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PTAB Persistence Doesn’t Always Pay

December, 12th, 2017

By Benjamin N. Luehrs In a recent precedential opinion, the PTAB adopted a seven-factor test for determining whether to institute a “follow-on” IPR petition.[1] Follow-on petitions seek to invalidate the same claims as a previous IPR [Read More…]

Amending Burdens: Federal Circuit Changes Law so IPR Petitioners Must Prove Amended Claims Unpatentable

November, 22nd, 2017

By Robert D. Keeler Inter partes review (“IPR”) proceedings are infamous for their high patent invalidation rate. To protect against wholesale patent loss, Congress gave Patent Owners the right to make narrowing amendments to any challenged [Read More…]

CAFC Seemingly Expands Inequitable Conduct to Litigators

November, 14th, 2017

By Christopher J. Stankus Patent prosecution attorneys are well aware of their duty of candor to the PTO. However, in Regeneron Pharmaceuticals, Inc. v. Merus N.V., No. 2016-1346 (Fed. Cir. July 27, 2017), the Federal Circuit [Read More…]

Korean Trademark Rights Melt at the TTAB

October, 31st, 2017

By Chelsea A. Russell In the digital age, it is commonplace for consumers to be familiar with companies and products not for sale in their country. The internet has created a market in which companies [Read More…]

Federal Circuit Again Considers Whether Preamble Limits Scope of Patent Claim

August, 29th, 2017

By Patrick D. Duplessis In the recent holding in Georgetown Rail v. Holland (Fed. Cir. August 1, 2017), the Federal Circuit again addressed the question of whether a patent claim preamble is limiting. A patent [Read More…]

Earnhardt Family Races Through Federal Circuit Over Surname

August, 8th, 2017

By Christopher J. Stankus On July 27, 2017, the Federal Circuit vacated and remanded for reconsideration the TTAB’s finding that the mark EARNHARDT COLLECTION is not primarily merely a surname because it was unclear whether [Read More…]

Supreme Court Rules Disparagement Refusals Unconstitutional—Will Scandalous Refusals Be Next?

July, 14th, 2017

By Chelsea A. Russell On June 19, 2017, the Supreme Court expanded trademark protection in its much-awaited ruling of Matel v. Tam, 582 US ___ (2017). The Lanham Act has long held that a trademark [Read More…]

The Great Chemical Divide: Federal Circuit Suggests the Insubstantial Differences Test for Evaluating Equivalence in Chemical Patent Cases

July, 14th, 2017

By Mackenzie L. Long In 1950 the Supreme Court outlined the two tests for evaluating the doctrine of equivalents in the case, Graver Tank & Mfg. Co. v. Linde Air Products Co., 339 U.S. 605, [Read More…]

Can’t Avoid Infringement Liability For Overseas Deliveries Merely By Off-Shoring Manufacturing

June, 13th, 2017

By Wesley W. Whitmyer, Jr. In denying a motion for partial summary judgment that no reasonable jury could find “sales within the United States” based on Defendant’s products that are “ordered, manufactured, shipped, billed, and [Read More…]

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