Search Results for: Patent


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

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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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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29

Jun 2018

Patent Damages Award May Include Foreign Lost Profits Under Certain Limited Circumstances

By: Peter Schechter A damages award under 35 U.S.C. § 284 for infringement under § 271(f)(2) may include foreign lost profits, regardless of the presumption against extraterritorial reach of federal statutes, the U.S. Supreme Court held in a 7-2 decision on June 22, 2018. WesternGeco LLC  v. Ion Geophysical Corp., ___ U.S. ___, No. 16-1011 (June 22, 2018).  The Court noted that the relevant conduct,…

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29

Jun 2018

SIPO Announced Termination and Adjustment of Certain Patent Fees

By: Han-Mei Tso The State Intellectual Property Office of the People’s Republic of China (“SIPO”) issued No. 272 Announcement on June 15, 2018.  In order to further reduce the burden on society and promote the protection of patent rights, SIPO will terminate and adjust certain patent fees starting August 1, 2018.  The detail of the announcement is as follows: The patent registration fee, the publication…

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27

Jun 2018

Industry Trilateral, Industry IP5, and IP5 Patent Office Heads Meetings in New Orleans, Louisiana

The Industry Trilateral, Industry IP5, and IP5 Patent Office Heads in New Orleans, Louisiana from June 11-14, 2018.  The series of meetings relating to international harmonization of patent law, developments in inter-Office cooperation, and improvements to the overall user experience.  Osha Liang partner Jonathan Osha participated in the meetings as part of the AIPLA delegation. Click here for the detailed summary on AIPLA’s website. The…

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15

Jun 2018

Osha Liang Ranked Again in IAM Patent 1000

For the second year in a row, 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 Jeffrey Bergman was also named a top individual in patent prosecution. IAM Patent 1000 has fast become…

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31

May 2018

Claim Interpretation Urged by Patent Owner in District Court Infringement Litigation May Be Relied on by Petitioner in IPR Challenge

By: Tammy Dunn In Western Digital Corporation v. SPEX Technologies, Inc. (“Western Digital IPR”), the Patent Trial and Appeal Board (“PTAB”) recently allowed a petitioner to use a patent owner’s claim construction positions taken in district court infringement litigation in an IPR petition, even though the petitioner explicitly disagreed with those positions in district court. At the time the petitioner filed its IPR petition, the…

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31

May 2018

SIPO Issues Statistics of Design Patents

By: Han-Mei Tso In April 2018, the State Intellectual Property Office (SIPO) of the People’s Republic of China issued the Brief Statistics of Design Patent 2017 (the “Report”). The Report summarizes China’s design patent statistics in 2017, covering the numbers of applications, grants, patents-in-force, country distribution, industry distribution, and other data. Overall, the total number of design patent applications in 2017 was 629,000, which represents…

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30

Apr 2018

New guidance from the USPTO on patent-eligible subject matter

By: Jonathan Osha Continuing its efforts to ensure the examining practices of the United States Patent and Trademark Office (“USPTO”) keep pace with the rapidly changing US law in the area of patent-eligible subject matter, the USPTO on April 19, 2018, issued new guidance to examiners on how to determine when claim elements are directed to “well-understood, routine, conventional activities.”  Consistent with the recent Berkheimer…

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20

Mar 2018

SIPO Announced Changing of Composition of Patent Certificates and the Duplicates thereof

By: Han-Mei Tso, Ken Yu In order to better meet the needs of parties involved in economic and legal activities, the State Intellectual Property Office of the P.R.C. (“SIPO”) provides real-time, convenient and transparent information channels to patent right holders and the public through an internet platform.  Based on this foundation, SIPO has now further optimized the composition of patent certificates and duplicates thereof.  According…

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26

Feb 2018

The First Court Decision on GUI Design Patent Infringement in China

By: Han-Mei Tso and Jude Yi In the modern world, electronic devices such as computers, tablets, and smartphones, have become indispensable in our lives.  Graphical User Interface (GUI) plays a significant role in promoting ease of use and visual attraction to users of the products, particularly electronic and software products.  GUI often provides iconic features that cause consumers to immediately associate the GUI with a…

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15

Feb 2018

Subject Matter Patent Eligibility Update to Manual of Patent Examining Procedure (MPEP)

By: James Carlson The United States Patent and Trademark Office (USPTO) published an update to the Manual of Patent Examining Procedure (MPEP) this past January 2018.  In particular, the update includes changes to various MPEP sections focused on substantive and procedural implementation of the Supreme Court patent eligibility test put forth in Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347 (2014)…

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25

Jan 2018

EU Approach to Standard Essential Patents

By: Catherine Caspar and Elsa Benveniste Our technological era is founded on multiple standards. For example, each and every mobile phone and computer depends on telecommunication standards to communicate with other devices. Standardized technology can—and often does—incorporate proprietary technologies covered by patent rights. Such patent rights are often designated as “Standard Essential Patents” (or “SEPs”) since implementation of the patented invention is essential to comply…

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29

Dec 2017

Do You Own What You Think You Own? Part I: Patent Assets, Sales, and Good Faith Purchaser

By: Aron T. Griffith One aspect of managing a global patent portfolio is understanding what patents you have.  Likewise, when acquiring a patent portfolio, it is important to understand what patents you are buying. Asset purchase agreements often simply refer to an attached schedule of patents, and may or may not list all family members.  Oversimplified, “Company A conveys to Company B all of the…

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15

Dec 2017

Brazilian Government Considers Adopting Simplified Procedure for Granting Patents Without Substantive Examination

By: Guest Authors Saulo Calazans and Ivan Ahlert, partners of Dannemann Siemsen The Brazilian Ministry of Industry, Foreign Trade and Services (MDIC) and the National Institute of Industrial Property (INPI) announced the imminent entry into force of regulations for a simplified procedure for the allowance of patent applications. This initiative aims at addressing the considerable existing patent examination backlog. The proposal as submitted to public…

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30

Nov 2017

EPO Standard for Proof of Recording Patent Assignments

By: Catherine Caspar A European patent application may be transferred for one or more of the designated contracting states. Article 72 of the European Patent Convention (EPC) is an autonomous provision which exclusively governs the formal requirements of such transfers and defines a high standard of proof for the recordal of assignments. According to Article 72, “An assignment of a European patent application shall be…

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30

Nov 2017

China’s Guiding Cases in IP Law, Part III: Infringement of Design Patents

By: Han-Mei Tso and Ken J. Yu In March 2017, the Supreme People’s Court of China (the “Supreme Court”) published its 16th set of guiding cases, including ten intellectual property (“IP”) cases.  Among the ten IP guiding cases, three of them relate to patent infringement. In recent editions of the Osha Liang Newsletter, we discussed the patent infringement guiding case in connection with the liability…

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30

Oct 2017

2016 Patent Statistics Annual Report by SIPO

By: Han-Mei Tso and Jude Yi In September 2017, the State Intellectual Property Office of China (SIPO) published the 2016 Patent Statistics Annual Report. This annual publication includes comprehensive statistical data accumulated through the daily work of the SIPO, reflecting various aspects of China’s current patent landscape in the areas of patent procurement, maintenance, and administrative enforcement. The Report, which contains more than 200 pages,…

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30

Oct 2017

Oktoberfeisty: An Emerging Row over Patenting GMO 2-row

By: A. Rusty Rogers Following the issuance of a number of patents over genetically modified barley to Carlsberg and Heineken, controversy has erupted regarding unfair monopolies over European beer markets and fears of accidental infringement.  With similar patents in the U.S. and a number of other jurisdictions, it may be a matter of time before patents over living organisms are once again brought into the…

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25

Sep 2017

USPTO Business Methods Customer Partnership Meeting – Yes, Business Method Patents Still Exist in the United States

By: Robert Lord and David Rosenblitt The Customer Partnership Meeting was held on September 20, 2017, and was hosted by the United States Patent and Trademark Office (“USPTO”) at the Madison Auditorium in Alexandria, VA.  Osha Liang LLP attended the event at the San Jose, California regional office of the USPTO, via video conference.  The Osha Liang LLP attendees made up more than fifty percent…

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01

Aug 2017

China’s Guiding Cases in IP Law, Part II: Infringement of Patent for Pharmaceutical Preparation Process

By: Han-Mei Tso In March 2017, the Supreme People’s Court of China (“Supreme Court”) published its 16th set of guiding cases, including 10 intellectual property (“IP”) cases.  Among the 10 IP guiding cases, three of them relate to patent infringement. In the June 2017 Osha Liang Newsletter, we discussed the first patent infringement guiding case in connection with liability of the e-commerce platform.  In this…

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15

Jul 2017

Update on Patentable Biotechnological Inventions at the EPO

By: Alexandre Picot The European Patent Office made the decision to exclude from patentability plants and animals exclusively obtained by an essentially biological breeding process. The new provisions come into effect immediately, starting July 1, 2017. The European Patent Office (EPO) has decided to take account of the Notice of the European Commission from November 2016 on certain articles of Directive 98/44/EC of the European…

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05

Jul 2017

2017 Annual Statistics Report by Japan Patent Office

By: Shinya Kimura On June 29, 2017, the Japan Patent Office (JPO) released the JPO Annual Report 2017.[1]  The JPO Annual Report provides a comprehensive compilation of statistics on Japanese intellectual property (IP) and detailed explanations of the JPO’s recent developments on the IP system in Japan.  In our newsletter of July 2016, we reported on trends of the IP5 patent filings with statistical data…

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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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