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.

  • October 1, 2015

    Post Therasense: Why Supplemental Examination is Less Attractive

    by Eugene Perez and Chad Rink | World Intellectual Property Review

    It is likely that Therasense is the main reason that supplemental examination filings are so low and may not ramp up any time in the near future.

  • September 29, 2015

    Supplementing the Record in PTAB Trials by Filing Supplemental Information

    by Gerald M. Murphy, Jr. and Lynde F. Herzbach | Bloomberg BNA’s Patent, Trademark, & Copyright Journal

    This article discusses how a party can supplement its case during an inter partes review (IPR) trial, primarily by asking for permission to file ‘‘Supplemental Information.’’ During preparation of this article, over 25 orders from the PTAB were reviewed.

  • September 15, 2015

    IP Update, Vol. 13, No. 7

    by Marc S. Weiner and MaryAnne Armstrong, Ph.D. | BSKB

    On August 13, 2015, Court of Appeals for the Federal Circuit (CAFC) issued their per curiam decision regarding liability for divided infringement under §271(a). Akamai Technologies, Inc. v. Limelight Networks, Inc. CAFC Case Nos. 2009-1372, 2009-1380, 2009-1416, 2009-1417. Previously, on May 13, 2015, the CAFC handed down their decision in the Limelight remand from the Supreme Court of the United States (SCOTUS). CAFC Case No. 2009-1372. In the remanded decision of May 13, 2015, the court found that Limelight was not guilty of direct infringement because Limelight and its customers were not acting as a single entity, nor was there a contractual relationship between Limelight and its customers. The CAFC then reconsidered the May 13, 2015 decision with an en banc panel.

  • August 4, 2015

    IP Update, Vol. 13, No. 6

    by Marc S. Weiner and MaryAnne Armstrong, Ph.D. | BSKB

    The July 30, 2015 Federal Register issued a statement that after receiving over sixty (60) comments from the public on on the 2014 Interim Patent Eligibility Guidance, the USPTO has produced a July 2015 Update: Subject Matter Eligibility.

  • July 21, 2015

    CAFC Decides Limelight Remand from U.S. Supreme Court

    by MaryAnne Armstrong, Ph.D. | IP Frontline

    On May 13, 2015, the CAFC handed down their decision in the Limelight remand. CAFC Case No. 2009-1372. The court found that Limelight was not guilty of direct infringement because Limelight and its customers were not acting as a single entity, nor was there a contractual relationship between Limelight and its customers. A full understanding of the CAFC decision in Limelight requires a review of the procedural history of the case.

  • July 10, 2015

    In re Cuozzo and the Broadest Reasonable Interpretation Standard – Should the Ability to Amend Be Relevant or Is It a Convenient Excuse?

    by Gerald M. Murphy, Jr. and Lynde F. Herzbach | BSKB

    On July 8, in In re Cuozzo, the CAFC denied en banc review of a prior panel decision that confirms the PTAB can use a different standard for interpreting claims than a district court.

  • July 1, 2015

    IP Update, Vol. 13, No. 5

    by Marc S. Weiner and MaryAnne Armstrong, Ph.D. | BSKB

    On May 13, 2015, the CAFC handed down their decision in the Limelight remand. CAFC Case No. 2009-1372. The court found that Limelight was not guilty of direct infringement because Limelight and its customers were not acting as a single entity, nor was there a contractual relationship between Limelight and its customers. A full understanding of the CAFC decision in Limelight requires a review of the procedural history of the case.

  • June 1, 2015

    Method Patents: Questions of Diagnosis

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

    Current US law makes it challenging for companies to establish infringement liability for third parties selling assays to be used in patented diagnostic methods or for third parties performing the critical (but not all) steps of a patented diagnostic method.

  • May 31, 2015

    New Claim Construction in IPR and PGR

    by Eugene Perez | World Intellectual Property Review

    While the rate of filings for a postgrant review (PGR) trial has been slow, the rate of petitions filed to request an inter partes review (IPR) or a PGR specifically for a covered business method (CBM) patent trial have exceeded expectations. The rate of granting PGRs is around 70% for the fiscal year 2015, although it was higher in previous fiscal years. Once instituted, the petitioner has succeeded in canceling patent claims in more than 70% of cases.

  • May 6, 2015

    IP Update, Vol. 13, No. 5

    by Marc S. Weiner and Chad M. Rink | BSKB

    As mentioned in the IP Update from April 2, 2015, the Final Rules to the Hague Agreement concerning International Registration of Industrial Designs were issued in the Federal Register.

  • April 2, 2015

    IP Update, Vol. 13, No. 3

    by Marc S. Weiner | BSKB

    Today’s Federal Register posted the Final Rules to the Hague Agreement Concerning International Registration of Industrial Designs. A copy of the Final Rules can be found here.

  • January 20, 2015

    IP Update, Vol. 13, No. 2

    by Marc S. Weiner | BSKB

    On January 9, 2015, the USPTO issued a final rule, Changes to Patent Term Adjustment in view of the Federal Circuit Decision in Novartis v. Lee, setting forth final rule changes. The Notice (linked here)implements changes clarifying many PTA issues and implementing the holding of Novartis v. Lee, which are discussed below.

  • January 5, 2015

    IP Update, Vol. 13, No. 1

    by Marc S. Weiner | BSKB

    On December 16, 2014, the U.S. Patent and Trademark Office (USPTO) published Interim Eligibility Guidance (linked here) that offers the USPTO’s current view of subject matter eligibility in line with the U.S. Supreme Court decisions in Alice Corp. [Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S.__, 134 S. Ct. 2347 (2014)], Myriad [Association for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. __, 133 S. Ct. 2107 (2013)], Mayo [Mayo Collaborative Serv. v. Prometheus Labs., Inc., 566 U.S. __, 132 S. Ct. 1289 (2012)] and related case law. This December 16, 2014 Interim Eligibility Guidance supplements the June 25, 2014 Preliminary Instructions in view of the Supreme Court decision in Alice Corp. and supersedes the March 4, 2014 USPTO procedures issued in view of the Supreme Court decisions in Myriad and Mayo. Since this is Interim Guidance, the USPTO is seeking public comment and suggestions.

  • December 15, 2014

    IP Update, Vol. 12, No. 8

    by Marc S. Weiner and Aslan Ettehadieh | BSKB

    Earlier this year, the United States Patent and Trademark Office (USPTO) initiated a new program called the Glossary Pilot Program.This new program was designed for the USPTO to study how the use of a glossary section in the specification of a patent application would improve the clarity of the patented claims.In order to participate in this program, numerous requirements must first be met. For example, one key requirement is that a glossary must be included within the specification.Another key requirement is that the application must be classified in software-related technological fields under the jurisdiction of Technology Centers 2100, 2400, 2600, or the Business Methods area of Technology Center 3600.Upon acceptance into this program, the USPTO will provide the expedited examination of the application (only) up to the mailing of the first Office Action.

  • September 30, 2014

    IP Update, Vol. 12, No. 7

    by Marc S. Weiner and Aslan Ettehadieh | BSKB

    The After Final Consideration Pilot (AFCP) 2.0 program was scheduled to expire on September 30, 2014. However, the USPTO has recently announced that the AFCP 2.0 program has been extended to run through September 30, 2015.

  • July 23, 2014

    IP Update, Vol. 12, No. 6

    by Marc S. Weiner and Cynthia Leonard | BSKB

    The purpose of this notice is to provide you with an additional option that has been made available by the United States Patent and Trademark Office with respect to Patent Term Adjustment (PTA).

  • July 1, 2014

    IP Update, Vol. 12, No. 5

    by Marc S. Weiner and Michael B. Marion | BSKB

    The U.S. Supreme Court issued its opinion in Alice Corporation Pty. Ltd. v. CLS Bank International, No. 13-298, concluding that a computer-implemented scheme for mitigating “settlement risk” was invalid for not claiming patent-eligible subject matter under 35 U.S.C. § 101. (Slip. Op. at 1.) The Court applied its framework established in Mayo Collaborative Services v. Prometheus Laboratories, Inc., to determine when patent claims are drafted to patent-ineligible concepts of laws of nature, natural phenomena, and abstract ideas. (Slip. Op. at 7.) After finding the patent claims are drawn to the abstract idea of intermediated settlement, the Court asked, “[w]hat else is there in the claims before us?” and found that the claims only recited a generic computer, when the claims were viewed as individual elements and an “ordered combination.” (Slip. Op. at 7.) The Court held that, “the mere recitation of a generic computer cannot transform a patent-ineligible abstract idea into a patent-eligible invention,” rejecting the patentee’s argument that the existence of the tangible computer would satisfy patent-eligibility. (Slip. Op. at 13-14.) All of the claims before the Supreme Court failed its test, rejecting method, system, and computer-readable media claims directed to the same abstract idea.

  • June 3, 2014

    IP Update, Vol. 12, No. 4

    by Marc S. Weiner, MaryAnne Armstrong, Ph.D., and Ali M. Imam | BSKB

    On June 2, 2014, the Supreme Court handed down the long-awaited decision in Limelight v. Akamai, which considered the issue of whether a party could be liable for inducing infringement under 35 U.S.C. §271(b) in a situation where no one single [controlling] party is liable for direct infringement under 35 U.S.C. §271(a). In their decision the Supreme Court overturned the earlier ruling of the CAFC and held that if there is no direct infringement under 35 U.S.C.§271(a) there can be no liability for inducing infringement under 35 U.S.C.§271(b). However, the Court stated that their decision was predicated by the earlier holding of the CAFC in Muniauction, Inc. v. Thomson Corp.,232 F. 3d 1318 (2008), which held that for there to be direct infringement under 35 U.S.C.§271(a) a single party must be responsible (either themselves or through the control of a third party), for the complete infringement of the claimed invention. Essentially the Court instructed that the same standard dictated in Muniauction for determining liability for direct infringement under 35 U.S.C.§271(a) must be applied to a determination whether there is the prerequisite of the direct infringement required for a finding of inducing infringement. However, in the decision the Court also invited the CAFC to revisit the Muniauction holding. As such, the question of whether liability for inducing infringement may be found even if a single party cannot be found liable for direct infringement possibly remains open for further consideration by the CAFC. However, until and unless the CAFC chooses to reverse the Muniauction holding, under Limelight if there is no direct infringement under 35 U.S.C. §271(a), there can be no inducement of infringement under 35 U.S.C. 271(b).

  • May 23, 2014

    IP Update, Vol. 12, No. 3

    by Marc S. Weiner, Eugene T. Perez, Andrew Meikle, and Leonard Svensson | BSKB

    On March 4, 2014, the USPTO issued its Guidance (guidelines) on subject matter eligibility under 35 U.S.C. § 101 in view of the recent Supreme Court decisions of Association for Molecular Pathology v.Myriad Genetics, Inc. (2013) and MayoCollaborative Services v. Prometheus Laboratories, Inc. (2012).

  • May 16, 2014

    IP Update, Vol. 12, No. 2

    by Marc S. Weiner and Michael B. Marion | BSKB

    The U.S. Supreme Court handed down a pair of decisions on April 29, 2014, on the issue of when a case is exceptional under Section 285 of the Patent Act: Octane Fitness, LLC v. Icon Health & Fitness, Inc., No. 12-1184 and Highmark, Inc. v. Allcare Health Mgmt Sys. Inc., No. 12-1163. In short, the cases lower the standards for awarding a prevailing party attorney’s fees under Section 285, and afford district court judges with greater discretion in awarding attorney’s fees.

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