Search Results for: Patent


05

Aug 2019

New Graphical User Interface (GUI) Protection in Japan

By Mutsumi Fukuoka 繁體中文 With the rapid spread of portable devices such as smartphones and tablet terminals in recent years, new protections are needed in Japan for user interface designs and functionality. In 2016, the Japan Patent Office (JPO) revised the Design Examination Guidelines to clarify that the Design Act protects displayed images necessary for performing functions of articles (corresponding to “manufactured articles” set forth…

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01

Jul 2019

Copyright before Contract: The Role of Copyright Preemption in Software Licensing

By James Carlson 繁體中文 In Universal Instruments Corp. v. Micro Systems Engineering, Inc., No. 17-2748 (2d Cir. May 8, 2019), an opinion from the U.S. Court of Appeals for the Second Circuit illustrates the fine line where contract terms may conflict with the U.S. Copyright Act.  Unlike with patents and trademarks, the Copyright Act provides an explicit preemption clause governing when a legal claim under…

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26

Jun 2019

New Graphical User Interface (GUI) Protection in Japan

By Mutsumi Fukuoka 繁體中文 Under Japanese law, graphical user interfaces (GUIs) are traditionally protected by the Patent Act in the same manner as other technologies.  For example, published Japanese Patent Application No. 2019-050004, assigned to Apple, Inc., discloses an electronic device that displays a special user interface.  In thisapplication, the special user interface displays different interface layers depending on different touch inputs to a touchscreen….

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26

Jun 2019

Supreme Court Update: Government Agencies Is Not a “Person” That May Initiate Post-Grant Proceedings

By Kevin Kuelbs 繁體中文 In Return Mail, Inc. v. United States Postal Service, No. 17-1594 (June 10, 2019), the Supreme Court of the United States issued a 6-3 decision holding that a government agency is not a “person” eligible to challenge patents under the USPTO’s various post-grant trial proceedings. Prior to the passage of the Leahy-Smith American Invents Act (AIA), there were two administrative options…

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04

Jun 2019

Senior Officers of AIPPI Visit China to Further International Cooperation of Intellectual Property Protection

By Han-Mei Tso 繁體中文 Senior officers of the International Association for the Protection of Intellectual Property (AIPPI) visited China to further communication and cooperation between China and AIPPI in the field of intellectual property protection. Visiting delegates included Ms. Renata Righetti, AIPPI President, and Osha Liang’s Managing Partner, Mr. Jonathan Osha, Reporter General of AIPPI. On May 29, 2019, senior officers of AIPPI visited the…

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03

Jun 2019

Lack of Constitutional Standing to Appeal Makes Section 315(e) Estoppel Questionable

By Suzanne Lecocke 繁體中文 Does 35 U.S.C. § 315(e) estoppel apply when a party has no constitutional standing to appeal, even though it has a right to appeal under 35 U.S.C. § 319?  In AVX Corp. v. Presidio Components, Inc., Appeal No. 18-1106 (Fed. Cir. 2019), the Federal Circuit dismissed an appeal by AVX of a Final Written Decision ofthe U.S. Patent Trial and Appeal…

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03

Jun 2019

Consumers Have Standing under Illinois Brick to Sue Apple for Antitrust-Violating App Store Practices

By Mark Westwood and James Carlson  繁體中文 Consumers Have Standing under Illinois Brick to Sue Apple for Antitrust-Violating App Store Practices In Apple Inc. v. Pepper et al., No. 17–204, 587 U.S. ___ (2019), the Supreme Court of the United States affirms that consumers have legal standing under Illinois Brick Co. v Illinois, 431 U.S. 720 (1977), to sue Apple for alleged antitrust practices regarding…

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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

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

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

When does Describing an Embodiment become a Clear and Unmistakable Disclaimer?

By Laura Witbeck What rises to the level of being a disclaimer of claim scope?  In other words, when do expressions made in the intrinsic evidence of a patent rise to the level of clearly disclaiming the scope of the claims from just providing background and explanation of concepts in the patent?  As of now, wording and context of patents at issue are analyzed in…

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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

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

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

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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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

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

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

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

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

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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