Insights

BSKB’s intellectual property attorneys write articles on important and timely topics in intellectual property law across a variety of industries. You’ll find the latest articles and industry insights here.

  • July 24, 2020

    Washington, D.C. NFL Team Loses Race to the Trademark Office: Does it Matter?

    by Michael. T Smith | IPWatchDog

    In surveys throughout the Washington, D.C. metro area, three possible replacement names have emerged as favorites among the fans: Warriors, Red Wolves, and Redtails. Armed with the knowledge of the name change and the relative popularity of the possible replacement names, two enterprising individuals have applied to obtain a federal trademark registration for the marks WARRIORS, WASHINGTON RED WOLVES, and WASHINGTON REDTAILS, respectively. Neither applicant appears to be connected to the owners of the Washington D.C. professional football team.

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  • July 10, 2020

    Could good intentions lead to future danger?

    by MaryAnne Armstrong, Ph.D. | LSIPR

    MaryAnne Armstrong, Ph.D. discusses the potential risks to IP rights with open-access to technology, medicines and devices in the fight against COVID-19 in the latest issue of LSIPR.

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  • July 1, 2020

    BSKB ASSISTS CLIENT IN SUCCESSFUL IPR CHALLENGES TO BIOPHARMACEUTICAL PATENTS FOR TREATING POMPE DISEASE

    by Gerald M. Murphy, Jr. | BSKB News

    BSKB assists client in successful IPR Challenges to Biopharmaceutical Patents for Treating Pompe Disease

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  • May 11, 2020

    The Importance of Correctly Identifying Goods and Services

    by Michael T. Smith | World IP Review

    Trademark rights are acquired through use of a mark in commerce. Applicants must correctly identify

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  • April 28, 2020

    Indefinite claims at the PTAB

    by Chad M. Rink and Hailey R. Bureau, Ph.D. | World Intellectual Property Review

    Chad Rink and Hailey Bureau, Ph.D. talk about indefinite claims at the PTAB and alternative routes in WIPR- Issue 1.

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  • February 12, 2020

    The relative stability of trpzip1 and its mutants determined by computation and experiment

    by Hailey R. Bureau, Stephen Quirk and Rigoberto Hernandez | RSC Advances

    Six mutants of the tryptophan zipper peptide trpzip1 have been computationally and experimentally characterized. We determine the varying roles in secondary structure stability of specific residues through a mutation assay. Four of the mutations directly effect the Trp–Trp interactions and two of the mutations target the salt bridge between Glu5 and Lys8. CD spectra and thermal unfolding are used to determine the secondary structure and stability of the mutants compared to the wildtype peptide. Adaptive steered molecular dynamics has been used to obtain the energetics of the unfolding pathways of the mutations. The hydrogen bonding patterns and side-chain interactions over the course of unfolding have also been calculated and compared to wildtype trpzip1. The key finding from this work is the importance of a stabilizing non-native salt bridge pair present in the K8L mutation.

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  • May 20, 2019

    Antibody patents: Danger ahead for biologics

    by John H. Heithaus and Gerald M. Murphy | Life Science IP Review

    John Heithaus and Gerald Murphy discuss the evolution of antibody written description standards at the USPTO.  Read more of their article featured in Life Science IP Review.

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  • September 30, 2018

    Overcoming patent rejection

    by MaryAnne Armstrong, P.h. D & Hailey Bureau P.h. D | WIPR

    The USPTO's interpretations of four Federal Circuit decisions can be summarized into three key points that help with overcoming rejections under 35 USC § 101, as MaryAnne Armstrong and Hailey Bureau of Birch, Stewart, Kolasch & Birch explain.

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  • July 2, 2018

    Case Law as a Guide to Trademark Ownership, Licensing and Enforcement

    by Michael T. Smith | World Trademark Review

    Under common law, ownership is conferred through first use of a trademark– including use by a licensee. Recent case law can help to determine which party has the right to enforce the licensed mark where an infringement suit arises.

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  • March 5, 2018

    Case Law Shines a Light on Internet Evidence at Motion to Dismiss Stage

    by Lynde F. Herzbach | World Trademark Review

    Assessing the relevance of internet evidence can be a daunting task for rights holders. However, if submitted accurately at the earliest stages, such evidence may sway infringement proceedings.

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  • March 5, 2018

    The Importance of Correctly Identifying Goods and Services

    by Michael T. Smith | World Trademark Review

    Trademark rights are acquired through use of a mark in commerce. Applicants must correctly identify the goods and services with which their mark is intended for registration or risk refusal or cancellation.

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  • February 21, 2018

    Mutational Analysis of Neuropeptide Y Reveals Unusual Thermal Stability Linked to Higher-Order Self-Association

    by Hailey Bureau, Stephen Quirk, Mandi M. Hopkins, Ryan J. Lusk, Caley Allen, Rigoberto Hernandez and David L. Bain | ACS Omega

    Neuropeptide Y (NPY) is a 36-residue peptide, abundant in the central and peripheral nervous system. The peptide interacts with membrane-bound receptors to control processes such as food intake, vasoconstriction, and memory retention. The N-terminal polyproline sequence of NPY folds back onto a C-terminal α-helix to form a hairpin structure. The hairpin undergoes transient unfolding to allow the monomer to interact with its target membranes and receptors and to form reversible dimers in solution. Using computational, functional, and biophysical approaches, we characterized the role of two conserved tyrosines (Y20 and Y27) located within the hydrophobic core of the hairpin fold. Successive mutation of the tyrosines to more hydrophobic phenylalanines increased the thermal stability of NPY and reduced functional activity, consistent with computational studies predicting a more stable hairpin structure. However, mutant stability was high relative to wild-type: melting temperatures increased by approximately 20 °C for the single mutants (Y20F and Y27F) and by 30 °C for the double mutant (Y20F + Y27F). These findings suggested that the mutations were not just simply enhancing hairpin structure stability, but might also be driving self-association to dimer. Using analytical ultracentrifugation, we determined that the mutations indeed increased self-association, but shifted the equilibrium toward hexamer-like species. Notably, these latter species were not unique to the NPY mutants, but were found to preexist at low levels in the wild-type population. Collectively, the findings indicate that NPY self-association is more complex than previously recognized and that the ensemble of NPY quaternary states is tunable by modulating hairpin hydrophobicity.

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  • February 8, 2018

    Prior Art Takes New Shapes: Relying on Non-traditional Prior Art to Invalidate a Patent

    by MaryAnne Armstrong, Ph.D. | Pharmaceutical Patent Analyst

    When we teach kids today about Internet privacy, one of the things that is emphasized is that once something has been posted on the Internet, that posting seemingly takes on a life of its own, with an eternal existence, even if the original poster deletes the posting. Unfortunately, companies have not learned this lesson and temporal items, such as press releases and Internet publications, can come back to haunt a patent owner in the form of invalidating prior art for a post-grant review. The following paragraphs consider ‘non-traditional’ prior art, for example, press releases, Internet publications, drug labels among others, and examine considerations in determining whether such non-traditional prior art can be used as a basis for invalidating a patent.

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  • October 16, 2017

    Written Description: A State of Uncertainty

    by John Bailey, John Heithaus, and Ohireime Eromosele | World Intellectual Property Review

    As the bounds of antibody written description have yet to be clarified in the US, what can applicants do to protect their inventions?

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  • February 20, 2017

    Exposure to Enhanced Damages After Halo

    by Michael K. Mutter and Shawn A. Hamidinia, Ph.D. | World Intellectual Property Review

    The Halo decision on wilful patent infringement has made it desirable to accumulate evidence of good faith at the time of conduct in order to avoid enhanced damages.

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  • November 29, 2016

    Halo: A Fresh Approach to Enhanced Damages

    by Michael K. Mutter and Shawn A. Hamidinia, Ph.D. | World Intellectual Property Review

    A US Supreme Court ruling has changed the landscape for determining damages in cases of wilful patent infringement, as explained in the first edition of a two-part article series.

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  • June 15, 2016

    Halo Returns Law of Enhanced Damages to Pre-Seagate Standard

    by Michael K. Mutter | BSKB

    On Monday, June 13, 2016, in Halo Electronics, Inc. v. Pulse Electronics, Inc., 579 U.S. _____; No. 14-1513, the Supreme Court turned back the clock on increased damages under 35 U.S.C. § 284, ruling that the test adopted in In re Seagate Technology, L.L.C., 497 F. 3d 1360 (Fed. Cir. 2007) “unduly confines the ability of the district courts to exercise the discretion conferred to them.”

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  • June 6, 2016

    Breathing Life into Patents

    by MaryAnne Armstrong, Ph.D. | Life Sciences Intellectual Property Review

    Applicants wishing to extend their patents’ term of protection do not have to necessarily match up the wording of the claims and the label of the relevant drug for there to be infringement by an ANDA.

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  • May 2, 2016

    Discovery In Post-Grant Review vs. Inter Partes Review

    by Lynde F. Herzbach | Law360

    There are many factors that affect which type of post-grant proceeding to file, including timing for filing, estoppel, possible arguments for unpatentability, and available evidence. This article will focus on discovery in post-grant review versus inter partes review and evaluate whether or not additional discovery issues should be a factor in the decision of which proceeding to file. Currently, 10 post-grant reviews have been instituted and the number of patents eligible for post-grant review is growing as more and more America Invents Act patents are issued. For those patents that are eligible for post-grant review, would-be petitioners should evaluate whether a PGR or an IPR is the best option for arguing claims are unpatentable. Based on the limited data available, it appears that even though the number of possible issues in a PGR are broader and the standard for additional discovery is slightly more lenient, it is difficult to obtain additional discovery in a PGR. The ability to seek additional discovery in a PGR is much closer to that of an IPR as opposed to a district court proceeding.

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  • March 2, 2016

    What We Know About Sanctions at the PTAB

    by John D.V. Ferman | Law360

    In inter partes review, covered business method and post-grant review proceedings, the Patent Trial and Appeal Board can impose sanctions “against a party for misconduct,” which may include failure to comply with rules and orders; misleading or frivolous arguments or requests; factual misrepresentations; dilatory tactics; abusing discovery or “process;” and a catch-all “improper use of the proceeding.”[1] Possible sanctions include expunging filings; excluding evidence; precluding submission of papers, arguments or issues; awarding attorneys’ fees and “compensatory expenses”; requiring terminal disclaimers; and entering judgment or dismissing a petition.

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