News Room


03

Jun 2019

Challenging Deference: An Analysis of Kisor v. Wilkie before the Supreme Court

By David Forman 繁體中文 An obscure veteran’s appeal that has reached the Supreme Court of the United States may have a profound affect on administrative law.  Kisor v. Wilkie, on appeal from the United States Court of Appeals Federal Circuit, challenges the way courts treat a federal agency’s interpretations of its own rules. Although Congress makes the laws, there are always gaps in administering the...

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01

May 2019

Introduction to Prioritized and Expedited Patent Examination Procedures (Part Two) Chapter of Japan

By Han-Mei Tso 简体中文 繁體中文 Previously, Osha Liang Insights provided an overview of the prioritized patent examination procedures in China (article link).  For the second part of this series, we will focus on the expedited patent examination procedures in Japan. Japan provides three types of expedited examination programs: Accelerated Examination, Preferential Examination, and Super Accelerated Examination.  Patent applications eligible for Accelerated Examination may include the...

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01

May 2019

CNIPA Publishes Proposed Amendments to Patent Examination Guidelines

By Han-Mei Tso 简体中文 繁體中文 On April 4, 2019, the China National Intellectual Property Administration (the “CNIPA”) published its Draft Amendments to the Patent Examination Guidelines (Draft for Comment) (the “Proposed Amendments”) to solicit public comments.[1] This amendment follows the previously amended Patent Examination Guidelines (the “Guidelines”) that took effect on April 1, 2017. The Proposed Amendments aim to improve efficiency and quality of patent...

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01

May 2019

Update on French Intellectual Property Law: French Parliament Passes “Action Plan for Business Growth and Transformation”

By Francesca Giovannini and Bertrand Clair On April 11, 2019, the French parliament passed a new bill titled “Action Plan for Business Growth and Transformation” (hereinafter “PACTE bill” based on French title of the legislation), which includes new legislative provisions affecting French intellectual property (IP) rights. Provisions of the PACTE bill are expected to enter into force on April 26, 2019 at the latest, and...

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02

Apr 2019

Over an Apple Barrel: Copyright Lawsuits Must Satisfy Registration Approach

By James Carlson In Fourth Estate Public Benefit Corp. v. Wall-Street.com, LLC, No. 17-571 (2019) (hereinafter “Fourth Estate decision”), the Supreme Court of the United States ended a split between the regional circuits over whether a copyright holder must first obtain a copyright registration from the United States Copyright Office (hereinafter “Copyright Office”), or if the act of filing an application for copyright registration was...

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02

Apr 2019

Important e-Commerce Venue Question Left Open – For Now

By Peter Schechter and Suzanne Lecocke 日本語 简体中文 繁體中文 Companies accused of patent infringement remain in limbo after the CAFC’s decision in In re: Google LLC, in which the CAFC declined to decide whether a company’s data servers located at independent Internet Service Provider facilities in a judicial district constitute that company’s “regular and established place of business” in that venue for patent infringement venue purposes....

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05

Mar 2019

Patent Reexamination Board Eliminated Amid CNIPA Reorganization

By Han-Mei Tso  简体中文 繁體中文 According to a notice issued by the China National Intellectual Property Administration (CNIPA) on February 14, 2019, the Patent Reexamination Board will be merged into the Patent Office of the CNIPA.  The Patent Reexamination Board was formerly a subordinate organization under the CNIPA.  However, after the merger, the Patent Office will be responsible for all duties formerly handled by the...

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05

Mar 2019

To Petition or Not to Petition: The Role of Statutory Estoppel on Later Patent Challenges

By Phillip Chambers & Peter Schechter When the America Invents Act (AIA) implemented post-grant proceedings for challenging patents in the United States in 2012, petitioners faced the risk that the AIA’s estoppel provisions could preclude subsequent validity challenges and defenses after unsuccessful proceedings.  For several years now, trial courts have been analyzing and defining the scope and extent that the AIA estoppel provisions limit or...

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05

Mar 2019

Supreme Court Requires Actual Copyright Registration To Sue

By Louis Bonham Resolving a circuit split, the Supreme Court on March 4, 2019, unanimously held that the Copyright Office must have issued a registration on a work for the copyright owner to sue for its infringement. The question before the Court in Fourth Estate Public Benefits Corp. v. Wall Street.com was whether a copyright owner may file suit as long as it has submitted...

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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 简体中文 繁體中文 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...

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01

Feb 2019

Obviousness-Type Double Patenting Does Not Invalidate Patent Term Extensions

By Payal Majumdar 日本語 简体中文 繁體中文 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...

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01

Feb 2019

Beating the Odds in IPRs

By Tammy J. Dunn 日本語 简体中文 繁體中文 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...

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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 简体中文 繁體中文   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...

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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 简体中文 繁體中文   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...

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04

Jan 2019

The PTAB’s New “Precedential Opinion Panel”

By Tammy J. Dunn 日本語 简体中文 繁體中文 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...

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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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