June 26th, 2018
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). 2018 U.S. LEXIS 3842 (2018). Infringement under […] Read More
Read MoreMay 3rd, 2018
Most in-house teams are confident that their standard employment agreement creates an existing “obligation to assign.” After a recent Federal Circuit case, they may want to review their internal documents and procedures. The case is Advanced Video Technologies LLC v. HTC Corp. (Jan. 11, 2018; […] Read More
Read MoreMarch 8th, 2018
In Polaris Indus., Inc. v. Arctic Cat, Inc., the Federal Circuit reversed in part the PTAB’s holding that claims were obvious because the PTAB failed to properly credit testimony on the secondary factors of nonobviousness. 2018 U.S. App. LEXIS 3168 (Fed. Cir. 2018). The Federal […] Read More
Read MoreFebruary 6th, 2018
In Core Wireless Licensing, S.A.R.L. v. LG Electronics, Inc., the Federal Circuit affirmed summary judgment that a claim for a “computing device configured to display” claimed patent eligible subject matter. Nos. 2016-2684 & 2017-1922 (Jan. 25, 1988 Fed. Cir.). The asserted patents disclosed improved display […] Read More
Read MoreJanuary 26th, 2018
In Arthrex, Inc. v. Smith & Nephew, Inc., the Federal Circuit addressed two important inter-partes review (“IPR”) procedural issues. The Federal Circuit addressed the issue of whether the Patent Trial and Appeal Board (“PTAB”) properly entered an adverse judgment against patent owner Arthrex. The Federal […] Read More
Read MoreNovember 6th, 2017
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 […] Read More
Read MoreAugust 23rd, 2017
Changes in employment are a fact of life in corporate R&D. That’s not necessarily a bad thing. An exiting inventor (“departing employee”) gets to experience different groups, technologies, and/or approaches, leading to greater expertise. Whoever steps into the departing employee’s role gets a growth opportunity. […] Read More
Read MoreMay 23rd, 2017
Historically, patent venue was interpreted based on two statutes. The patent venue statute provides that “any civil action for patent infringement may be brought in the judicial district where the defendant resides, or where the defendant has committed acts of infringement and has a regular […] Read More
Read MoreDecember 22nd, 2016
This blog post first ran in 2013, and is becoming something of a holiday tradition for the author. As the year winds down, tradition dictates that we reflect back on the year and, in some cases, resolve to do certain things differently. You can effectively […] Read More
Read MoreJuly 15th, 2016
In Bascom Glob. Internet Serv., Inc. v. AT&T Mobility LLC, No. 02015-1763 (Fed. Cir. June 27, 2016) the Federal Circuit reversed a finding that the claims of U.S. Patent 5,987,606 (the ‘606 patent) claim ineligible subject matter. Bascom, opinion at 2. In doing so, Bascom […] Read More
Read MoreDecember 14th, 2015
This blog post first ran in 2013, and is becoming something of a holiday tradition for the author. As the year winds down, tradition dictates that we reflect back on the year and, in some cases, resolve to do certain things differently. You can effectively […] Read More
Read MoreAugust 14th, 2015
The Federal Circuit, en banc, set forth new standards for establishing liability for direct infringement of a method claim under 35 U.S.C. § 271(a) where a single actor does not perform all the steps of claimed method, but multiple actors do perform all of the […] Read More
Read MoreJune 12th, 2015
In Ariosa Diagnostics, Inc. v. Sequenom, Inc., No. 2014-1139 (June 12, 2015 Fed. Cir.), the Federal Circuit upheld a grant of summary judgment of invalidity for Sequenom’s US Pat. No. 6,258,540, based on a finding that the claims were not directed to patent eligible subject […] Read More
Read MoreMarch 11th, 2015
In Pacing Techs., LLC v. Garmin Int’l, Inc. and Garmin USA, Inc., No. 2014-1396 (February 18, 2015 Fed. Cir.). the Federal Circuit upheld a disclaimer finding based on a statement that the all of the objects and features of the “ present invention” are accomplished […] Read More
Read MoreFebruary 4th, 2015
Federal Circuit Holds that a Decision to Institute an IPR is not Appealable After a Final Decision and Upholds the Broadest Reasonable Construction Standard for IPRs In in Re Cuozzo Speed Techs. LLC, No. 2014-1301 (Feb. 4, 2014 Fed. Cir.), the Federal Circuit rendered two […] Read More
Read MoreFebruary 4th, 2015
In Alice Corp. v. CLS Bank Int’l, 134 S. Ct. 2347 (2014) the Supreme Court reinforced the Mayo Collaborative Srvs. v. Prometheus Labs., Inc., 132 S. Ct. 1289 (2012) two-part test for assessing patent eligibility under 35 U.S.C. § 101 for computer-related inventions: (i) whether […] Read More
Read MoreJanuary 20th, 2015
Supreme Court Holds that Resolving Factual Disputes Based on Extrinsic Evidence During Claim Construction is Reviewed on Appeal Under the Clearly Erroneous Standard In Teva Pharm. USA, Inc. v. Sandoz, Inc., No. 13-854 (2015), the Supreme Court reaffirmed its decision in Markman v. Westview […] Read More
Read MoreDecember 28th, 2014
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. The overall message […] Read More
Read MoreDecember 8th, 2014
In DDR Holdings, LLC v. Hotels.com, L.P., No. 2013-1505 (Dec. 5, 2014 Fed. Cir.), the Federal Circuit held that claims directed towards solving the problem of website merchants having their users lured to other websites by clicking on advertising links on the merchant’s website claimed […] Read More
Read MoreOctober 23rd, 2014
LawMeet® – Eastern Regional Finals Litigators have long influenced legal education. As a result, law school competitions mainly center on classic litigator skills, such as brief drafting and oral arguments (i.e., moot court). When I was a law student, if you were interested in IP […] Read More
Read MoreSeptember 23rd, 2014
Apotex Inc. v. UCB, Inc., No. 2013-1674 (Aug. 15, 2014 Fed. Cir.). Since the Federal Circuit raised the standard for proving inequitable conduct in Therasense, Inc. v. Becton, Dickinson & Co., 649 F.3d 1276 (Fed. Cir. 2011) (en banc), there have been few affirmances of […] Read More
Read MoreAugust 19th, 2014
Medisim Ltd. v. BestMed, LLC In Medisim Ltd. v. BestMed, LLC, No. 2013-1451 (Fed. Cir. July 14, 2014), Chief Judge Prost authored a unanimous decision in which the Court ruled that defendant BestMed had not properly moved for judgment as a matter of law (“JMOL”) […] Read More
Read MoreJune 19th, 2014
The Supreme Court issued a blow against software and method patents on Thursday, affirming that a financial services method and systems claims were unpatentable subject matter under 35 U.S.C. § 101 in Alice Corporation Pty. Ltd. v. CLS Bank Int’l, No. 13-298 (June 19, 2014). […] Read More
Read MoreJune 10th, 2014
On June 4th, the Federal Circuit issued a decision regarding standing which raises issues for parties to consider in deciding whether to institute an Inter Partes Review (IPR), because it found that in some instances there is no right to appeal the Board’s IPR decision. […] Read More
Read MoreJune 2nd, 2014
The Supreme Court waded into patent litigation with two high profile decisions on June 2, 2014, one on indefiniteness and the other on inducement: Nautilus, Inc. v. Biosig Instruments, Inc. In Nautilus, Inc. v. Biosig Instruments, Inc., the court struck down the Federal Circuit’s “insolubly […] Read More
Read MoreApril 11th, 2014
Patents are enjoying an unprecedented amount of attention currently. For example, patents are frequently in the news in the context of acquisitions, and more often, litigation. While litigation is important (https://www.condoroccia.com/crk-expands-patent-litigation-practice), some studies suggest that less than 2% of patents are ever involved in litigation. […] Read More
Read MoreFebruary 20th, 2014
Say you plan a visit to a customer. As a salesperson, researcher, or marketer, you appreciate that it’s a top priority to make sure that a confidentiality agreement (CDA) is in place. The customer may have even told you that you’re covered. But as the meeting […] Read More
Read MoreJanuary 31st, 2014
Consulting relationships are a staple of today’s economy. Clients appreciate receiving a consultant’s expertise with relatively few strings attached. Consultants appreciate autonomy and the ability to leverage their experiences to multiple clients. Intellectual property (“IP”) is important to consulting at a fundamental level, since a […] Read More
Read MoreJanuary 16th, 2014
Are Your Agreement Drafts Sending The Wrong Signals? You understand the benefits of exchanging ideas with external parties. In fact, several times, you’ve found a strong value proposition for working together with a well-reputed, innovative, partner. Your team (and even your lawyer) has been on […] Read More
Read MoreJanuary 2nd, 2014
The U.S. House of Representatives passed the Innovation Act, “The Goodlatte” Bill, on December 5, 2013. The Senate is expected to pass the Innovation Act, or a similar bill. The Innovation Act focuses on patent litigation reform. But patent prosecution professionals should be aware of […] Read More
Read MoreDecember 19th, 2013
As the year winds down, tradition dictates that we reflect back on the year and, in some cases, resolve to do certain things differently. You can effectively leverage this frame of mind for patent portfolio management as well. Of course, “patent” in a portfolio context […] Read More
Read MoreDecember 4th, 2013
In the past five years, most of the major legal markets can name IP boutiques that dissolved or were absorbed by general practice firms. In a boutique, the entire law firm focuses on one or two areas of practice, thereby creating an “all the eggs […] Read More
Read MoreNovember 19th, 2013
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. Which type of external partner is right for you? In any […] Read More
Read MoreNovember 7th, 2013
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 […] Read More
Read MoreOctober 28th, 2013
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: Your definition of R&D spend may be […] Read More
Read MoreOctober 16th, 2013
Pronouncements that you need an IP strategy are practically cliché, but nonetheless true. Paraphrasing a mentor of mine, there’s a big difference between having a general strategic intent and a written plan. Putting specifics, timing, and deliverables in writing drives accountability and facilitates onboarding of […] Read More
Read MoreOctober 8th, 2013
Innovation review with input from Legal, Marketing, and Research (R&D) functions is one of the strongest value drivers in the IP world. The combination of perspectives gives a 3D picture that helps decision-makers see the underlying value and often focuses attention on potential issues sooner, […] Read More
Read MoreMarch 7th, 2013
Under current case law, the doctrine of joint infringement may be established through direct infringement under 35 U.S.C. 271(a), or may be established though inducement under 35 U.S.C. 271(b). Akamai Tech. v. Limelight Networks, 692 F.3d 1301 (Fed. Cir. 2012); Mckesson Tech. v. Epic Systems […] Read More
Read MoreSeptember 18th, 2012
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 […] Read More
Read MoreApril 20th, 2012
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 […] Read More
Read MoreApril 4th, 2012
Once a patent examiner makes a rejection of a patent application “final” the Applicant has very few options. Ordinarily, the Applicant can appeal, which is time consuming, or can file a request to reopen prosecution to present new or revised claims, which is costly. Now, […] Read More
Read MoreMarch 19th, 2012
Written by Michael T. Ghobrial, Michael Jordan, and Joseph R. Condo for the 28th Annual Joint Patent Practice Continuing Legal Education Seminar (www.jppcle.org), which will be held on April 17, 2012 in New York City. I. SUMMARY Under the majority’s rule in Marine Polymer I, arguments made before […] Read More
Read MoreFebruary 21st, 2012
A new fee schedule being proposed by the USPTO may create unexpected expenses for patent filers. The proposed new fees and fee increases are meant to help the USPTO cover its expenses (1). In some instances, the proposed fees may be unreasonable in relation to […] Read More
Read MoreFebruary 2nd, 2012
Law360, New York (January 26, 2012, 12:50 PM ET) — 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 […] Read More
Read MoreJanuary 11th, 2012
With the passage of the Leahy-Smith America Invents Act (AIA) in September 2011, the USPTO was expressly authorized by Congress to continue the expansion of the Track 1 Prioritized Patent Examination Program. Originally announced in the February 2011, the Track 1 program was formerly a […] Read More
Read MoreDecember 13th, 2011
The word “only” is one of those magic words in patent specifications and claims. The word conveys such a strong absolute that it tends to drown out other arguments. And, given the law of unintended consequences, patent drafters should have a very good reason to […] Read More
Read MoreNovember 17th, 2011
Attorneys from Condo Roccia Koptiw attended the Philadelphia Intellecutual Property Law Association’s (PIPLA) 88th Annual Judges Dinner on Thuresday, November 17, 2011. This year, the Dinner was held to honor the Hon. Sue. L. Robinson of the District Court for the District of Delaware who […] Read More
Read MoreOctober 20th, 2011
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. In Marine […] Read More
Read MoreOctober 4th, 2011
Condo Roccia Koptiw LLP is pleased to announce it has formed a partnership with CPA Global, the world’s top intellectual property (IP) management specialist, and will continue to use CPA Global’s FoundationIP platform to support Condo Roccia Koptiw’s patent portfolio and management practice. Offering an […] Read More
Read MoreSeptember 29th, 2011
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. Although the CAFC mentioned the “machine or transformation test,” […] Read More
Read MoreSeptember 23rd, 2011
When drafting claims practitioners often struggle defining limiting terms such as “a,” “at least one,” and “one.” However, the key to defining these terms may be to focus less on the term itself and focus more on the context surrounding the term. For example, the […] Read More
Read MoreSeptember 20th, 2011
The Federal Circuit struck down a computer readable medium (CRM), or Beauregard, claim under § 101. 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. In […] Read More
Read MoreSeptember 15th, 2011
There aren’t any no-brainers in patent law, but the USPTO’s ePetitions system comes close. In March, the USPTO began an automated filing and decision process for eight patent-related petitions through a new system called ePetitions. Not only does ePetitions allow practitioners to file the petitions […] Read More
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