Be Careful What You Wish For Post-SAS
In the wake of SAS Institute v. Iancu, the PTAB has sometimes expanded pending IPRs to include previously un-instituted grounds. But can the PTAB rely on SAS to retroactively deny institution? A recen...
Articles
Protecting the Look of a Product: Design Patents vs. Trade Dress
(as published by DesignNews) When considering intellectual property protection, businesses often overlook the value of design patents and trade dress rights. Products may have ornamentation and/or vis...
All or Nothing: PTAB Must Institute IPR on All Challenged Claims and Grounds, or None at All
This past year, the Supreme Court in SAS Institute v. Iancu held that once the PTAB institutes an IPR trial its subsequent final written decision must address all claims challenged in the petition. Th...
Non-Prior Art Evidence in IPR - Yeda v. Mylan
(as published by Bloomberg Law) Section 311(b) of the America Invents Act (“AIA”) provides that a petitioner for inter partes review (“IPR”) may request cancellation of one or more claims of a patent ...
Motions to Amend: The Board Invites Alice to the IPR Party
One strategy that a patent owner can pursue in an IPR trial is to file a motion to amend seeking to replace one or more of the challenged claims with substitute claims that neither enlarge the scope o...
Commission May Modify a Civil Penalty Previously Affirmed by the Federal Circuit
(as published by ITC TLA) DBN Holding, Inc. v. Int’l Trade Comm’n, No. 2017-2128, 2018 WL 6181653 (Fed. Cir. Nov. 27, 2018) Summary: In a non-precedential opinion, the Federal Circuit held that the Co...
5 Commonly Misunderstood Patent Concepts
(as published by business.com) In most situations, a patent is the only way to deter a competitor from taking and using a company’s innovations. However, there are many aspects of patent law that are ...
Boston Patent Law Association Response to USPTO Request for Comments on Motion to Amend Practice and Procedures in Trial Proceedings Under the America Invents Act Before the PTAB
Jonathan Roses was the lead author on behalf of the Boston Patent Law Association's (BPLA’s) Patent Office Practice Committee of a December 2018 Response to USPTO Request for Comments on motion to ame...
A Firsthand Account of the Helsinn V. Teva Arguments
(as published by Law360) On Dec. 4, 2018, the U.S. Supreme Court heard oral arguments in Helsinn Healthcare v. Teva Pharmaceuticals. The question before the court was whether the America Invents Act o...
TTAB dismisses NEW MAN cancellation petitions, finding no abandonment despite six years of non-use
John L. Welch's article titled "TTAB dismisses NEW MAN cancellation petitions, finding no abandonment despite six years of non-use" was published by World Trademark Review. Read more (subscription req...
Risks of Waiting to File an IPR Following Click-to-Call
(as published by Thomson Reuters Westlaw Journal IP) The U.S. Court of Appeals for the Federal Circuit held in a recent en banc decision that the one-year time limit that an accused infringer has to r...
Protection Strategies for Growth-Phase Companies
(as published by IPWatchdog)