Audrey A. Millemann

Shareholder


Experience

Audrey is a shareholder in the firm’s Intellectual Property and Litigation groups. She is a litigator and a registered patent attorney.

Audrey has over 30 years of experience as a business litigator. She has concentrated in intellectual property litigation, including patent, trademark, trade dress, copyright, and trade secret matters. She has represented both plaintiffs and defendants in a variety of courts, including the E.D. California, N.D. California, C.D. California, N.D. Illinois, and District of Massachusetts. Audrey has also represented clients in proceedings before the Patent Trial and Appeal Board under the America Invents Act and the Trademark Trial and Appeal Board.

Audrey also has extensive experience litigating and advising clients in the areas of antitrust (Sherman Act, Robinson-Patman Act, Cartwright Act) and unfair competition (Lanham Act, Unfair Competition Law, Unfair Practices Act) in both federal and state courts. She has handled cases involving monopolization, price discrimination, tying, price fixing, below-cost pricing, secret rebates, and locality price discrimination.

Audrey’s clients have included firms that produce chemicals, medical devices, health and nutraceutical products, software, insurance products, and continuing education products.


Audrey advises clients on all issues of intellectual property law, including ownership, infringement, invalidity, and patentability. She has also written and obtained US and foreign patents for chemical compositions, biologically active compounds, methods of detecting disease at the cellular and molecular levels, methods of screening for cancer cells, medical devices, biotechnology, computer software, business methods, and mechanical devices.

Before joining Weintraub Tobin in 1990, Audrey practiced for four years in Los Angeles, focusing on litigation involving business and entertainment. In 1989, in a high-profile paternity case in Los Angeles, Audrey obtained the first court order, in any California criminal or civil case, admitting evidence of DNA “fingerprinting.”

Audrey’s undergraduate and graduate degrees focused on cell and developmental biology and included extensive coursework in biochemistry and genetics. During and after graduate school, Audrey worked in the area of recombinant DNA technology.

State Bar of California, Anti-Trust and Unfair Competition, Intellectual Property Law and Litigation Sections
Member

Sacramento County Bar Association, Intellectual Property Law Section
Member

Meritas, Sacramento
Member

Awards

AV® Preeminent™ Rating, Martindale-Hubbell®

Sacramento Magazine’s Top Lawyers List, 2015 – Antitrust

Sacramento Magazine’s Top Lawyers List, 2015-2020 – Intellectual Property, Intellectual Property Litigation

Sacramento Magazine’s Top Lawyers List, 2017- Litigation-Patents

Sacramento Magazine’s Top Lawyers List, 2019 – Trade Secrets

Sacramento Business Journal’s Best of the Bar, 2014, 2016 & 2018-2019

Northern California Super Lawyer, 2004, 2007-2020

J.D., University of California, Davis, 1986

M.S., Oregon State University, 1982

B.A., summa cum laude, Oregon State University, 1978

Postponed: Don’t Let Your IP Float Away in the Cloud!

Summary of Program Join attorneys from Weintraub Tobin’s Intellectual Property Group (Jo Dale Carothers and Audrey Millemann) for this 1 hour MCLE program. Program Highlights Overview of Cloud Computing and Cloud Storage Who owns the information in the Cloud?

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21 Weintraub Tobin Attorneys Included in Sacramento Magazine’s 2020 Top Lawyers List

Sacramento, CA  – Weintraub is pleased to announce that 21 Firm attorneys have been recognized as 2020 Top Lawyers by Sacramento Magazine. The full list of 2020 Top Lawyers will be featured in the August,

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36 Weintraub Tobin Attorneys Named to 2020 Northern California Super Lawyers and Rising Stars Lists; Retain Highest Percentage of Sacramento Top 25 List

Weintraub Tobin is pleased to announce that 36 Weintraub Tobin attorneys have been included on the 2020 Super Lawyers and Rising Star lists for outstanding attorneys in Northern California.  In addition,

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14 Weintraub Tobin Attorneys Named to Best of the Bar 2019

  SACRAMENTO, California  – Weintraub Tobin congratulates its 14 attorneys who have been included in Sacramento Business Journal’s Best of the Bar 2019. Attorneys selected to the 2019 Best of the Bar list include Gary L.

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31 Weintraub Tobin Attorneys Named to 2019 Northern California Super Lawyers and Rising Stars Lists

Weintraub Tobin is pleased to announce that more than 30 Weintraub Tobin attorneys have been included on the 2019 Super Lawyers and Rising Star lists for outstanding attorneys Northern California.  In addition,

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24 Weintraub Tobin Attorneys included in Sacramento Magazine’s Top Lawyers List 2019

  Weintraub is pleased to announce that 24 of the firm’s attorneys have been recognized as 2019 Top Lawyers by Sacramento Magazine.  The full list of 2019 Top Lawyers will be featured in the August,

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Seventeen Weintraub Tobin Attorneys Named to Sacramento Business Journal’s Best of the Bar 2018

SACRAMENTO, California – August 24, 2018 – Weintraub Tobin Chediak Coleman Grodin Law Corporation congratulates its seventeen attorneys who have been included in Sacramento Business Journal’s Best of the Bar 2018.

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24 Weintraub Tobin Attorneys included in Sacramento Magazine’s Top Lawyers List 2018

SACRAMENTO, California – July 19, 2018 – Weintraub Tobin Law Corporation congratulates its 24 attorneys who have been included in Sacramento Magazine’s 2018 Top Lawyer List. David Adams | Business/Corporate, Securities &

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37 Weintraub Tobin Attorneys Named Among 2018 Super Lawyers and Rising Stars

Super Lawyers has released its Northern California, Southern California and San Diego lists of outstanding attorneys for 2018, on which 37 Weintraub Tobin attorneys have been included. Five Weintraub Tobin attorneys received special recognition as a Top 25 Sacramento Super Lawyer.

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21 Weintraub Tobin Attorneys included in Sacramento Magazine’s Top Lawyers List 2017

SACRAMENTO, California – July 26, 2017 – Weintraub Tobin Law Corporation congratulates its 21 attorneys who have been included in Sacramento Magazine’s 2017 Top Lawyer List. Brendan Begley | Appellate Gary L.

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36 Weintraub Tobin Attorneys Named Among 2017 Super Lawyers and Rising Stars

Super Lawyers has released its Northern California, Southern California, and San Diego lists of outstanding attorneys for 2017, on which 36 Weintraub Tobin attorneys have been included. Six Weintraub Tobin attorneys received special recognition as a Top 25 Sacramento Super Lawyer.

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Twelve Weintraub Tobin Attorneys Named to Sacramento Business Journal’s Best of the Bar 2016

  SACRAMENTO, California – August 26, 2016 – Weintraub Tobin Chediak Coleman Grodin Law Corporation congratulates its twelve attorneys who have been included in Sacramento Business Journal’s Best of the Bar 2016.

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18 Weintraub Tobin Attorneys Named to Sacramento Magazine’s Top Lawyers List 2016

  SACRAMENTO, California – July 25, 2016 – Weintraub Tobin Law Corporation congratulates its 18 attorneys who have been included in Sacramento magazine’s 2016 Top Lawyer List. David C. Adams | Business/Corporate, 

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33 Weintraub Tobin Attorneys Named Among 2016 Super Lawyers and Rising Stars

Super Lawyers has released its Northern California, Southern California, and San Diego lists of outstanding attorneys for 2016, on which 33 Weintraub Tobin attorneys have been included. Three Weintraub Tobin attorneys received special honors in their respective regions.

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WATCH OUT! SUPREME COURT OPENS DOOR TO TREBLE DAMAGES IN PATENT CASES!

Up until now, it has been nearly impossible for a plaintiff to recover enhanced (up to treble) damages in patent infringement cases.  The current test for enhanced damages, set forth by the Federal Circuit Court of Appeals in 2007 in In Re Seagate Technology,

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20 Weintraub Tobin Attorneys Named to Sacramento Magazine’s Top Lawyers List 2015

  SACRAMENTO, California – August 7, 2015 – Weintraub Tobin Chediak Coleman Grodin Law Corporation congratulates its 20 attorneys who have been included in Sacramento magazine’s  Top Lawyer List 2015. David C.

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37 Weintraub Tobin Attorneys Named Among 2015 Super Lawyers and Rising Stars

Super Lawyers has released its Northern California, Southern California, and San Diego lists of outstanding attorneys for 2015, on which 37 Weintraub Tobin attorneys have been included. Eight Weintraub Tobin attorneys received special honors in their respective regions.

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Supreme Court Hits Home Run for 401(K) Plan Beneficiaries

By Audrey Millemann This week’s decision by the United States Supreme Court in Tibble v. Edison International, 2015 U.S. LEXIS 3171 (May 18, 2015), is expected to trigger an increase in lawsuits against 401(k) plan fiduciaries.

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Weintraub Tobin Raises Money for American Heart Association

Heart Walk Logo For a third year in a row, Weintraub Tobin is working to raise funds for cardiovascular diseases and stroke by partaking in the American Heart Association Heart Walk on Saturday,

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Seven Weintraub Tobin Attorneys Included in the Top 25 List by Super Lawyers

Download: Super Lawyers 2013.pdf SACRAMENTO, Calif., July 8, 2013 – Weintraub Tobin Chediak Coleman Grodin, a business law and business litigation law firm congratulates seven attorneys on being named as one of the Top 25 Sacramento Super Lawyers of 2013.

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Weintraub Tobin Client Tracy Letts Wins Tony Award

Weintraub Tobin Chediak Coleman Grodin Law Corporation is proud to announce that our client Tracy Letts has won a 2013 Tony Award for his role in “Who’s Afraid of Virginia Woolf?” Letts took home the award Sunday for best performance by an actor in a play for his portrayal of George in Edward Albee’s famous play.

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Legendary and the Dowdle Brothers to Make Low Budget Thriller (Variety)

Dowdle Brothers Weintraub clients John and Drew Dowdle will co-write the upcoming microbudget thriller: “As Above, So Below” for Legendary Pictures. According to Variety, the film will be set in the catacombs beneath Paris where two archeologists look for hidden treasure.

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Law360: Luggage Co. Says Marvel’s ‘Avengers’ Box Set Rips Off Suitcase

Attorneys Anjani Mandavia, Audrey Millemann and Marvin Gelfand filed a trademark action against Marvel Entertainment. The case has been reported in the following publications: Law360: Luggage Co. Says Marvel’s ‘Avengers’ Box Set Rips Off Suitcase (Published August 3,

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Gary Bradus Named as One of the Top 100 Northern California Super Lawyers in 2012

SACRAMENTO, Calif., July 25, 2012 – Weintraub Tobin Chediak Coleman Grodin, a business law and business litigation law firm, congratulates Gary Bradus on being named as one of the Top 100 Northern California Super Lawyers of 2012.

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It’s Official – Weintraub Merges with San Francisco Firm Tobin & Tobin

Weintraub Genshlea Chediak Law Corporation and Tobin & Tobin, a professional corporation, jointly announce the merger of their business law and litigation firms. The combined firm will be named Weintraub Genshlea Chediak Tobin &

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Twelve Weintraub Genshlea Chediak Attorneys Honored as Northern California Super Lawyers and Rising Stars

SACRAMENTO, Calif., July 14, 2010 – Weintraub Genshlea Chediak, a Sacramento-based business law and business litigation law firm congratulates its twelve attorneys who were named as 2010 Northern California SuperLawyers and Rising Stars: SuperLawyers: Gary L.

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Weintraub Genshlea Chediak Announces New Los Angeles Office

Sacramento’s fifth-largest law firm quietly opened a branch in Los Angeles this week. Weintraub Genshlea Chediak Law Corp. has hired two litigators in an office on Wilshire Boulevard to solidify a toehold in the intellectual property,

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Fourteen Weintraub Genshlea Chediak Attorneys Honored As 2009 Nor Cal Super Lawyers and Rising Stars

Fourteen Weintraub Genshlea Chediak Attorneys Honored as 2009 Northern California Super Lawyers and Rising Stars SACRAMENTO, Calif., July 21, 2009 –Weintraub Genshlea Chediak, a Sacramento-based business law and business litigation law firm congratulates its fourteen attorneys who were named as 2009 Northern California Super Lawyers and Rising Stars: Super Lawyers: Dale C.

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Six Weintraub Genshlea Chediak Attorneys Honored As 2008 Northern California Super Lawyers

Six Weintraub Genshlea Chediak Attorneys Honored as 2008 Northern California Super Lawyers SACRAMENTO, Calif., July 31, 2008 –Weintraub Genshlea Chediak, a Sacramento-based business law and business litigation law firm congratulates its six shareholders who were named as 2008 Northern California Super Lawyers: Dale C.

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Seven Weintraub Genshlea Chediak Attorneys Honored as 2007 Northern California Super Lawyers

Seven Weintraub Genshlea Chediak Attorneys Honored as 2007 Northern California Super Lawyers SACRAMENTO, Calif., July 27, 2007 –Weintraub Genshlea Chediak, a Sacramento-based business law and business litigation law firm congratulates its seven shareholders who were honored as Northern California Super Lawyers as published in San Francisco Magazine and Northern California Super Lawyers Magazine.

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Make Sure You Follow the Patent Local Rules!

An unpublished decision from the Northern District of California emphasizes how important it is for attorneys to follow patent local rules. Patent local rules are rules that many federal district courts have for patent infringement cases.

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PTO Fast Tracks COVID-19 Patent and Trademark Applications

The United States Patent and Trademark Office has established a new program for prioritized examination for patent applications for inventions related to COVID-19 and for trademark applications for marks used for certain medical products and services used in connection with COVID-19.

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No, Machines Cannot Be Inventors!

Eventually, it was bound to happen. A patent application was filed by a machine. Well, not exactly. A human being filed a patent application naming a machine as the inventor. The machine was an artificial intelligence machine described as a “creativity machine.” Its name was listed as “DABUS Invention Generated by Artificial Intelligence.” The invention was called “Devices and Methods for Attracting Enhanced Attention.” The human’s name was Stephen L.

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Supreme Court Limits Appeals to Prevent More Bad Patents

A party accused of infringing a patent may challenge the validity of the patent in the federal court infringement litigation or in separate administrative proceedings in the Patent and Trademark Office’s Patent Trial and Appeal Board (PTAB).

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Patent, Trademark, and Copyright Deadlines Extended Due to COVID-19

On March 31, 2020, the U.S. Patent and Trademark Office announced that, pursuant to the Coronavirus Aid, Relief, and Economic Security Act, certain deadlines for patent and trademark applications would be extended. 

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IPRs Cannot Be Used to Challenge Patents for Indefiniteness

There are a number of requirements that must be met for an invention to be patentable. The invention must be novel (unique) and nonobvious (i.e., a person skilled in the field of the invention would not have found the invention obvious based on the existing knowledge in the field).

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Copying by Competitors is Evidence of Nonobviousness of an Invention

The Patent and Trademark Office (PTO) may reject a patent application on several different grounds.  One of those grounds is obviousness.  Under 35 U.S.C. § 103, if an invention is obvious to a person of ordinary skill in the art,

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Patent Priority Dates Must Be a Priority!

The priority date of a patent is an important aspect in protecting intellectual property. The priority date is the earliest possible filing date that a patent application is entitled to rely on;

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What Happens When the Intellectual Property Laws Clash with the Antitrust Laws?

Should a company be required to license its patents to a competitor?  That’s one question that arises when intellectual property law and antitrust law intersect. The Sherman Act, section 1, prohibits concerted action (agreements,

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When Does A Patent Expire? Ask the Federal Circuit!

Before 1995, the term of a U.S. utility patent was 17 years from the day the patent issued.  In 1994, the federal statutes were changed to make the patent term 20 years from the effective filing date of the patent application. 

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Landlords – Watch out for Trademark-Infringing Tenants!

Landlords whose tenants sell counterfeit goods can be liable for trademark infringement if they have knowledge of the infringing acts or are willfully blind to the infringement. In Luxottica Group v.

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Do Your Homework Before Suing for Patent Infringement!

The federal patent laws provide for an award of attorneys’ fees to the prevailing party in exceptional patent infringement cases.  35 U.S.C. §285.  An exceptional case is determined based on the totality of the circumstances. 

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When is an Invention Obvious?

To be patentable, an invention must satisfy two key requirements, as determined by the U.S. Patent and Trademark Office (PTO).  First, the invention must be novel.  This means that the same invention cannot have been disclosed in a single prior art reference. 

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Supreme Court: Federal Government Cannot Challenge Patents in PTAB

The validity of a patent can be challenged in four different types of proceedings: ex parte reexamination, inter partes review, post grant review, and covered business method review. An ex parte reexamination is initiated by any person or by the PTO’s director to request that the PTO internally reexamine the claims of the patent based on prior art.

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If You Can’t Describe It, You Can’t Patent It!

One of the requirements for obtaining a patent is the written description requirement – the specification must include a written description of the invention. 35 U.S.C §112(a).  This requirement means that the specification must fully disclose what the invention is. 

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Are Rules for Playing a Game Patentable?

A lot of things are patentable.  Under 35 U.S.C. §101, machines, articles of manufacture, processes, and compositions of matter (including new chemical compounds) are patentable.  But some things are not:  the exceptions are laws of nature,

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Supreme Court: File Your Copyright Application!

This week, the Supreme Court resolved a split in the circuits regarding an issue in copyright law that affects copyright owners in California.  Until now, the law in the Ninth Circuit was that a copyright owner could file suit for infringement as soon as they filed a copyright application in the Copyright Office. 

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Whose “Baby” Is It?

When a new invention is created (if it is worth anything), everyone wants to take credit. Figuring out whose “baby” it is, is a difficult question. What is an inventor? Who is the inventor?

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Patent License Royalty Rates are Strong Evidence of Damages

The Federal Circuit Court of Appeals has affirmed a jury verdict of $140 million in a patent infringement case.  The damages were based on a reasonable royalty.  The case is Sprint Communications Co.,

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What’s New This Christmas?

Every year about this time, I search the PTO database for any new patents on inventions related to Christmas. This year turned up several. Interestingly, most of the ones I looked at issued at October and November of this year.

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Ordering Pizza is Not Patentable!

Some things are not patentable: laws of nature, natural phenomena, and abstract ideas.  The Supreme Court has long held that inventions falling within these categories are not patentable; they are patent-ineligible subject matter. 

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Accused Patent Infringers – Don’t Wait to File an Inter Partes Review!

An inter partes review (IPR) is one of the ways a party can challenge a patent in the Patent and Trademark Office. This procedure was added by the America Invents Act,

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Federal Circuit Limits Patent Infringement Damages

The Federal Circuit Court of Appeals has taken aim at sky-high patent infringement damages. In Power Integrations, Inc. v. Fairchild Semiconductor International, Inc., 2018 U.S. App. LEXIS 18177 (July 3, 2018),

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Ninth Circuit Denies Copyright Protection to Monkeys

Does anyone think that a monkey has standing to bring a copyright infringement lawsuit? In Naruto v. Slater, 888 F.3d 418 (9th Cir. 2018), the Ninth Circuit Court of Appeals said no,

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Patent Myths Corrected – Part One

Patent law is a complicated area of law governed by a confusing set of statutes and regulations that are interpreted by the United States Patent and Trademark Office (PTO) and the federal courts.

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How To Protect Your Clients’ IP

A business’s intellectual property may be its most valuable asset. Whether it is biotechnology, trade names, business methods, or computer software, intellectual property should be protected to the greatest extent possible in order to maximize the value of the business.

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Do Secret Sales Bar Patents?

There is some confusion about what constitutes an “on-sale bar” in patent law. The on-sale bar, set forth in 35 U.S.C §102, prohibits a patent if the invention sought to be patented was offered for sale or sold more than one year before the patent application was filed.

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Federal Circuit Weighs in on Reasonable Royalties as Patent Infringement Damages

In Exmark Manufacturing Company v. Briggs & Stratton Power Products, 2018 U.S. App. LEXIS 783 (Fed. Cir. 2018), the Federal Court of Appeals addressed patent infringement damages based on a reasonable royalty.

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Contingent Patent Ownership is Not Sufficient for Federal Court Jurisdiction

There is no federal court jurisdiction for disputes involving patents where the claimant does not actually own the patents. The possibility that one might own a patent, if a contingent future event occurs,

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Can Patent Owners Buy Sovereign Immunity?

The latest issue in the patent world is one no one would have expected – sovereign immunity. How did this issue arise? Allergan, the company that makes the dry-eye drug Restasis,

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Federal Circuit: PTO Can’t Shift Burden of Proof of Patentability to Applicant

In In re Stepan Co., 2017 U.S. App. LEXIS 16246, decided August 25, 2017 the Federal Circuit Court of Appeals made it very clear that during patent prosecution, the burden of proving patent ability lies with the PTO examiner.

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Patent Myths Corrected – Part Two

  My last column was the first of two columns discussing some of the most common misconceptions or myths about patents.  Here is the second part, starting with number five on my list.

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Patent Myths Corrected – Part One

Patent law is a complicated area of law governed by a confusing set of statutes and regulations that are interpreted by the United States Patent and Trademark Office (PTO) and the federal courts. 

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SUMMER FUN!

Because it’s summertime, I thought we should take a break from “serious” intellectual property articles.  So, instead, here are some patented inventions that you might see this summer. A baseball with a speedometer seems like a great idea.  

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Supreme Court Cuts Back Patent Owners’ Post-Sale Rights

Patent owners can no longer restrict the use of their patented products after the products are sold.  Under the doctrine of patent exhaustion, a patent owner’s rights are “exhausted” once the patent owner sells the product. 

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Everything Old is New Again!* Not So!

*This line is the title of a song written by Peter Allen and Carole Bayer Sager that was performed in Bob Fosse’s movie “All that Jazz.”  The song was a hit,

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More Patent Invalidated as Abstract Ideas

Apple just escaped a $533 million jury verdict by invalidating the plaintiff’s patents on the grounds that the patents cover abstract ideas. The case is Smartflash, LLC v. Apple Inc., decided by the Federal Circuit Court of Appeals on March 1,

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Divided Infringement – Expanding Patent Infringement Liability

In 2015, the Federal Circuit Court of Appeals cast the net of patent infringement liability even more broadly, to cover direct infringement by “divided” (or “joint”) infringement.  Akamai Technologies, Inc. v.

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COVERED BUSINESS METHODS PATENTS — NOT SO BROAD!

The Federal Circuit Court of Appeals has reminded the Patent Trial and Appeal Board of the U.S. Patent and Trademark Office in no uncertain terms that covered business method review has limits. 

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Holiday Horror Series: Part 4 – HO, HO, HO! AND FA-LA-LA-LA-LA! MORE CHRISTMAS PATENTS

The last time I checked (which was a couple of years ago), I found over 900 U.S. patents in the U.S. Patent and Trademark Office’s database that had the word “Christmas” in the title. 

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Holiday Horror Series: Part 1- Could You Patent Christmas?!

The holidays are upon us.  Given that everything seems to be protected by intellectual property rights, could someone protect Christmas? The most likely candidate to try to patent Christmas would be Santa Claus. 

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Supreme Court May Cut Back Laches in Patent Infringement Cases

The United States Supreme Court is considering whether the doctrine of laches will bar a patent infringement claim filed within the Patent Act’s six-year damage limitations period set forth in 35 U.S.C.

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Animation Software Patent Survives Alice Scrutiny

The application of the Supreme Court’s decision in Alice Corp. v. CLS Bank International, 134 S. Ct. 2347. (2014) has made it almost impossible to patent software.  The United States Patent and Trademark Office is increasingly rejecting patent applications for software under the Alice test on the grounds that the software is an abstract idea,

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How BREXIT Will Affect Intellectual Property

As everyone knows, in June, the United Kingdom passed the BREXIT referendum (driven by British voters), voting to exit the European Union.  What affect does BREXIT have on intellectual property rights in the United Kingdom and the European Union?  

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NO ICE, PLEASE!

California’s unfair competition and consumer protection laws protect consumers from false representations about products or services.  These laws include the Unfair Competition Law (Business and Professions Code §17200, et seq.), the False Advertising Law (Business and Professions Code §17500,

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INDUCED INFRINGEMENT BECOMES MORE DIFFICULT TO DEFEND

In Warsaw Orthopedic, Inc. v. NuVasive, Inc. (June 3, 2016) 2016 U.S. App. LEXIS 10092, the Federal Circuit Court of Appeals broadly interpreted the Supreme Court’s test for induced infringement, finding irrelevant the defendant’s belief that there was no infringement.

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WATCH OUT! SUPREME COURT OPENS DOOR TO TREBLE DAMAGES IN PATENT CASES!

Up until now, it has been nearly impossible for a plaintiff to recover enhanced (up to treble) damages in patent infringement cases.  The current test for enhanced damages, set forth by the Federal Circuit Court of Appeals in 2007 in In Re Seagate Technology,

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FEDERAL CIRCUIT APPLIES BROADENED TEST FOR DIVIDED INFRINGEMENT

On April 18, 2016, the Supreme Court denied certiorari in Akamai Technologies, Inc. v. Limelight Networks, Inc., 797 F.3d 1020 (Fed. Cir., August 2015) (“Akamai IV”), cert. denied, 2016 U.S. LEXIS 2768. 

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Pre-Issuance Damages for Patent Infringement – A Very Rare Remedy

The Federal Circuit Court of Appeals recently addressed an issue of first impression: what is the “actual notice” required under 35 U.S.C. §154(d) for a patent owner to recover damages for a defendant’s infringing conduct that occurred before the patent issued?

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Federal Circuit Limits Attorneys’ Fees in Exceptional Cases

Two weeks ago, the Federal Circuit Court of Appeals limited the factors a district court may consider in determining the amount of attorneys’ fees to award in an “exceptional” patent infringement case.

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Don’t Get On the Wrong Side of Taylor Swift in a Copyright Case!

Taylor Swift has been in the news a lot over the last year or so. She is phenomenally successful. Her hit album “1989” concert tour was the highest grossing tour in the world in 2015 (over $250 million) and the highest grossing tour ever in North America (smashing the previous record held by the Rolling Stones’ 2005 tour).

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When Copying is Not Copyright Infringement

A longstanding battle between Google and the authors of published books has been resolved (at least for now) in favor of Google. The Second Circuit Court of Appeals has held that Google’s use of copyrighted books in its Library Project and Google Books website,

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Why Business Methods Are Difficult to Patent

Although the general rule (based on 35 USC section 101) is that anything made by humans is patentable, there are exceptions. Laws of nature, physical phenomena, and abstract ideas are not patentable.

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Patent Owners Beware: Don’t Sleep on Your Rights!

Laches, a judicially created defense based on the plaintiff’s delay and prejudice to the defendant, is a proper defense to the recovery of damages in a patent infringement suit, even though the Supreme Court ruled in 2014 that laches does not apply in copyright infringement cases.

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Divided Infringement: A Stronger Sword for Plaintiffs

The Federal Circuit Court of Appeals has established a new test for “divided” patent infringement. Direct infringement of a method patent exists when a single party performs all of the steps of the claimed method.

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Federal Circuit Continues to Nix Financial Patents

Patents covering software for use in the financial industry are increasingly being invalidated by the courts. Because of the Supreme Court’s decision in Alice Corp. v. CLS Bank International, 134 S.

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Everything Old is New Again: Post-Expiration Patent Royalties are a Bad Idea!

On Monday, the United States Supreme Court upheld the longstanding case law that prohibits a patent owner from receiving royalties after a patent has expired. In Kimble v. Marvel Entertainment, LLC (June 22,

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Just Because You Think It’s Invalid Doesn’t Mean You Don’t Infringe!

By: Audrey Millemann A U.S. patent is “presumed” valid. That means a patent owner does not need to prove the patent is valid in a suit for infringement. And, as the U.S.

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Supreme Court Hits Home Run for 401(K) Plan Beneficiaries

By Audrey Millemann This week’s decision by the United States Supreme Court in Tibble v. Edison International, 2015 U.S. LEXIS 3171 (May 18, 2015), is expected to trigger an increase in lawsuits against 401(k) plan fiduciaries.

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Enablement is Key – Especially in Biotech Patents

By: Audrey Milleman Enablement is the requirement that a patent teach a person skilled in the art (the field of the invention) how to make and use the invention without undue experimentation.

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Supreme Court: Patent Claim Construction – Two Standards of Review

By Audrey Millemann The Supreme Court recently decided a patent case involving a significant procedural issue.  In Teva Pharmaceuticals USA, Inc. v. Sandoz, Inc., 135 S.Ct. 831 (1/20/15), the question before the Court was whether the Federal Circuit Court of Appeals should review a district court’s factfindings in its claim construction decision under a de novo or a “clearly erroneous” standard.  

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Federal Circuit Chips Away at Patentable Subject Matter

By Audrey Millemann The Federal Circuit Court of Appeals has applied the Supreme Court’s test for unpatentable abstract ideas to patents covering methods to determine a person’s likelihood of getting certain types of cancer.

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Ho, Ho, Ho! And Fa-La-La-La-La! More Christmas Patents

By Audrey Millemann The last time I checked (which was a couple of years ago), I found 979 U.S. patents in the U.S. Patent and Trademark Office’s database that had the word “Christmas” in the title. 

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Attorneys’ Fees for Patent Infringement – Easier to Obtain!

By Audrey A. Millemann One of the more important intellectual property cases decided in 2014 is the U.S. Supreme Court’s decision in Octane Fitness, LLC v. ICON Health & Fitness, Inc.

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Zombies Have IP Too

By Audrey A. Millemann Zombies have become part of our lives.  We are fascinated with vampires, but we are obsessed with zombies. Our obsession is best evidenced by the tremendous success of AMC’s television series “The Walking Dead,” about the zombie apocalypse. 

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Patents Must Provide Clear Notice of Their Scope

By Audrey A. Millemann The patent laws require that the claims of a patent (which define the boundaries of what the patent owner can protect) “particularly point out and distinctly claim the subject matter … of the invention.”  35 U.S.C.

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No Inducing Patent Infringement Unless There is Direct Infringement

By Audrey A. Millemann In a June decision, the U.S. Supreme Court resolved a key issue in patent law: whether a party can be liable for patent infringement when there is no underlying act of direct infringement. 

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Business Method Patents: Murkier Water

By Audrey A. Millemann The long-awaited decision by the United States Supreme Court on business method patents was issued on June 19, 2014.  Unfortunately, the decision raised more questions than it answered.  

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Best of Luck to California Chrome!

By Audrey A. Millemann Let me start with a disclaimer.  This column is not really about intellectual property.  It’s about the unexpected – what happens when people stick to their principles and challenge the way it’s always been done. 

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Challenging Business Method Patents

By: Audrey Millemann Congress has been listening. Under a new program enacted as part of the America Invents Act ("AIA"), business method patents can be challenged in a specific procedure in the PTO.

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Patent Myths Corrected – Part One

By Audrey A. Millemann Patent law is a complicated area of law governed by a confusing set of statutes and regulations that are interpreted by the United States Patent and Trademark Office (PTO) and the federal courts. 

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Patent Myths Corrected – Part Two

By Audrey A. Millemann Last week’s column was the first of two columns discussing some of the most common misconceptions or myths about patents.  Here is the second part, starting with number five on my list.

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Challenging Business Method Patents

By Audrey A. Millemann Over the last 15 years, the United States Patent and Trademark Office has issued many business method patents.  Many of these patents seem overly broad or obvious,

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Patent Owners have Burden of Proof in Declaratory Judgment Actions

By Audrey A. Millemann On January 22, 2014, the United States Supreme Court decided that a patent owner has the burden of proving infringement in an action filed by a licensee for a declaratory judgment of noninfringement.

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Patent Infringement: Attorneys’ Fees A Little Easier to Get

By Audrey A. Millemann The Federal Circuit has loosened the standard for recovering attorneys’ fees in patent infringement cases, making it easier for winning defendants to obtain their fees from plaintiffs.

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(Natural) Genes are not Patentable

In Association For Molecular Pathology v. Myriad Genetics, Inc., decided on June 13, 2013, the United States Supreme Court held that isolated natural genes (DNA) are not patentable. Thus, genes that exist in a living organism,

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Supreme Court Hears Oral Argument in Key Patent Case

Several weeks ago, on November 9, 2009, the United States Supreme Court heard oral argument in a key patent case. The case is Bilski v. Kappos (the USPTO). The issue before the Court was whether the Court should reverse the Federal Circuit’s “machine-or-transformation” test for the patentability of process inventions.

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Patent Enablement Requires More Than a Guess

One of the requirements for obtaining a patent is enablement. As set forth in 35 U.S.C. §112, ¶1, the specification of the patent must teach a person skilled in the art how to make and use the invention without undue experimentation.

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Section 271(f) Does Not Apply to Method Patents

The Federal Circuit Court of Appeals has overruled a 2005 decision which addressed the liability of exporters of components of patented inventions for infringement of method patents. Under 35 U.S.C. §271(f),

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New Test for Business Methods Patents

The Federal Circuit Court of Appeals has redefined the test for the patentability of business methods and computer software. In In re Bilski, 545 F. 3d 943 (Fed. Cir. 2008), an en banc decision,

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What is a Patentable Business Method? Federal Circuit to Decide

What is a Patentable Business Method? Federal Circuit to Decide By Audrey A. Millemann On May 8, 2008, the Federal Circuit Court of Appeals heard oral argument in a case that may significantly change the patent landscape.

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Lack of Enablement – A Stronger Tool for Invalidity

By: Audrey Millemann One of the requirements of a valid patent is enablement. As set forth in 35 U.S.C. section 112, paragraph 1, a patent’s specification must contain “a written description of the invention,

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Federal Circuit Applies Supreme Court’s New Test for Declaratory Judgment Jurisdiction

Federal Circuit Applies Supreme Court’s New Test for Declaratory Judgment Jurisdiction By Audrey A. Millemann The Federal Circuit Court of Appeals recently reversed a district court’s dismissal of a declaratory judgment action,

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The Federal Circuit Finds Mental Process Unpatentable

The Federal Circuit Finds Mental Process Unpatentable By Audrey Millemann Patentable subject matter (i.e. what kinds of things can be patented) includes processes, machines, articles of manufacture, and compositions of matter.

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New U.S. Patent and Trademark Office Rules

New U.S. Patent and Trademark Office Rules By Audrey Millemann The United States Patent and Trademark Office (“PTO”) has revised the patent rules in an attempt to reduce the PTO’s workload,

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How To Protect Your Clients’ IP

By Audrey Millemann A business’s intellectual property may be its most valuable asset. Whether it is biotechnology, trade names, business methods, or computer software, intellectual property should be protected to the greatest extent possible in order to maximize the value of the business.

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