unenforceability Due to Inequitable Conduct: AstraZeneca Pharm. LP v. Teva Pharm. USA, 2009 U.S. App. LEXIS 21165 (Fed. Cir. Sept. 25, 2009)

Lawrence M. Sung, Ph.D. — Tue, 29 Dec 2009 11:32:56 GMT

In this Emerging Issues Analysis, Lawrence Sung of Dewey & LeBoeuf LLP and the University of Maryland School of Law reports that the patent infringement defense of patent unenforceability due to inequitable conduct has seen a steady resurgence in recent years. While various legislative proposals aimed at stemming the rising tide of inequitable conduct allegations have been considered, none are presently pending. The courts have o

Aristocrat v. IGT: Another Reason Why Provoking An Interference May Be Preferable To Defending An Infringement Action

Charles Gholz — Mon, 14 Dec 2009 15:39:03 GMT

Members of the interference bar have been telling their clients that, in many situations, provoking an interference is preferable to defending an infringement action. Among the arguments that they have used are that interferences are likely to be far less expensive, faster, and decided in a more rational fashion. In this Analysis, Charles Gholz examines Normally, it is the movant that asks to have one or more of its authorized substantive motions designated as a threshold motion. The assumption is if you do not win on at least one of the threshold motions, the interference will consider the parties' other authorized substantive motions. However, a panel consisting of SAPJ McKelvey and APJs Torczon and Lane held that that is not the case. In this Analysis, Charles Gholz exami

Intellectual Property Issues in Bankruptcy

Rosenzweig, Barrack, Boland, Fox — Mon, 07 Dec 2009 14:48:28 GMT

The bankruptcy of a party to an intellectual property license agreement triggers the Bankruptcy Code’s provisions concerning the debtor’s rights to assume, assume and assign, or reject an executory contract. To rehabilitate a debtor and maximize value to creditors, the bankruptcy court will seek to enlarge the pool of assets available to creditors, including intellectual properties, which may conflict with the pol

DOJ Is Serious About Antitrust: Payments in Patent Settlements May Be Unlawful

Mitchell, Perloff, Kruse, Anderson, Pakalka — Mon, 07 Dec 2009 14:44:32 GMT

The DOJ recently argued that the "reverse payment" settlements of patent litigation should be considered presumptively unlawful under federal antitrust laws. In a reverse payment, the plaintiff patent holder pays the defendant generic manufacturer for its agreement to honor the disputed patent and leave, or delay entry into, the relevant market. In this Analysis, Ben Mitchell, Saul Perloff, Layne Kruse, Darryl Ander

Reexaminations--Fertile Ground in the Changing Landscape of Patent Law

Tannenbaum, Viguet, Kelton, Rees — Mon, 07 Dec 2009 14:41:36 GMT

Traditionally, patent allowance rates in the USPTO have been in the high 60 percent range to over 70 percent. However, in recent years, there has been a sharp and continued decline. Defendants and potential defendants are well aware of the USPTO’s low patent allowance rate and are increasingly using reexamination as a tool in their defensive arsenal in addition to, or in lieu of, claiming patent invalidity in court. In

Is Plausible Enough After Brand v. Miller?

Charles L. Gholz and Stephen J. Joncus — Mon, 07 Dec 2009 13:24:37 GMT

It is a bedrock principle of law that the party that has the burdens of proof and persuasion loses if it does not carry its burdens. It is an equally bedrock principle that it does not take much more than one’s opponent puts in to carry that burden if it is merely the preponderance of the evidence. But how do these two principles play out in the context of a patent interference after In a contested case, including an interference, a party may be represented by counsel. Pursuant to 37 CFR 41.108

Is 37 CFR 41.127(a) Valid Under Tafas v. Dudas?

Charles L. Gholz and Kenneth E. Wilcox — Fri, 04 Dec 2009 14:38:43 GMT

Does the fact that 37 CFR 41.127(a), which defines interference estoppel, adversely a

Interference Issues That Would Not Be Handled By The Proposed Legislation 2007 H.R. 1908

Charles Gholz — Fri, 04 Dec 2009 12:48:19 GMT

In 1990, Charles L. Gholz published an article entitled "How the United States Currently Handles Interference Issues That Wi

Interference Estoppel Is Worse Than Issue Preclusion

Charles L. Gholz and Kenneth E. Wilcox — Fri, 04 Dec 2009 12:44:03 GMT

Many readers may assume that interference estoppel is just a synonym for issue preclusion, used in interference practice because of the interference bar’s penchant for using arcane and obsolete terminology. It is not. Interference estoppel is actually much worse (in the sense of precluding doing more things) than issue preclusion. In this Analysis, Charles L. Gholz and Kenneth D. Wilcox discuss interference estoppel and

Settling A 35 USC 146 Action

Charles L. Gholz and Robert Tarcu — Fri, 04 Dec 2009 12:41:42 GMT

In this Analysis, Charles L. Gohlz and Robert Tarcu discuss settling a 35 USC 146One often hears that unless it is within the scope of the count, it does not count -- the antecedent of “it” being evidence offered to prove a conception, classical diligence, Peeler diligence, an actual reduction to practice, or a constructive reduction to practice. However, this has never been literally true. In this Analysis, Charles Gholz and Daniel Pereira explore this issue. They write:

What To Do If The Target Patent Has Expired

Charles L. Gholz and Alexander E. Gasser — Mon, 30 Nov 2009 16:13:30 GMT

Suppose that you are considering suggesting an interference with a patent that is within its six-month grace period or that has expired pursuant to 35 USC 41(b)

What Excuses for Inactivity During Classical Diligence Period Are or Not Good?

Charles L. Gholz and Kenneth E. Wilcox — Mon, 30 Nov 2009 15:52:32 GMT

Classical diligence is reasonable diligence from just prior to one’s opponent’s entry into the field to one’s own subsequent reduction to practice, either actual or constructive. It means working hard at or close to full time. However, no inventive entity works 24 hours/day, and frequently, there are gaps of several days or weeks in the activity. Some of those gaps are excusable and some are not. In this Ana

35 U.S.C. 135--Gateway to Priority and Derivation Determinations by the BPAI

When Can APJs Use Their Common Sense In Inter Partes Proceedings?

Could the ATJs Learn Something From the APJs Concerning Handling Fraud Issues?

Wyeth v. Kappos: The New Calculation for Patent Term Adjustment

Bensen on In re TS Tech USA Corp.: Motions to Transfer Venue in Patent Cases

Compensatory Damages Issues in Patent Infringement Cases: A Handbook for Federal District Court Judges

Sung on Standards Relaxation for Declaratory Judgment Jurisdiction for Patents

Sung on the What's Not Indefinite Under 35 U.S.C. Sec. 112

Sung on the Perils of Claim Term Interchangeability: Edwards Lifesciences LLC

Can You Contract with Independent Fact Witness Not to Speak to Opposing Counsel

Gholz on How Should "Copied" Claims Be Interpreted

The Board Must Afford Interferents Due Process

Sung on Patent Unenforceability Due to Inequitable Conduct: AstraZeneca Pharm. LP v. Teva Pharm. USA, 2009 U.S. App. LEXIS 21165 (Fed. Cir. Sept. 25, 2009)

Aristocrat v. IGT: Another Reason Why Provoking An Interference May Be Preferable To Defending An Infringement Action

Intellectual Property Issues in Bankruptcy

DOJ Is Serious About Antitrust: Payments in Patent Settlements May Be Unlawful

Reexaminations--Fertile Ground in the Changing Landscape of Patent Law

Is Plausible Enough After Brand v. Miller?

Is 37 CFR 41.127(a) Valid Under Tafas v. Dudas?

Interference Issues That Would Not Be Handled By The Proposed Legislation 2007 H.R. 1908

Interference Estoppel Is Worse Than Issue Preclusion

Settling A 35 USC 146 Action

What To Do If The Target Patent Has Expired

What Excuses for Inactivity During Classical Diligence Period Are or Not Good?

LexisNexis Patent Law: Patent Law

Improving the Effectiveness of the U.S.P.T.O: Recommendations for Reform

Axford and Sun on Wyeth v. Kappos and the ABCs of Patent Term Adjustment

Awaiting and Anticipating Bilski