When to Convert a CIP Patent Application into a Divisional

The Federal Circuit recently clarified the limits of the safe harbor provision of 35 USC §121. In In re: Janssen Biotech, Inc., New York University, No. 2017-1257 (Fed. Cir. Jan. 23, 2018), the Federal Circuit upheld a Patent Tri… Read More

No Estoppel for Art in Contentions but Not IPR Petition

Earlier this month in Koninklijke Philips N.V. v. Wangs Alliance Corp., Civil Action No. 14-12298-DJC (D. Mass. Jan. 2, 2018), the District of Massachusetts added another case to the majority view of the scope of inter partes revi… Read More

Take Care with Patent Assignment Language

Written agreements discussing an employee’s obligation to patent assignment rights were insufficient to actually assign ownership in U.S .Patent No. 5,781,788, a divided Federal Circuit panel has held. Advanced Video Technologie… Read More

Pleading Patent Infringement Does Not Require Proofs

Federal Circuit addressed the pleading standards for patent infringement in Lifetime Indus., Inc. v. Trim-Lok, Inc., No. 3:13-cv-00819-RLM-MGG (N.D. Indiana September 7, 2017).  Reversing and remanding a decision of the district… Read More

IPR Estoppel Remains Elusive for Patent Owners

In Finjan v. Blue Coat Systems, LLC, No. 15-cv-03295-BLF, (N.D. Cal. July 28, 2017), the court took the majority view on the scope of Inter Partes review estoppel, finding no estoppel for grounds of invalidity not included in a pe… Read More

Patent Pleadings Standards and Divided Infringement

When a plaintiff accuses multiple defendants of cooperating to infringe a patent, a well-pled complaint must make clear which defendant controls an accused system, and how defendants cooperate to practice a claimed method.  On th… Read More

Defendant Controlled Information Not Required in Pleadings

Does the fact that relevant information is “arguably within [the defendant’s] sole possession” affect the plaintiff’s burden in pleading a claim for patent infringement?  In Prowire, LLC v. Apple, Inc. , the United States… Read More

Contingent Patent Assignee Has Standing to Assert Patent

A patent assignee was found to have standing to assert a patent assigned to it, even though the patent assignor retained both a conditional right to mandate a return assignment, and to receive 50% of any enforcement proceeds.  In… Read More

Pleading Patent Infringement: Claim Chart Required (Redux)?

For a plaintiff to state a cause of action for patent infringement, some courts hold that  general allegations – without an infringement claim chart – suffice.  Here are two examples of courts joining other courts at the oth… Read More

Common Interest Privilege Covers Non-Attorneys in Patent Case

The District of Massachusetts held that the common interest exception to third-party privilege waiver protected communications disclosed to a licensee and non-attorney expert. Crane Security Technologies, Inc. v.  Rolling Optics… Read More

Upcoming Webinar

We are delighted to kick off the first B2 IP Webinar of 2019 with David Hannon, Of Counsel at Bejin Bieneman, who will provide an outline of issues for decision by a US brand owner in its pursuit of trademark protection in China. Mr. Hannon will dis…Register

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