Uncategorized


04

Feb 2019

Report on January meetings of the Global Dossier Task Force and the Industry Consultation Group

By Jonathan Osha On January 15 and 16, 2019, AIPLA participated in meetings of the IP5 Industry, the Global Dossier Task Force (GDTF), and the Industry Consultation Group (ICG) hosted by the European Patent Office in The Hague.  AIPLA was represented by Jonathan Osha, board liaison to the AIPLA Harmonization Committee. IP5 Industry met on January 15 to continue discussions on cooperation and work-sharing, and also...

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04

Feb 2019

Joined Parties to an Inter-Partes Review Have Right to Appeal

By Jonathan Osha Research Corporation Technologies, Inc. (“RCT”) owns U.S. patent Re 38,551 (“the ’551 patent”) that has 13 claims drawn to certain enantiomeric compounds and pharmaceutical compositions useful for treatment of epilepsy.  Argentum Pharmaceuticals LLC (“Argentum”) petitioned for inter partes review of the ’551 patent on 8 grounds.  The Board instituted review on two grounds: obviousness of claims 1-9 over Kohn 1991[2] and Silverman[3],...

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04

Feb 2019

Supreme Court Turns Back the Clock on Prior Art in the U.S.

By Jonathan Osha  On January 22, 2019, the U.S. Supreme Court issued a unanimous decision in Helsinn v. Teva,[1] holding that non-public or confidential sales of inventions that are “ready to be patented” continue to qualify as prior art despite the changes that were made to §102 by the Leahy-Smith America Invents Act (AIA). Prior to the AIA, 35 U.S.C. §102 defined the “on sale...

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01

Feb 2019

China to Increase Damages for Patent Infringement

By Han-Mei Tso Following the third revision of the Patent Law of the People’s Republic of China (hereinafter “Patent Law”) in 2008, China is expected to proceed with a fourth revision of the Patent Law this year.  The Chinese government is now soliciting opinions from the public for a Proposed Amendment to the Patent Law of the People’s Republic of China (hereinafter “Proposed Amendment”). Among...

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01

Feb 2019

Obviousness-Type Double Patenting Does Not Invalidate Patent Term Extensions

By Payal Majumdar In Novartis AG v. EZRA Ventures LLC, No. 2017-2284 (Fed. Cir. Dec. 7, 2018), the U.S. Court of Appeals for the Federal Circuit affirms the Delaware district court’s final judgment concerning patent term extensions and the interplay with the obviousness-type double patenting doctrine.  In this court decision, the Federal Circuit found that in accordance with statutory construction principles and the court’s holding...

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01

Feb 2019

Beating the Odds in IPRs

By Tammy J. Dunn Osha Liang is pleased to announce a recent series of victories on behalf of a firm client and patent owner in three inter partes review proceedings (“IPRs”) pending before the United States Patent and Trademark Office’s Patent Trial and Appeal Board (“PTAB”).  Earlier this month, the PTAB issued Final Written Decisions in all three IPRs, finding that out of 42 patent...

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10

Jan 2019

The USPTO Issues Revised Guidance on Finding Claims Directed to a Judicial Exception

By James Carlson On January 7, 2019, the USPTO published a Federal Register notice (hereinafter “Revised Guidance”)[1] revising various patent examination procedures relating to subject matter eligibility.  In particular, the Revised Guidance changes how examiners must analyze claims to determine if they are “directed to” a judicial exception under Alice Corp. v. CLS Bank Int’l, 134 S.Ct. 2347 (2014).  Specifically, the Revised Guidance introduces a...

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04

Jan 2019

Osha Liang and Shaanxi OEIC Successfully Hosted Salon Event “Strategy for International Patent Portfolio”

By Han-Mei Tso   On December 6, 2018, the salon event “2018 Strategy for International Patent Portfolio” was held at the Shaanxi Institute of Advanced Optoelectronics Integrated Circuit Technology (“Shaanxi OEIC”). The event, co-hosted by Osha Liang and Shaanxi OEIC, was supported by Chiptronic Future Platform, Beijing Innotrack IP Law Firm, and Shaanxi Optoelectronic Integrated Industry and Technology Innovation Strategic Alliance.  In attendance were numerous...

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04

Jan 2019

Osha Liang Hangzhou Representative Office Joined the Hangzhou High-tech Zone (Binjiang) Intellectual Property Service Industry Alliance

By Han-Mei Tso   The inaugural meeting of the Hangzhou High-tech Zone (Binjiang) Intellectual Property Service Industry Alliance (the “Alliance”) was held on November 21, 2018, and chaired by Ms. Tang Yin, the director of the Science and Technology Bureau of Hangzhou High-tech Zone (Binjiang). Osha Liang’s Hangzhou Representative Office, was the only representative office of a U.S. intellectual property law firm in Zhejiang Province,...

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04

Jan 2019

Introduction to Prioritized and Expedited Patent Examination Procedures (Part One) Chapter of China

By Han-Mei Tso   In today’s business world, companies often have to face fierce commercial competition with rapidly developing technologies.  Thus, the ability to obtain patents quickly provides a clear advantage over the competition. Moreover, patents can enhance corporate value by contributing to a comprehensive patent portfolio, while also generating interest from potential investors.  In this context, this issue of Osha Liang Insights and subsequent...

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04

Jan 2019

The PTAB’s New “Precedential Opinion Panel”

By Tammy J. Dunn   After six years of experience with AIA trial proceedings, including thousands of inter partes reviews (IPRs), post-grant reviews (PGRs), and covered business method reviews (CBMs), the Patent Trial and Appeal Board (PTAB) recently revamped its standard operating procedures (SOPs) relating to how the PTAB assigns panels of Administrative Patent Judges to preside over these cases, and how the PTAB designates...

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30

Nov 2018

Osha Liang Obtains $28.8 Million Architectural Copyright Judgment

By Califf Cooper Osha Liang and co-counsel Pat Zummo, acting on behalf of client Preston Wood & Associates, won a judgment of nearly $29 million against Houston real estate promoter Urban Living for copyright infringement and violations of the Digital Millennium Copyright Act (DMCA).  Federal District Judge David Hittner presided over the trial in August 2018 and entered judgment against Urban Living and architect Steven Cameron...

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30

Nov 2018

18 Months Gone: TC Heartland’s Evolving Impact on Patent Litigation in the Eastern District of Texas

By  Anna Domask  and James Carlson   The United States Supreme Court decision in TC Heartland, LLC v. Kraft Foods Group Brands, LLC, 137 S. Ct. 1514 (2017) (8-0 decision) (hereinafter “TC Heartland”) upended 30 years of patent venue law[1].  Specifically, Justice Thomas authored the opinion finding that “a domestic corporation ‘resides’ only in its State of incorporation for purposes of the patent venue statute.”[2]  At...

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30

Nov 2018

China Issues New Appellate Procedural Rules for IP Cases

By Han-Mei Tso The Standing Committee of the National People’s Congress of China recently passed new procedural rules regarding appeals in intellectual property  (IP) related cases.  According to the new rules, the Supreme People’s Court (SPC) of China becomes the only appellate court for judgments and procedural rulings originating from the courts of the first instances in IP related cases.  The new rules will take...

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30

Nov 2018

The Technological Problem: The Elusive Key to Patent-Eligible Subject Matter

By James Carlson Over thirty-five years ago in Diamond v. Diehr, 450 U.S. 175 (1981) (hereinafter “Diehr”), the United States Supreme Court struck a compromise for patenting software inventions.  In Diehr, the Supreme Court recognized that not every discovery warranted patent protection.  In particular, the Supreme Court viewed laws of nature, natural phenomena, and abstract ideas as being such fundamental truths that no one deserved...

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30

Nov 2018

Inventors and Others In Privity With Them May Challenge Validity of Their Own Previously Assigned Patents in PTAB Proceedings

By Peter Schechter “Assignor estoppel prevents a party who assigns a patent to another from later challenging the validity of the assigned patent.”   This equitable doctrine has been applied by U.S. district courts and the U.S. International Trade Commission (“ITC”) for over a hundred years to protect companies from the basic unfairness that would result if inventors could challenge validity of the patents that they...

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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.