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An IPR Appellate Plaintiff Must have Standing to Appeal and What Makes for an Adequate Pre-Suit Infringement Investigation

Standing to appeal an IPR is deprived by an agreement of non-infringement Who is entitled to appeal an IPR decision? That is a recurring question in IPR jurisprudence. This still relatively-new process created by the American Invents Act has been found by the U.S. Patent and Trademark Office to allow "[a] person who is not [...]

SoCal IP Institute :: August 14, 2017 :: Doctrine of Equivalents ; CAFC Disagrees with the PTAB

For our weekly SoCal IP Institute meeting on Monday, August 14, 2017, we will discuss the following cases: Enzo Biochem v. Applera, (Federal Circuit 2017) (available here). Enzo and Applera had been involved in litigation over patents for genetic testing and labeling since 2004. In a new round of litigation, plaintiff argued under the doctrine of equivalence, that [...]

SoCal IP Institute :: January 9, 2017 :: Patent Claim Interpretation and Trademark for Service Performed by Software

For our weekly SoCal IP Institute meeting on Monday, January 9, 2017, we will discuss the following: D'Agostino v. Mastercard Int'l Inc., Case Nos. 2016-1592 and 2016-1593 (Fed Cir. December 22, 2016) (available here).  Method claims of Plaintiff's patents disclose processes for generating limited-use transaction codes to be given to a merchant by a customer [...]

SoCal IP Institute :: Nov. 28, 2016 :: Notification in Inter Partes Review and Use of Trademark in Sale of Two Hats

There will be no SoCal IP Institute meeting on Monday, November 21, 2016. At our next SoCal IP Institute meeting on Monday, Nov. 28, 2016, we will discuss the following: In re Nuvasive, Inc. (Fed. Cir. November 9, 2016) (available here).  Medtronic filed petitions for inter partes review of Nuvasive's patents related to spinal fusion [...]

By |2016-11-17T10:11:41-08:00November 17th, 2016|Patent, Trademark, TTAB, Use in Commerce, Inter Partes Review|0 Comments

SoCal IP Institute :: Nov. 14, 2016 :: CSA’s Applicability to Trademark Applications and IPR Partial Institution

For our weekly SoCal IP Institute meeting on Monday, Nov. 14, 2016, we will discuss the following: In re JJ206, LLC dab JuJu Joints (T.T.A.B. October 27, 2016) (available here).  JuJu sought to register the marks Powered by JuJu and JuJu Joints for goods in class 34 explicitly indicating that the mark would be used in connection [...]

By |2016-11-11T15:45:46-08:00November 11th, 2016|Patent, Trademark, TTAB, Use in Commerce, Inter Partes Review|0 Comments

SoCal IP Institute :: August 15, 2016 :: Permissible use of common sense in inter partes review and trademark co-existence agreements

For our weekly SoCal IP Institute meeting on Monday, August 15, 2016, we will discuss the following: Arendi S.A.R.L. v. Apple Inc. (Fed. Cir. August 10, 2016) (available here). Apple filed a petition for inter partes review of Arendi's patent directed to providing beneficial coordination between a first computer program displaying a document and a [...]

By |2016-08-11T16:25:39-07:00August 11th, 2016|Patent, Obviousness, Inter Partes Review|0 Comments

SoCal IP Institute :: July 11, 2016 :: Reviewing Ethics Decisions in Patent Law

For our weekly SoCal IP Institute meeting on Monday, July 11, 2016, we will discuss the following: Protostorm, LLC. v. Minnesota Lawyers Mutual Ins. Co. v. Antonelli, Terry, Stout & Kraus LLP (VLW 010-3-620), No. 08-CV-931 (E.D.N.Y June 20, 2016) (Memorandum & Order available here; Damages Order Available here). In this case, a judgment of approximately [...]

By |2016-07-07T18:07:43-07:00July 7th, 2016|Copyright, Patent, Attorney's Fees, Inter Partes Review|0 Comments