35 Weintraub Attorneys Named to 2021 Northern California Super Lawyers and Rising Stars Lists; Firm Retains Highest Percentage of Sacramento Top 25 List

Weintraub Tobin is pleased to announce that 38 of its attorneys have been included on the 2021 Super Lawyers and Rising Star lists for outstanding attorneys in Northern California.  In addition, 4 Weintraub Tobin attorneys received special recognition on Northern California and Sacramento “Top” lists. Weintraub attorneys represent 16 percent of the 2021 Sacramento Top 25 Super Lawyers, achieving the region’s highest percentage again this year.

Attorneys selected to the 2021 Northern California Super Lawyers list include Brendan J.

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Once Again, Generic Computer Systems That Do Routine Functions are Not Patentable!

by Audrey A. Millemann
The IP Law Blog

Patents protect inventions.  However, patents protect only certain inventions.  In order to be patentable, an invention must fall within one of four categories of patent-eligible subject matter: articles of manufacture, machines, processes, and compositions of matter. 35 U.S.C. §101.  There are some things that are not patentable (i.e. are patent-ineligible subject matter): laws of nature, natural phenomena, and abstract ideas.

In 2014, in Alice Corp. Pty. Ltd. v. CLS Bank International,

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IPRs Cannot Be Used to Challenge Patents for Indefiniteness

by Audrey A. Millemann
The IP Law Blog

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). In addition, the patent application must meet other requirements, including written description (the application must contain a detailed, clear, and definite written description of the invention) and enablement (the application must describe how to make and use the invention).

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Inequitable Conduct Can Render all Patents in a Patent Family Unenforceable through Infectious Unenforceability

by Eric Caligiuri
The IP Law Blog

In Guardant Health, Inc. v. Foundation Medicine, Inc., 1-17-cv-01616 (DDE 2020-01-07, Order), the Court rejected the Plaintiff’s argument that an inequitable conduct claim must be related only to the prosecution of the patent-at-issue in ruling on plaintiff’s motion to dismiss defendants’ infectious unenforceability counterclaims.  In the case, the Defendants’ theory as to the unenforceability of U.S. Patent No. 9,902,992 (the ’992 patent) was not based on inequitable conduct said to have occurred during the ’992 patent’s prosecution.  

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Copying by Competitors is Evidence of Nonobviousness of an Invention

by Audrey A. Millemann
The IP Law Blog

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, then it is not patentable.

In determining whether an invention is obvious, the PTO compares the invention to the “prior art” – all similar inventions that are publicly available at the time the application is filed. 

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Jo Dale Carothers Quoted in Law360

Jo Dale Carothers was recently quoted in a Law360 article after a recent Precendential Opinion Panel decision for patent petitions for inter partes review (IPR) on whether copyright and ISBN are sufficient evidence for printed reference material as having been “publicly available”. Jo Dale speaks about the ruling stating, “I feel that people will have to proceed with more caution than they would have needed to before.”  Find out more by reading the complete article here.

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Is a Copyright Notice Sufficient Evidence a Textbook Is a Printed Publication for Institution of Inter Partes Review?

by Jo Dale Carothers, Ph.D.
The IP Law Blog

To use a textbook or other reference to challenge the validity of a patent in a petition for inter partes review (“IPR”), the textbook must have been “publicly accessible” prior to the date of the challenged patent to qualify as a printed publication. Is a copyright notice sufficient evidence that a textbook was publicly accessible? The short answer is no in most, if not all, cases.  In Hulu, LLC v. Sound View Innovations, LLC,

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U.S. Supreme Court Strikes down USPTO’s Request for Attorney’s Fees

by Eric Caligiuri
The IP Law Blog

In a unanimous ruling, the U.S. Supreme Court in Peter v. NantKwest, case number 18-801, struck down the U.S. Patent and Trademark Office’s (USPTO) recent and often-criticized effort to recoup its legal fees – even in cases it loses – because it violates the so-called American Rule, which says U.S. litigants must typically pay for their own lawyers.

The Patent Act creates two mutually exclusive pathways to challenge an adverse decision by the USPTO.

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Patent Priority Dates Must Be a Priority!

by Audrey A. Millemann
The IP Law Blog

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; it is based on the filing dates of any related patent applications that were filed before the application (the priority chain).  This date determines which prior art can be used by the Patent and Trademark Office to determine patentability of the invention and which prior art can be used by competitors to challenge the patent’s validity.

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Online Gaming Case Addresses Trigger for One-Year IPR Filing Deadline

by Jo Dale Carothers, Ph.D.
The IP Law Blog

 

When sued for patent infringement, a defendant can still petition for inter partes review (“IPR”) of the asserted patent at the United States Patent and Trademark Office (“USPTO”) if the petition is filed within one year of service of the complaint.  But, as Game & Technology Co. v. Wargaming (Fed. Cir. 2019) reminds us, a plaintiff must properly serve the complaint to trigger the one-year deadline.  Specifically, “[s[ection 315(b) states that ‘[a]n inter partes review may not be instituted if the petition requesting the proceeding is filed more than 1 year after the date on which the petitioner … is served with a complaint alleging infringement of the patent.’”  35 U.S.C.

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