Supreme Court: Federal Government Cannot Challenge Patents in PTAB

by Audrey A. Millemann
The IP Law Blog

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.

The other three proceedings were established by the America Invents Act. These proceedings are conducted by the Patent Trial and Appeal Board (PTAB) before a panel of three judges.

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Potential Copyright Owners Beware: Make Sure Your Copyright Registrations Are Accurate!

by James Kachmar
The IP Law Blog

Normally, a copyright registration certificate constitutes “prima facie evidence of the validity of a copyright and of the facts stated in the certificate.”  17 U.S.C. §410(c).  But what happens if that certificate contains knowingly inaccurate information? The purported copyright owner could face not only invalidation of the copyright, but the inability to pursue copyright infringement claims or risk an award of attorney’s fees against them if they do so. This was the result in a case recently decided by the Ninth Circuit Court of Appeals titled: Gold Value International Textile,

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Although the Battle of King’s Landing is Over and the Game of Thrones has Ended, the War to Protect HBO’s Intellectual Property Rages on

by Josh H. Escovedo
The IP Law Blog

If your heart is beating and your lungs are taking in oxygen, you know that Game of Thrones recently reached its epic conclusion. It’s sad, but true. After eight glorious seasons, the most watched television series in history has ended. Even as I put the words to paper, or rather, this Word document, it doesn’t seem real. For those of you who haven’t watched the series, you probably think I’m being melodramatic. But loyal Thrones supporters know the agony I felt and can mostly likely empathize.

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

by Audrey A. Millemann
The IP Law Blog

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.  The purpose of the written description requirement is to demonstrate to persons skilled in the art of the invention that the inventor had possession of the invention at the time the application was filed, i.e.,

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Some at the PTAB Think Textbooks Are Not Printed Publications

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

Shockingly, some at the Patent Trial and Appeal Board (“PTAB”) think textbook publishers who include dated copyright notices don’t actually publish the textbooks that year! Further, would you have imagined an argument that textbooks aren’t printed publications? Given the amount we paid for textbooks in college and the number stored in my garage that seems like a strange argument, right? Well, the PTAB essentially made just that argument in Hulu, LLC v. Sound View Innovations,

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Are Rules for Playing a Game Patentable?

by Audrey A. Millemann
The IP Law Blog

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, natural phenomena, and abstract ideas.

The Federal Circuit Court of Appeals has many times had to decide what these terms mean.  To make that determination; the court applies the two-part test set forth set forth by the Supreme Court in Alice Corp v.

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Attorney Fees for Successful Defense of IPR May Not Be Recovered as Damages under 35 U.S.C. § 284

by Eric Caligiuri
The IP Law Blog

On March 25, 2018, the District Court in Nichia Corporation v. VIZIO, Inc., Case No. 8-16-cv-00545 (CACD 2019-03-25, Order), granted defendant’s motion to preclude plaintiff’s damages expert from testifying that plaintiff should recover, as compensatory damages, its costs incurred in a related Inter Partes Review (IPR) proceedings.  The Court found such testimony would constitute an improper circumvention of 35 U.S.C. § 285’s requirements for an attorney fee award.

35 U.S.C.

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Weintraub Tobin Attorneys Selected for Inclusion in San Diego Super Lawyers/Rising Stars® 2019 List

Weintraub is pleased to announce that Jo Dale Carothers has been recognized as a 2019 San Diego Super Lawyer and Eric Caligiuri as a 2019 Rising Star.

Jo Dale Carothers is a shareholder and chair of the firm’s Intellectual Property group. An intellectual property litigator and registered patent attorney, Jo Dale advises clients on a wide range of intellectual property issues including patents and proceedings before the United States Patent and Trademark Office,

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Are Patent Applicants Required to Pay USTPO Attorneys’ Salaries, Win or Lose?

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

The United States Supreme Court granted a writ of certiorari in Iancu v. NantKwest to determine whether a patent applicant, win or lose, must pay the salaries of the United States Patent and Trademark Office’s (“USPTO”) in-house attorneys in district court actions challenging the rejection of patent claims by USPTO patent examiners.

When a patent applicant files for a patent, the USPTO assigns an examiner to review the application and determine whether the claims are patentable and a patent should issue. 

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The Federal Circuit Clarifies Rules For Importation of Limitations From the Specification During Claim Construction

by Eric Caligiuri
The IP Law Blog

In Continental Circuits LLC v. Intel Corp. et al., case number 18-1076, the U.S. Court of Appeals for the Federal Circuit, in a precedential opinion, recently clarified the rules for the incorporation of a limitation from a patent’s specifications into the claims during claim construction.  In the case, Continental sued Intel Corp.; its supplier, Ibiden U.S.A. Corp.; and Ibiden U.S.A. Corp.’s parent company, Ibiden Co. Ltd. (collectively, “Intel”), for patent infringement on four patents in the District of Arizona.

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