DELIVERING Results
June 30, 2016
On June 27, 2016, the United States Court of Appeals for the Federal Circuit (CAFC) issued a decision in Bascom Global Internet Services, Inc., v. AT&T Mobility LLC, AT&T Corp., (2015-1763). This decision is the…
Federal Circuit Upholds USPTO’s Longstanding Policy on Same Day Continuation PracticeJune 23, 2016
On June 21, 2016, the Court of Appeals for the Federal Circuit (CAFC) reversed the district court’s decision in Immersion Corporation v. HTC Corporation (2015 U.S. Dist. LEXIS 20577 (D. Del. 2015)) and upheld the…
Supreme Court Upholds USPTO ‘Broadest Reasonable Construction’ Standard for IPRsJune 22, 2016
On June 20, 2016, the Supreme Court upheld the Federal Circuit's decision in In re Cuozzo Speed Technologies, LLC., (739 F.3d 1268 (Fed. Cir. 2015)), regarding the claim construction standard used by the USPTO during…
USPTO Produces Inter Partes Review Motion to Amend StudyMay 9, 2016
On May 9, 2016, in a guest post on the USPTO’s Director’s Forum Blog, Acting Chief Administrative Patent Judge Nathan Kelley reported the results a Patent Trial and Appeal Board Motion to Amend Study. The…
New USPTO Guidance Regarding Subject Matter Eligibility DeterminationsMay 6, 2016
A Federal Register Notice published today announced new USPTO guidance regarding subject matter eligibility determinations under 35 U.S.C. § 101. The new information can be found on the USPTO website HERE, within the “2014 Interim…
CAFC Holds Willful Misconduct is a Pre-requisite for Recovering Profits for TM InfringementApril 4, 2016
In Romag Fasteners, Inc. v. Fossil, Inc., No. 14-1856 (Fed. Cir. 2016), the Court of Appeals for the Federal Circuit (CAFC) upheld a district court decision that Romag could not recover a trademark infringer’s profits…
Enfish, TLI, and USPTO MemoMarch 26, 2016
On May 19, 2016, the United States Patent and Trademark Office issued a memo titled Recent Subject Matter Eligibility Decisions (Enfish, LLC v. Microsoft Corp. and TLI Communications LLC v. A.V. Automotive, LLC). This memo…
Cafc Recognizes Patent-Agent PrivilegeMarch 8, 2016
On March 7, 2016, the Court of Appeals for the Federal Circuit (CAFC) in In Re Queen’s University At Kingston (2015-145) granted mandamus review on the issue of whether there exists a patent-agent privilege. The…
Federal Circuit: PTAB Not Required to Address Every Claim Challenged in IPRFebruary 18, 2016
In Synopsys, Inc. v. Mentor Graphics Corp. (Feb. 10, 2016), the Federal Circuit held that the Patent Trial and Appeal Board (PTAB) is not required to address every claim challenged in a petition for inter…
Federal District Court Finds Issue Preclusion based on TTAB Fraud Finding:February 16, 2016
Following the U.S. District Court for the District Court of Maryland’s recent decision applying issue preclusion for a TTAB priority finding in Ashe v. PNC Financial Services Group, Inc., Case No.: PWG-15-144 (D. Md. November…
Federal Circuit Decides No PTA for PTO Delay in Sending Corrected Restriction Req.January 27, 2016
The Federal Circuit upheld the district court’s decision to deny patent term adjustment of 197 days of USPTO delay in sending a corrected Restriction Requirement. The CAFC held that “because the initial restriction requirement placed…
Congratulations to Andrew B. Freistein On Becoming a Wenderoth PartnerJanuary 4, 2016
We are pleased to announce that Andrew B. Freistein became a partner of Wenderoth on January 1, 2016. Andrew is a registered patent attorney and specializes in preparing and prosecuting patent applications in the chemical…
Congratulations to Stephen W. Kopchik On Becoming a Wenderoth PartnerJanuary 4, 2016
We are pleased to announce that Stephen W. Kopchik became a partner of Wenderoth on January 1, 2016. Stephen is a registered patent attorney in the firm's electrical and mechanical practice group, where his practice…
Federal District Court Cites B&B Hardware and Applies Issue PreclusionNovember 24, 2015
In B&B Hardware, Inc. v. Hargis Industries, Inc., 135 S. Ct. 1293 (2015) (“B&B Hardware”) the Supreme Court held that TTAB decisions concerning likelihood of confusion can have a preclusive effect in subsequent district court…
Collaborative Search Pilot Program for ApplicantsNovember 3, 2015
On August 1, 2015, the USPTO established the Collaborative Search Pilot Program (CSP), which provides Applicants having corresponding applications at the USPTO and either the JPO or KIPO with accelerated examination and preliminary search and…
USPTO Revises the M.P.E.P.November 3, 2015
On October 29, 2015, the USPTO issued the Ninth Edition, Revision 07.2015, of the Manual of Patent Examination Procedure (M.P.E.P), which incorporates changes to the laws, rules, and practice necessitated by, or made as a…
The Diminished Value of Product-By-Process ClaimsOctober 30, 2015
A Product-by-Process (PBP) claim defines a product by its method of production. MPEP 2113. Even though PBP claims are defined by the recited process, patentability of the claim is determined based on the product itself…
QPIDS Pilot Program Extended Through September 30, 2016October 26, 2015
The USPTO has extended the Quick Path Information Disclosure Statement (QPIDS) pilot program through September 30, 2016. The QPIDS pilot program was implemented to eliminate the requirement for processing of a request for continued examination (RCE)…
AFCP 2.0 Extended Through September 30, 2016September 28, 2015
The USPTO has extended the After Final Consideration Pilot 2.0 (AFCP 2.0) through September 30, 2016. AFCP 2.0 authorizes additional time for examiners to search and/or consider a response after final rejection. Under AFCP 2.0, examiners…
Streamlined, Expedited Pilot Program for Small/Micro Entities with a Pending AppealSeptember 21, 2015
A new USPTO pilot program, effective September 18, 2015, will allow small or micro entity appellants to enjoy expedited consideration of an ex parte appeal by the Patent Trial and Appeal Board (PTAB). Consideration under…
USPTO Announces Proposed Rule Changes for AIA TrialsAugust 21, 2015
On August 20, 2015, the USPTO issued a Notice proposing changes to the Rules of Practice Before the Patent Trial and Appeal Board “PTAB”. These proposed rule changes were expected in view of the USPTO’s…
CAFC interprets two provisions of the BPCIAAugust 3, 2015
Amgen Inc. v. Sandoz Inc., Fed. Cir. Case No. 2015-1499, decided July 21, 2015. View PDF On July 21, 2015 in a fractured opinion, the Federal Circuit ruled on two provisions of the Biologics Price Competition...
Wenderoth Named Capital Region’s Premier IP Lawyers by Wall Street JournalJuly 29, 2015
The Wall Street Journal interviewed Wenderoth’s Partner, Douglas Hahm, regarding what makes the firm unique and successful for almost 100 years. Mr. Hahm explains how a small firm can produce big results for clients across…
CAFC Abandons Heightened Bar in Means-Plus-Function AnalysisJune 18, 2015
In the Williamson v. Citrix opinion issued June 16, 2015, the Court of Appeals for the Federal Circuit has withdrawn their earlier opinion in the case and abandoned the heightened burden that had been established…
USPTO Announces Expedited Patent Appeal Pilot ProgramJune 16, 2015
On June 15, 2015, the USPTO announced a temporary “Expedited Patent Appeal Pilot” in which an appellant may have an ex parte appeal to the Patent Trial and Appeal Board (“the Board”) advanced out of…