Firm News

Federal Circuit Rules Design Patent Scope Can Be Limited By Claim Language

»»On September 12, 2019, the Federal Circuit upheld the District Court of New Jersey’s finding that a design patent’s scope is limited by the language in its claims, rather than just its figures. The decision, in Curver Luxembourg, SARL v. Home Expressions Inc., heightens the importance of titles and claim language used when drafting design […]

USPTO Expands Track 1 Program to 12,000 Grants Per Year

»»Under the America Invents Act, one of the new programs put into effect in 2011 was the Prioritized Examination Track. This Pilot Program allowed applicants to petition for special status in examination, placing it on a separate special docket with a goal of 12 months to issue. In order to qualify, the applicant must comply […]

Iancu Among Keynote Speakers On State of FinTech IP And Innovation

»»The 16th Annual Summit on Protecting Innovations in the Financial Services Industry took place July 24th-25th in New York City. Andrei Iancu, the Director of the USPTO, joined other notable members of the FinTech industry including Tariq Hafiz, Group Director of 3600 Tech Group at the USPTO, inhouse counsel for major industry members, and private […]

Supreme Court to Rule On Two Trademark Litigation Cases Next Term

»»The Supreme Court has granted certiorari to two cases that could have significant impacts on trademark litigation. In Lucky Brands Dungarees, Inc., et al. v. Marcel Fashions, Inc., the Court will address whether new, un-litigated defenses in response to newly asserted claims are permissible with federal preclusion principles. Meanwhile, in Romag Fasteners, Inc. v. Fossil, […]

Federal Circuit Makes En Banc Plea for Help on Subject Matter Eligibility In Athena Rehearing Rejection

»»On July 3, 2019 the Federal Circuit issued its en banc decision in Athena Diagnostics, Inc. et al. v. Mayo Collaborative Services, LLC. The decision came down 7-5 against rehearing on the patent’s eligibility, with a staggering eight separate written opinions (four concurring and four dissenting). The common refrain amongst the opinions, concurrences and dissenting […]

Supreme Court Rules Government Not A ‘Person’ For PTAB Proceedings

»»Under the 2012 America Invents Act (“AIA”), Congress created three new post-issuances avenues for a “person” to challenge patents before the Patent Trial and Appeal Board (PTAB) in IPR’s, PGR’s, and CBM’s. With this ruling, the Supreme Court has deemed that the Federal Government is not a “person” for these purposes and thus is ineligible […]

Federal Circuit Rules No State Sovereign Immunity For PTAB Proceedings

»»Expanding on its precedential ruling against the use of tribal sovereign immunity at the Patent and Trial Appeal Board (“PTAB”) from last summer in Saint Regis Mohawk Tribe v. Mylan Pharmaceuticals Inc., the Federal Circuit ruled that there is no sovereign immunity for states in proceedings at the PTAB either. The decision was based on […]

2019 Design Day: Caselaw Highlights

»»Last week was the United States Patent and Trademark Office’s annual Design Day where they hosted speakers on the last year in design patent practice. The following cases from the Federal Circuit, the Patent Trial and Appeal Board, and District Courts were highlighted throughout the day for their impact on design patent practice. For more […]

PTAB Designates a Flurry of Opinions As Precedential In Wake of Boalick Appointment

»»Since his official appointment to his post as Chief Judge of the PTAB, Boalick has wasted no time in making his mark. Beginning the very day his permanent appointment became official last month, the PTAB has issued a number of precedential opinions. Most notably, the new Precedential Opinion Panel or POP (created in September’s updates […]

Scott Boalick Appointed as Chief Judge of PTAB

»»Scott Boalick has officially begun his permanent term as Chief Judge of the Patent Trial and Appeal Board. After having served in an interim role since September, the USPTO made his appointment official last month. Boalick started at the PTAB in 2007 and has since acted as an administrative patent judge, a vice chief judge, […]