Condo Roccia Blog

Intellectual property law constantly evolves, but we are here to help your business stay ahead.


Supreme Court Holds that Lost Profits are Obtainable for 35 U.S.C. § 271(f) Infringement

In WesternGeco LLC v. ION Geophysical Corp., the United States Supreme Court held in a 7-2 decision that lost profits are a proper damages remedy under 35 U.S.C. § 284 for infringing acts under 35 U.S.C. § 271(f)(2).

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Obligation to Assign in Employment Agreements

Most in-house IP teams are confident that their standard employment agreement creates an existing “obligation to assign.” After a recent Federal Circuit case, Advanced Video Technologies LLC v. HTC Corp. (Jan. 11, 2018), they may want to review their internal documents and procedures.

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Federal Circuit Reverses PTAB for not Properly Considering Expert Testimony of Commercial Success

Patent owners should consider submitting IPR evidence of commercial success supported by expert testimony comparing the claims to the sold devices, sales, and a nexus between the claims and the sales. IPR petitioners should not rely on the art alone and should submit rebuttal secondary factor evidence.

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Federal Circuit finds “Device Configured to Display” Claim not Abstract

The Federal Circuit’s holding builds on the Enfish line of cases in which the Federal Circuit has found claims directed to patent-eligible subject matter. Here, the claim’s recited positive structure was a “computing device” and a “display screen,” yet the Federal Circuit found that the claim was not abstract.

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Federal Circuit clarifies IPR Judgment-Estoppel Provisions

Federal Circuit Decides that IPR Judgment-Estoppel Provisions may apply to a Patent Disclaimed After a Petition is Filed but Before a Decision on Institution

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Michael Bonella Speaks on Post-issuance Proceedings

On November 1, 2017, Michael Bonella, a partner with Condo Roccia Koptiw LLP, presented at the IP Strategy Summit in New York City, NY. Michael was a member of a panel consisting of Edward Tempesta, Vice President and Senior Counsel IP, for Mastercard, Marc Began, former Assistant General Counsel and Assistant Chief IP Counsel, Novo Nordisk, and Atabak Royaee, Associate Director & Corporate Counsel, IP for Boehringer Ingelheim.

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Legal Opinions and Litigation Strategy

Since the Supreme Court’s Halo decision, we have seen some interesting decisions from district courts regarding opinion practice and willfull infringement. Though it doesn’t appear that we are headed back to the pre-Seagate era, the pendulum is at least starting to swing back in that direction. Here are a few interesting changes we have seen based on the district court cases we have been tracking.

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Federal Circuit Addresses Standards to Establish an Infringing “Use” of a Device Claim

A single actor can infringe a system claim by “use” even if another performs a claim limitation if the actor controls and benefits from another’s performance of that claim limitation.

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Protecting Your Company When Inventors Leave

Changes in employment are a fact of life in corporate R&D. That’s not necessarily a bad thing. But a departing employee scenario is associated with risks that include potential purloining of valuable information and a drain on legal resources.

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U.S. Supreme Court Limits Venue in Patent Infringement Cases

Venue in a patent infringement action is now limited to the place of incorporation or where the defendant has committed alleged infringement act and has a regular place of business.

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12 Holiday Ideas for your Patent Portfolio

Does a year-end patent portfolio assessment track holiday experiences? We draw parallels to decoration, shopping, parties, and thank-you’s to inspire you.

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Bascom Global: Federal Circuit Upholds Software Patent

The Federal Circuit explained that Section 101’s “inventive concept can be found in the non-conventional and non-generic arrangement of known, conventional pieces.”

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Breaking Down § 101 Barriers To Patentability For Software-Related Patents

Two recent Federal Circuit cases (Enfish, LLC v. Microsoft Corp. and TLI Comm. LLC v. A.V. Automotive, LLC) have helped give some much needed guidance to patent-eligible subject matter for the claims of software-related patents.

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IP Due Diligence Considerations for Corporations

There are many IP issues that can arise after a merger or an acquisition that can be prevented by performing a proper IP due diligence.

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6 Things to Do About Unsolicited Ideas

An Idea Submission Policy should reflect and further the client’s business goals. For example, companies with vibrant internal research and development may want a stronger policy to limit the risk that outsiders will claim that a company’s product or service came from them.

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12 Holiday Ideas for your Patent Portfolio

Does a year-end patent portfolio assessment track holiday experiences? We draw parallels to decoration, shopping, parties, and thank-you’s to inspire you.

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Philadelphia Women in IP Mentorship Program

CRK attorney Mu Yang announces the Philadelphia Women in IP Mentoring Program, sponsored by the Women in IP Subcommittee of the Philadelphia Bar Association

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Federal Circuit Redefines Liability for Direct Infringement

The Federal Circuit, en banc, set forth new standards for establishing liability for direct infringement of a method claim.

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Federal Circuit Invalidates Life Sciences Patent Under 101

The Federal Circuit, citing Mayo, held fetal testing development fell short of statutory patentable subject matter.

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Federal Circuit Finds Disclaimer in “Present Invention” Language

According to the Federal Circuit, such language is an alert “that the invention accomplishes all of its objects and features” and limits the claims.

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Federal Circuit Holds Decision to Institute IPR not Appealable

Federal Circuit holds PTO decision to institute an IPR not reviewable on appeal after a final decision; upholds broadest reasonable interpretation standard

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Will the Federal Circuit Clarify En Banc the Section 101 Test for Computer-Related Inventions?

Ultramercial petitions Federal Circuit for en banc review, alleging conflict between § 101, Alice, Ultramercial, and DDR.

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Supreme Court Reverses Federal Circuit in Teva

Supreme Court Holds in Teva that Resolving Factual Disputes on Extrinsic Evidence During Claim Construction is Reviewed under the Clearly Erroneous Standard

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Federal Circuit Provides RAND Damages Framework

In Ericcson, Inc. D-Link Sys., Inc., the Federal Circuit vacated a jury’s damages award of about $0.15/infringing device amounting to about $10 million in total damages for infringement of Ericcson patents that covered 802.11 standards and were subject to a RAND obligation.

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Federal Circuit Holds that Claimed Computing System Contains Patent Eligible Subject Matter

In DDR Holdings, LLC v. Hotels.com, L.P., No. 2013-1505 (Dec. 5, 2014 Fed. Cir.), the Federal Circuit found the claims had patent-eligible subject matter.

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Startup Enhances Legal Education

The IP LawMeet® is a type of “moot court” experience for students interested in a transactional practice.

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Federal Circuit Bolsters Inequitable Conduct Precedent

Apotex v. UCB serves up facts for Federal Circuit to find “but for” materiality in inequitable conduct case.

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Federal Circuit Flexes Procedural Muscles

Federal Circuit clarifies Rules on JMOL (Rule 50), New Trial (Rule 59), and Stays during Post-Grant Review.

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Supreme Court Undermines Business Method Patents?

The Supreme Court strikes a blow against software and business method patents.

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Inter Partes Review Appeal Rights Curtailed

Federal Circuit finds no subject matter jurisdiction where injury is limited to losing an Inter Partes Review (IPR).

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Supreme Court Wades Into Patent Litigation

The Supreme Court adds high profile decisions on indefiniteness and inducement to string of Federal Circuit reversals.

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7 Reasons to Increase Patent Filings

Yearly numbers of U.S. patent filings have increased to over half-a-million per year. Why you need to keep pace.

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Give Your CDA a Pre-Meeting Check-up

A recipient’s confidentiality obligations and exclusions are typical across most industries. Accordingly, the way they’re worded in your company’s first draft can speak volumes to the initiated about how you do business, and how fair, cooperative, and reasonable you’ll be over time.

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Intellectual Property Pitfalls in Consulting Agreements

Intellectual property (“IP”) is important to consulting at a fundamental level, since a consultant’s know-how is usually the reason the client selected them. At the same time, because a consultant’s business depends on what they know, there are a few IP-related pitfalls to consider.

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Do Your Agreement Drafts Send The Wrong Signals?

A recipient’s confidentiality obligations and exclusions are typical across most industries. Accordingly, the way they’re worded in your company’s first draft can speak volumes to the initiated about how you do business, and how fair, cooperative, and reasonable you’ll be over time.

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Michael A. Koptiw, Attorney, Patent Procurement

H.R. 3309 is More Than Just Litigation Changes: Patent Prosecution Issues in the Innovation Act

Patent prosecution professionals should be aware that a few provisions of the Innovation Act may directly affect their work – provisions related to obviousness-type double patenting, patent term adjustment, declarations, assignments, and PCT applications.

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12 Holiday Ideas for your Patent Portfolio

Does a year-end patent portfolio assessment track holiday experiences? We draw parallels to decoration, shopping, parties, and thank-you’s to inspire you.

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Are IP Boutiques Endangered? Hardly.

We believe that the IP boutique model is as compelling as ever. Here are some of the top reasons clients love IP Boutiques…

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Pump Up Your Innovation: Collaboration with External Partners

What if you’ve read all my previous blogs on the subject and exhausted the internal ways to pump up your innovation pipeline? Working with external partners adds complexity, but can result in new IP.

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Pump Up Your Innovation: Five Ways to Incentivize Invention Disclosures

This series of blogs focuses on ways to pump up your innovation pipeline. It’s not very insightful to point out that your innovation pipeline depends on the ability of your inventors. But surprisingly, the bottleneck is not usually their ability to invent things – it’s their ability to communicate what they’ve invented.

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Pump Up Your Innovation: Are You Getting Enough IP For Your R&D Dollars?

Conventional wisdom expects a certain correlation between R&D spent and patent applications filed. If you’re doing the things I mentioned in my previous blogs, but are still not happy with your applications/R&D spend metric, there are several possibilities…

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Pump Up Your Innovation: Put Your IP Strategy In Writing

Innovation review with input from Legal, Marketing, and Research (R&D) functions is one of the strongest value drivers in the IP world.

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Pump Up Your Innovation: The Power of Cross-Functional Teams

Innovation review with input from Legal, Marketing, and Research (R&D) functions is one of the strongest value drivers in the IP world.

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Michael T. Ghobrial, Attorney, Patent Procurement, Patent Litigation, Trademarks

Move, Inc. v. Real Estate Alliance, LTD – joint infringement under 271(b)

In Move, the Court Appeals for the Federal Circuit clarified that joint infringement may be established through inducement by demonstrating that an accused infringer had knowledge of an patent, performed some limitations of a claim from the patent, and induced others to perform the remaining limitations of the claim.

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Joseph R. Klinicki, Attorney, Patent Procurement, Patent Litigation

Damages for Patent Infringement: Is it a choice between $1 billion or nothing at all?

Apple’s intellectual property has been in the news quite a bit lately. In what had to be the most publicized patent trial in at least half a decade, a California jury recently awarded the consumer electronics giant $1.05 billion in damages due to competitor Samsung’s infringement of various utility and design patents (Apple v. Samsung, 11-CV-01846-LHK (N.D. Cal., August 2012)). On the other hand, Apple v. Samsung is not the only patent litigation that has attempted to value damages caused by the infringement of Apple’s IP.

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Joseph R. Klinicki, Attorney, Patent Procurement, Patent Litigation

Inventorship dispute? Take Immediate Action to Protect Your Rights

With technological advancements in data communication, networking, and file management systems making it easier than ever to work with anyone around the world at any time of day, joint ventures between companies and other cooperative partnerships have continued to increase in number and importance over the past decade. However, when multiple companies work together to develop technological innovations, issues may arise regarding the ownership of any intellectual property that arises from the joint work.

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Michael A. Koptiw, Attorney, Patent Procurement

New USPTO Program Offers a Second Chance After Final Rejection

An interesting pilot program at the PTO will credit examiners three hours to consider after final responses.

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Will post grant amendments under AIA have the same effect as Marine Polymer?

Under the majority’s rule in Marine Polymer I, arguments made before the US Patent and Trademark Office (USPTO) during reexamination that change the scope of a claim will trigger absolute intervening rights for an accused infringer under 35 U.S.C. §§ 252 and 307(b). Marine Polymer Techs. v. HemCon, Inc., 659 F.3d 1084, 1092 (Fed. Cir. 2011) (hereinafter “Marine Polymer I”). Thus, under the majority’s rule, all damages for the period before the issuance of the reexamination certificate will be eliminated. Id. at 1087. However, the en banc review rejected the majority’s rule in Marine Polymer I in favor of the rule promulgated by Circuit Judge Lourie’s dissenting opinion in Marine Polymer I because the majority’s rule ignores the literal text of 35 U.S.C. §§ 307(b) and 316(b). Marine Polymer Techs. v. HemCon, Inc., Slip. Op. at 21, 26 (Fed. Cir. 2012) (en banc; hereinafter “Marine Polymer II”).

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Stuart A. Schanbacher, Attorney, Patent Procurement, Patent Litigation

Deadline to Fight Proposed Patent Prosecution Fees Approaching

A new fee schedule being proposed by the USPTO may create unexpected expenses for patent filers. Companies should review the proposed fee schedule to determine if any of the proposed fees will disproportionately affect prosecution costs.

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Stuart A. Schanbacher, Attorney, Patent Procurement, Patent Litigation

2 PCT Written Opinions For The Price Of 1

On Aug. 31, 2011, the European Patent Office issued new procedures making it much easier to get a second written opinion in Patent Cooperation Treaty patent applications. The new procedures are applicable when the EPO is the International Preliminary Examining Authority (IPEA) and are effective for applications in which the International Preliminary Examination Report (IPER) is due after Dec. 1, 2011.

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Joseph R. Klinicki, Attorney, Patent Procurement, Patent Litigation

Track 1 Prioritized Exam: Potentially Worth the Upfront Investment

The Track 1 program may be an important tool for applicants looking to receive faster allowances for their most important cases. Although the $4,800 fee (which is in addition to filing/search/examination fees) may make the program a little too pricey for lower priority applications, the Track 1 program should definitely be considered for more foundational innovations that could have greater value in the marketplace.

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Michael A. Koptiw, Attorney, Patent Procurement

“Only” in a patent specification? Only if you really mean it

Given the law of unintended consequences, patent drafters should have a very good reason to use this word in their applications.

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Michael T. Ghobrial, Attorney, Patent Procurement, Patent Litigation, Trademarks

Marine Polymer v. HemCon – Intervening Rights

Arguments made to the PTO during reexamination can amend the scope of claims and trigger absolute intervening rights for the accused infringer under 35 U.S.C. §§ 252 and 307(b), thereby eliminating all damages for the period before the issuance of the reexamination certificate.

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Michael T. Ghobrial, Attorney, Patent Procurement, Patent Litigation, Trademarks

Ultramercial v. Hulu

In Ultramercial, the CAFC held that a method claim for distributing copyrighted products over the Internet was patentable subject matter under 35 USC 101 due to the programing complexity required to carry out the claimed elements. This is probably as close as we are going to get as an apology for Bilski and Cybersource.

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Michael T. Ghobrial, Attorney, Patent Procurement, Patent Litigation, Trademarks

IGT v. Bally Gaming, Inc.

The term “one” is defined by the words and context that surround it and may mean “one and only one” or “at least one.”

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Michael A. Koptiw, Attorney, Patent Procurement

Beauregard claims won’t save you from post-Bilski invalidity analysis

In Cybersource Corp. v. Retail Decisions, Inc., the court held that the CRM limitation in the claim did not make an otherwise unpatentable method patent-eligible under § 101. Patent professionals should consider this opinion when drafting and reviewing software cases.

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Michael A. Koptiw, Attorney, Patent Procurement

E-filing patent petitions – just do it

There aren’t any no-brainers in patent law, but the USPTO’s ePetitions system comes close.

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