News Room


20

Jul 2017

Galveston Oil Rig Museum Training Experience

On July 18, 2017, Partners Carlyn Burton and Aron Griffith led a group of Osha Liang employees, including Kevin Szymczak, Manak Basra, Keelin Hargadon, Emily Boggs, Sherrie Holdman, and Zac Schaefer, through the Ocean Star Offshore Oil Rig & Museum in Galveston, TX.  A retired rig turned learning center, the museum tells the story of the U.S. Gulf Coast’s oil and gas industry through three...

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29

Jun 2017

Claim Construction at the Patent Office: What is Reasonable?

By: Lisa Margonis During examination of patent applications, the U.S. Patent & Trademark Office (USPTO) applies the “broadest reasonable interpretation” (“BRI”) standard to determine the meaning of claim terms.  See Phillips v. AWH Corp., 415 F.3d 1303, 1316 (Fed. Cir. 2005).  This same standard is applied to patents reviewed by the Patent Trial and Appeal Board (“PTAB”) during post-grant review.  37 C.F.R. §42.100(b).  More specifically,...

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25

Jun 2017

Efforts continue toward substantive patent law harmonization; Significant achievements in IP office cooperation are celebrated

Osha Liang managing partner, Jonathan Osha, participated as a member of AIPLA’s Harmonization Task Force in a series of recent meetings relating to international harmonization of patent law, developments in inter-Office cooperation, and improvements to the overall user experience.  On May 29 and May 30, the Industry Trilateral group, including representatives from AIPLA, IPO, Business Europe, and JIPA, met in Valletta, Malta.  Issues discussed included harmonization...

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23

Jun 2017

The SLANTS Win Epic Trademark Battle – Supreme Court Rules the “Disparagement Clause” of Trademark Act is Unconstitutional

By: John Montgomery The Supreme Court of the United States has affirmed the judgment of the Court of Appeals for the Federal Circuit, finding the longstanding “disparagement clause” of the Trademark Act of 1946 (the Lanham Act, 15 U.S.C. § 1052(a)) unconstitutional, in violation of the Free Speech Clause of the First Amendment to the Constitution. In an earlier Osha Liang Newsletter article (click here...

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19

Jun 2017

Requirements to Validly Prove An Entitlement to Claim Priority Before the EPO

By: Elsa Benveniste In the recent decision T577/11, a Technical Board of Appeal of the European Patent Office (EPO) considered the issue of an entitlement to claim priority before the EPO, particularly when a transfer of a first patent application occurs before the filing date of a subsequent European application claiming priority on the first application. As in previous decisions, the Board confirmed once again...

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15

Jun 2017

UPC Update (June 2017)

By: Francesca Giovannini As mentioned in Osha Liang’s previous newsletters, the ratification process of the Unified Patent Court (UPC) Agreement has not been completed yet because two of the mandatory participating states—namely the UK and Germany—have yet to conclude their ratification process for the UPC to operate. In addition to the uncertainties generated by the Brexit vote, further doubts have been cast upon imminent operation...

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12

Jun 2017

Upheaval in the Patent World? Potential Impact of U.S. Supreme Court Consideration of Inter Partes Review

By: Suzanne Lecocke and Peter Schechter Expected within the next twelve months are two United States Supreme Court rulings that could, once again, significantly alter litigation strategies for both a patentee and an accused infringer in the United States. On May 22, 2017, the U.S. Supreme Court granted certiorari in the case of SAS Inst. Inc. v. Lee, 2017 U.S. LEXIS 3236 (U.S. May 22,...

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10

Jun 2017

Jordan Joins the Patent Cooperation Treaty (PCT)

As of June 9, 2017, Jordan has become the 152nd member state of the Patent Cooperation Treaty (PCT). Any PCT application filed on or after this date will automatically include Jordan. Jordanian nationals and residents will be able to submit patent applications through the Jordanian Patent Office. The accession of Jordan to the PCT benefits both local and foreign applicants, which will contribute to the...

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07

Jun 2017

Osha Liang Ranked in 2017 IAM Patent 1000

For the first time, Osha Liang was recognized by Intellectual Asset Management (IAM) Patent 1000 as one of the top patent firms in Texas.  Osha Liang’s intellectual property practice achieved a “highly recommended” overall ranking and was recognized in the category of prosecution.  Additionally, Partner Jeff Bergman was also named a top individual in the practice area. IAM Patent 1000 has fast become the definitive...

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05

Jun 2017

U.S. Patent Rights End With The First Sale Anywhere

By: Peter Schechter From at least as early as the mid-19th century until the early 1990s, it was nearly uniformly understood that once a patented item was sold by or under the authority of the patentee, all patent rights as to the specific item sold were “exhausted.”  This exhaustion rule or “first sale doctrine” was a feature of English (and subsequently American) law since the...

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30

May 2017

Litigation Before The Unified Patent Court: What Will It Look Like?

By: Francesca Giovannini As is known, the UK and Germany have still to ratify the Unified Patent Court (UPC) Agreement before it can enter into force. Germany is expected to ratify after the UK has completed the ratification process. If the UK’s intention to ratify the UPC Agreement declared last November is maintained, the UK could ratify it after the elections called for June 8, presumably...

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30

May 2017

A Brewing Dispute: Coffee Pods and the Written Description Requirement

By: Annemarie Vicere On May 23, 2017, the United States Court of Appeals for the Federal Circuit (“CAFC”) issued a decision finding claims that had been broadened during prosecution in a manner to encompass undisclosed embodiments to be invalid under the written description requirement of 35 U.S.C. § 112.  Rivera v. ITC., Case No. 2016-1841 (“Rivera”).  The patent at issue in Rivera is directed to...

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26

May 2017

Section 102 Bar Provision Unchanged…For Now

By: Carlyn Burton In the first consideration of the substantive amendments of the Leahy-Smith America Invents Act (AIA), the US Court of Appeals for the Federal Circuit in Helsinn Healthcare S.A. v. Teva Pharmaceuticals USA, Inc.[i] weighed the statutory amendment of the on-sale bar provision. The on-sale bar, found within section 102 of the patent act, serves as a bar to patentability to prevent an...

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24

May 2017

PTAB Reverses Course Mid-Torrent: Use of “Inapplicable” Prior Art During IPR

By: Rusty Rogers This is a cautionary tale about the ability of the U.S. Patent Trial and Appeals Board’s (PTAB) to rely on additional prior art references in a decision on inter partes review (IPR) – even prior art initially deemed “inapplicable.”  In its recent decision in Novartis AG v. Torrent Pharmaceuticals (April 12, 2017), the Court of Appeals of The Federal Circuit (CAFC) approved the PTAB’s use of prior...

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22

May 2017

U.S. Supreme Court Ruling Changes 30 Years of Patent Venue Law

By: Califf Cooper On May 22, 2017, in the long-awaited and much-anticipated decision of TC Heartland LLC v. Kraft Foods Group Brands LLC, the U.S. Supreme Court narrowed the patent venue statute holding that “a domestic corporation ‘resides’ only in its State of incorporation.”  The ruling curbs patent forum shopping and deals a big blow to the patent litigation hotbed of the Eastern District of Texas. Kraft Foods...

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22

May 2017

Another legislative proposal from a major intellectual property organization seeking to calm the 101 waters, this time from AIPLA

By: Robert Lord and Kelly McKinney The current state of § 101 jurisprudence in the United States (“U.S.”) is shrouded in confusion and uncertainty.  Indeed, decisions made by the U.S. Supreme Court and the U.S. Court of Appeals for the Federal Circuit, as set forth in Alice and its progeny, have been inconsistent and lack clear guidance on how to analyze patent eligibility under 35 U.S.C....

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16

May 2017

Osha Liang Sponsors 2017 HELPING HEROES Charity Golf Tournament

Osha Liang is a proud sponsor of the 20th Anniversary HELPING HEROES Charity Golf Tournament Sponsorship on May 23, 2017 in New Orleans, LA. This event is proudly presented by Total Safety and is aimed at helping heroes nationwide improve the lives of children, families and service men and women.  Last year, the event donated over $175,000 to support the mission of the HEROES at Sky...

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15

May 2017

China Is Formulating Guidelines for Anti-Monopoly Enforcement against Abuse of IPRs

By: Han-Mei Tso and Jude Yi Recently, the Anti-Monopoly Commission of the State Council of the People’s Republic of China released to the public “Anti-Monopoly Enforcement Guidelines on Abuse of Intellectual Property Rights” (hereafter, “Guidelines”), welcoming comments from March 23, 2017, to April 21, 2017. These Guidelines, drafted by the Anti-Monopoly Commission, are based on a prior proposal jointly contributed by the National Development and Reform...

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09

May 2017

Tammy Dunn speaks at IPO European Practice Committee Meeting

Partner Tammy Dunn is speaking at the Intellectual Property Owners Association (IPO) European Practice Committee meeting on May 18, 2017 in Paris, France. Her topic will cover “Tradeshow Temporary Restraining Orders (TROs).” For more information, please visit the IPO website.


09

May 2017

Osha Liang Attorneys Attend 2017 INTA Conference

Osha Liang attorneys Jeff Bergman, Yuichi Watanabe and Keelin Hargadon are attending the International Trademark Association (INTA) 139th Annual Meeting in Barcelona, Spain from May 20-24, 2017. For more information on the event, please visit INTA’s website.


09

May 2017

Robert Lord speaking at IPO Tri-Committee Big Data Webinar

Partner Robert Lord is speaking at the Intellectual Property Owners Association (IPO) Tri-Committee Big Data Webinar on May 10, 2017.  This year’s theme is “IP Protection in Big Data: Issues and Multijurisdictional Considerations.”  This is a joint webinar of three IPO Committees, including Emerging Technologies and Trade, Software Related Inventions and U.S. Patent Law.  Robert will be covering the topic of “U.S. Jurisdictional Considerations for Patent...

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08

May 2017

Osha Liang Sponsors 2017 AIPLA Spring Conference

Osha Liang is sponsoring the American Intellectual Property Law Association (AIPLA) 2017 Spring Meeting in San Diego, CA on May 17-19, 2017.   Managing Partner, John Osha will also be attending. For more information, please visit the event website. See below for images from the event:        


05

May 2017

Functional Claim Language: The Indefiniteness Trap

By: Seema Mehta and Jonathan Osha Functional claim limitations define an element of an invention in terms of what it does rather than in terms of its structure.  In the United States, 35 U.S.C. §112(f) (pre-A.I.A. 35 U.S.C. §112, 6th paragraph) provides that “means-plus-function” and “step-plus-function” limitations are interpreted to cover the structure or acts disclosed in the specification to perform the recited functions, and...

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01

May 2017

China’s Supreme Court Published New Guiding Cases in IP – Part I: Liability of E-Commerce Platform in Patent Infringement

By: Han-Mei Tso and Jude Yi In March 2017, the Supreme People’s Court of China (the Supreme Court) published its 16th set of guiding cases, including 10 intellectual property (IP) cases. It is worth noting that since the first set of guiding cases published in 2012, there were only five IP guiding cases until March 2017. This time, the Supreme Court published 10 IP related cases...

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28

Apr 2017

Update on the Digital Content Directive for the European Market

By: Catherine Caspar The European Commission has launched several initiatives for the definition of a legal framework for the implementation a single digital market in the European Union. In this context, the General Data Protection Regulation (EU Regulation 2016/679, hereafter the GDPR, full text available here), which will be applicable as of May 25, 2018, concerns the protection of natural persons with regard to the...

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28

Apr 2017

Update on the PPH Pilot Programme Between EPO and its Cooperating Offices

By: Alexandre Picot Effective February 1st, 2017, a trial period of three years has started for the PPH pilot programme between the European Patent Office (EPO) and the Russian Federal Service for Intellectual Property based on PCT and national work products. Further, effective January 6th, 2017, the IP5 PPH pilot programme has been extended for a period of three years. The EPO has also agreed...

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28

Apr 2017

Close, But Not Close Enough: Analysis of “Near Fit” Prior Art

By: A. Rusty Rogers In a recent decision, the U.S. Federal Circuit unearths a 19th century opinion to highlight the bedrock principle that anticipation requires showing that all elements of a claimed invention existed in the prior art, without the need for distortion or selective modification of a prior art reference. Anticipation under 35 U.S.C. § 102 is established when a prior art reference describes...

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28

Apr 2017

The Marking Statute, Disclaimers, and Impact on Damages

By: Thomas Scherer On April 17, 2017, the U.S. Court of Appeals for the Federal Circuit (“CAFC”) rendered a decision in Rembrandt Wireless Technologies, L.P., v. Samsung Electronics Co., LTD., et al., No. 16-1729 (Fed. Cir. 2017).  The appeal involved several issues, e.g., claim construction during infringement analysis, obviousness determinations made in invalidity analysis, and the appropriate calculation of damages.  One aspect of the case that...

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