News and Articles

IP License Agreements Under the AIA

Over the past few years, there has been an ongoing subject matter jurisdiction battle between state courts and federal circuit courts. This jurisdiction battle is especially prevalent in cases where a complaint asserts a non-patent cause of action with an underlying patent issue, such as disputes over intellectual property licensing or malpractice claims. In most patent cases the “arising under” analysis for the Federal Circuit jurisdiction is fairly straight forward because a




Assignment of Intent-to-use Trademark Applications

The Trademark Act Section 10(a)(1) clearly states that an intent-to-use application cannot be assigned “except for an assignment to a successor to the business of the applicant, or portion thereof, to which the mark pertains, if that business is ongoing and existing.” In the recent Trademark Trial and Appeal Board case, Cent. Garden & Pet Co. v. Doskocil Mfg. Co., No. 91188816 (TTAB August 16, 2013), All-Glass Aquarium Co., a




Trade Secret and Contract Law

The Federal Circuit has recently articulated the position that a contractual agreement to transfer otherwise secret information will override trade secret protections that may be in place. The recent case on-point was Convolve, Inc. v. Compaq Computer Corp., No. 2012-1074, 2013 WL 3285331 (Fed. Cir. July 1, 2013), reaches back more than a decade to 1998, when MIT and Convolve sued a group of defendants for both trade secret misappropriation




Challenging A Patent Without Litigation - The New Inter Partes Review

The America Invents Act (AIA) has invoked significant changes to the U.S. patent system, a principal one being creation of Inter Partes Review (IPR), and concurrent elimination of the inter partes reexamination. Like the latter, the new Inter Partes Review is an administrative proceeding to invalidate patents, by allowing a party to petition the U.S. Patent and Trademark Office (USPTO) with prior art that destroys novelty or establishes the claimed




The U.S. Becomes First-to-File For Patents

On September 16, 2011, President Obama signed the America Invents Act (AIA). Along with other significant changes to the U.S. patent system, this legislation converts the “first to invent” system to a “first inventor to file” system. These provisions of the Act went into effect on March 16, 2013. The new first-inventor-to-file” (FITF) system is a hybrid of the first-to-invent system preceding the Act and an actual first-to-file system, where




The Federal Circuit Rules on Apple v. ITC

On August 7, 2013, the Federal Circuit affirmed-in-part the lower court’s decision in Apple Inc. v. ITC (2012-1338) finding no Section 337 violation in Certain Mobile Devices, and Related Software Thereof (Inv. No. 337-TA-750). The Federal Circuit ruled that Apple’s U.S. Patent No. 7,663,607, which related to a touch panel with a transparent capacitive sensing medium that can detect multiple touches at once, was invalid for anticipation and obviousness, and




M&A and Government Immunity

The Supreme Court’s decision in FTC v. Phoebe Putney Health System Inc., 133 S. Ct. 1003 (2013) put a limitation on the state immunity under which local governments across the country have relied upon for decades to shield their activities from federal antitrust scrutiny. This decision will open the door to challenging numerous government transactions including the transactions consummated before the Phoebe Putney decision. Until Phoebe Putney, the Supreme Court




Patent Attorney

In WiAV Solutions LLC v. Motorola, Inc., No. 10-1266 (Fed. Cir. Dec. 22, 2010), the Federal Circuit broadened the scope of exclusive license by holding that “a licensee is an exclusive licensee of a patent if it holds any of the exclusionary rights that accompany a patent.” The licensing rights at issue were held by six third-parties and seven patents owned by Mindspeed Technologies, Inc. After a series of spin-offs




The New Way to Challenge A Patent When Threatened: America Invents Act Creates the Post Grant Review

The America Invents Act (AIA) creates new administrative trial procedures to challenge patentability outside litigation before a district court venue. These trial procedures are namely (1) Post Grant Review (PGR), (2) Inter Partes Review (IPR) and (3) a transitional program for covered business method patents. These laws went into effect on September 16, 2012. This article covers the basics of the Post Grant review. Post Grant Review (PGR) Inter Partes




Myriad and Patenting of the Human Gene

The June 2013 Supreme Court decision in Association for Molecular Pathology v. Myriad Genetics, 569 U.S. 12-398 (2013) which considered whether portions of human genes may be patented, fueled an extraordinary amount of heated discussion for an intellectual property case. The patents at issue in Myriad concern mutated genes associated with increased risk of breast and ovarian cancer. Health care advocates worried that a ruling in favor of patentability would make