News Room


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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01

Nov 2018

PTAB Replaces BRI Standard with Phillips Standard

By Suzanne Lecocke On October 11, 2018, the United States Patent and Trademark Office (USPTO) published its final rule entitled “Changes to the Claim Construction Standard for Interpreting Claims in Trial Proceedings Before the Patent Trial and Appeal Board.”  The final rule, applicable to Inter Partes Review (IPR), Post Grant Review (PGR), and Covered Business Method (CBM) Review, will become effective on November 13, 2018....

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01

Nov 2018

Hangzhou High-Tech Zone (Binjiang) Science and Technology Bureau and Osha Liang LLP Signed a Strategic Cooperation Agreement

By Han-Mei Tso On September 5, 2018, Mr. John Osha, the managing partner of Osha Liang LLP (hereinafter “Osha Liang”), and Ms. Han-Mei Tso, the chief representative of Osha Liang Hangzhou Representative Office (hereinafter “Osha Liang Hangzhou”) met with Hangzhou High-Tech Zone (Binjiang) Science and Technology Bureau (hereinafter “Science and Technology Bureau”).  During the meeting, the two parties signed a strategic cooperation framework agreement to...

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01

Nov 2018

The Effect and Application of China’s Guiding Cases

By Han-Mei Tso In 2017, Osha Liang Newsletter published three articles discussing patent-related guiding cases issued by the Supreme People’s Court of China (hereinafter “SPC”), i.e., Guiding Case No. 83[1], Guiding Case No. 84[2], and Guiding Case No. 85[3].  This article will further discuss the nature and effect of guiding cases within China’s legal system and explain how to implement IP-related guiding cases into Chinese...

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01

Nov 2018

The Federal Circuit Provides Guidance for Obviousness Decisions at the PTAB: Provide an Explanation and be Consistent

By  Payal Majumdar In Emerson Electric Co. v. SIPCO, LLC, No. 2017-1866 (Fed. Cir. August 29, 2018), the U.S. Court of Appeals for the Federal Circuit provides valuable guidance for panels of judges at the United States Patent Trial and Appeal Board (PTAB).  In this nonprecedential court decision, the Federal court has vacated and remanded a PTAB decision for being inadequate in explaining its reasoning...

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01

Nov 2018

Changes in the Guidelines for Examination

By Yann Gloaguen The European Patent Office (EPO) has recently published the annual update of its Guidelines of Examination (hereinafter “EPO update”), which will come into force on November 1st, 2018.  In particular, the EPO update includes changes to unity of invention requirements and the patentability of mathematical methods. Changes to Unity of invention Requirements: Under the European Patent Convention (EPC), a European patent application must...

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01

Oct 2018

Not Simply Renamed – “SIPO” becomes “CNIPA”

By: Han-Mei Tso On September 3, 2018, the State Intellectual Property Office of China announced on its website[1] that the English name of the Chinese governmental body has changed from the “State Intellectual Property Office” (“SIPO”) to the “China National Intellectual Property Administration” (“CNIPA”).  Accordingly, the agency’s English abbreviation of the bureau has changed from “SIPO” to “CNIPA” as well.  The website domain has also...

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01

Oct 2018

Osha Liang Hosts “Strategy for International Patent Procurement” Seminar in Hangzhou

On August 31, 2018, Osha Liang’s Hangzhou Office co-hosted a seminar on “Strategy for International Patent Procurement” at the Overseas Talents Innovation Base of Binjiang District (the “Base”) in Hangzhou, China.  The seminar was aimed at helping start-up companies strategically plan overseas market development by enhancing their commercial competitiveness and expanding their international vision.  Ms. Han-Mei Tso, the chief partner in Osha Liang’s Hangzhou Office,...

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01

Oct 2018

New French Provisions Impacting National Intellectual Property Rights

By: Francesca Giovannini New legislative provisions affecting French intellectual property (IP) rights are under discussion.  In particular, these provisions are contained in a proposed law known as “Action Plan for Business Growth and Transformation” (in French: PACTE) currently examined by the parliament and in a decree the government intends to issue shortly.  Once the bill is finalized and passed and the decree is issued, the...

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01

Oct 2018

U.S. CAFC’s Solidified Decision of the Interpretation of Inter Partes Review (IPR) Time Bar under 35 U.S.C. § 315(b)

By: Yen-Kai (Eldwin) Hseu The U.S. Court of Appeals for the Federal Circuit (“Federal Circuit”) recently decided the case Luminara Worldwide, LLC v. Iancu, No. 17-1629 (Fed. Cir. 2018).  The Luminara Worldwide decision provides important insight into the Federal Circuit’s interpretation for the Inter Partes Review (IPR) time bar under 35 U.S.C. § 315(b). The IPR time bar provision of the America Invents Act, 35...

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01

Oct 2018

The Music Modernization Act: A Copyright Update for a Digital Age

By: Louis Bonham and James Carlson The United States Congress has passed the Orrin G. Hatch Music Modernization Act of 2018 (“MMA”), which now heads to President Trump for his signature.  The U.S. Senate renamed the bill in honor of retiring Republican Senator Orrin Hatch, the bill’s sponsor and also a fellow songwriter. The bill includes a previous version of the MMA passed by the U.S....

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01

Oct 2018

A Trademark within a Copyright: 9th Circuit Clarifies Trademark Rights in Expressive Works

By: John Montgomery and James Carlson Courts typically use a test set forth in Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989) (“Rogers”), to determine whether artistic expression under the First Amendment of the U.S. Constitution overrides application of traditional trademark rights. If use of the trademark in the work does not add expressive value to the work that is protectable by the First amendment,...

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01

Oct 2018

Powerful Technique Promises to Revolutionize Biotechnology

By: David Forman A powerful technique promises to revolutionize biotechnology.  With the clumsy name of CRISPR-Cas9, this method enables rapid and convenient editing of genes with potential applications for medicine, agriculture, and other technologies.  The Federal Circuit recently resolved a dispute over patent rights to this gene-editing method.[1]  The competing parties were a group in Boston (The Broad Institute, MIT, and Harvard) (“Broad”) and the...

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10

Sep 2018

11th Annual Comp-U-Dopt Oktoberfest Celebration on October 18, 2018

Osha Liang is proud to support Comp-U-Dopt and its 11th Anniversary Oktoberfest Celebration on October 18th from 6:30-10:00 p.m. at their warehouse located at 1602 Airline Drive in Houston.  Celebrate the achievements of Oktoberfest this year with good food, great beer, and all your friends while giving back to underserved kids in the Houston community.  Highlights for the event include live music by The Sundogs,...

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10

Sep 2018

Jonathan Osha and Jeffrey Bergman Once Again Named Texas Super Lawyers

Osha Liang is pleased to announce that two attorneys at the firm have been selected as 2018 Thomson Reuters Texas Super Lawyers©. The firm’s honorees are Managing Partner Jonathan P. Osha and Partner Jeffrey S. Bergman. Both were recognized in the Intellectual Property and Intellectual Property Litigation categories. This is the 13th consecutive year that Mr. Osha and the 3rd consecutive year that Mr. Bergman have earned...

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31

Aug 2018

Patent Subject Matter Eligibility Six Months after Berkheimer v. HP Inc.

By: James Carlson In February 2018, the U.S. Court of Appeals for the Federal Circuit issued an opinion in Berkheimer v. HP Inc., 881 F.3d 1360 (Fed. Cir. 2018) (hereinafter “Berkheimer decision”).  The Berkheimer decision may prove to be the most important U.S. court case regarding patent subject matter eligibility since the Supreme Court’s opinion in Alice Corp. v. CLS Bank Int’l., 134 S.Ct. 2347...

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31

Aug 2018

2018 Annual Statistics Report by the Japan Patent Office

By: Mutsumi Fukuoka On July 30, 2018, the Japan Patent Office (JPO) released its “2018 Annual Report” (in Japanese only). The 2018 Annual Report provides a comprehensive compilation of statistics on intellectual property (IP).  In this article, we will update our newsletter of July 2017 by highlighting some of the important features of patent statistics from the JPO Annual Report 2018. PCT International Applications Continue...

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31

Aug 2018

Simple Laws (Sometimes) Have Simple Meanings

By: Peter Schechter The Court of Appeals for the Federal Circuit (CAFC), sitting en banc, has decided that the statutory phrase “served with a complaint” – which appears in a time bar provision regarding Inter Partes Review (IPR) means, quite simply: served with a complaint.  The statute is not concerned with any effect, or lack of effect, of such service of a complaint.  Nor is...

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31

Aug 2018

If You Participate in Standards-Setting Orgs., Disclose Your IP Rights Early & Often, or Quit the Org.

By: Peter Schechter In 2011, Rambus was cleared of allegations of improper conduct in connection with its participation in standards-setting organizations (SSO).  There, Rambus owned patent applications relating to proposed technical standards under consideration, but there was not clear and convincing evidence that any claims of any pending applications were necessarily infringed by the proposed standards.  Rambus withdrew from the SSO and then, after it...

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