General

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 […]

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 […]

Fast Food Empires Put Their Weight Behind Trademarks

»»Fast food companies have been actively asserting their trademarks, recently highlighted by noteworthy activity by both McDonald’s and In-N-Out. McDonald’s aggressive defense of its trademarks hit a snag recently as the EUIPO canceled their trademark for “Big Mac” for failing to provide sufficient evidence of use. In their argument, McDonald’s relied mainly on affidavits from […]

PTAB Petitions Spike As BRI Era Closes

»»On October 10, 2018, the USPTO announced it would adopt the Phillips claim construction standard as of November 13, 2018. That means that as of yesterday, any petitions filed are no longer reviewed under the Broadest Reasonable Interpretation (BRI) standard that the PTAB had applied since its creation under the AIA. Instead, they will be […]

USPTO ADOPTS PHILLIPS CLAIM CONSTRUCTION

»»Starting November 13, 2018, all IPR, PGR, and CBM proceedings will conduct their claim construction using the Phillips standard put forth by the Federal Circuit in 2005, turning away from the Broadest Reasonable Interpretation (BRI) standard it currently uses. This brings the PTAB in line with the Federal Courts and the ITC in examination standards. […]

Maier & Maier Partner Stephen G. Kunin Named ‘Best Lawyer’ for 2019

»»Best Lawyer Magazine has named it’s 2019 Best Lawyers in Washington, D.C., including Maier & Maier’s Stephen G. Kunin among its Intellectual Property Law recognitions. Mr. Kunin’s illustrious career includes more than three decades at the United States Patent Office, spending one of those decades as the Deputy Commissioner for Patent Examination Policy, and 13 […]

Stephen G. Kunin Selected For 2019 Best Lawyers Award!

»»Maier & Maier is pleased to announce that one of our partners, Stephen G. Kunin has been selected by his peers for inclusion in the 2019 25th Edition of The Best Lawyers in America. This recognition in the field of Patent Law has been released publicly and is now available on www.bestlawyers.com. We congratulate him […]

Tribal Sovereign Immunity Does Not Apply in IPR Proceedings

»»In Saint Regis Mohawk Tribe v. Mylan Pharmaceuticals Inc., Nos. 18-1638 to 18-1643, the Federal Circuit, in a precedential decision, affirmed the PTABs denial of St. Regis’s motion to terminate IPRs filed by Mylan based on tribal sovereign immunity. Tribal immunity does not apply in IPR proceedings because the USPTO is pursuing an adjudicatory agency action. […]

PTAB Designates 5 Decisions as Informative

»»The PTAB has designated five new decisions as informative, three on IPR practice procedure and two ex parte decisions (one on issue preclusion and one on claim construction): Ariosa Diagnostics v. Isis Innovation Ltd., IPR2012-00022, Paper 55 (PTAB Aug. 7, 2013) Here the Board provides guidance on foreign depositions, both on the location where they […]

Introduction of New Patent Legislation in Congress Looms Over PTAB Litigation Practice

»»Two new pieces of legislation were introduced in the past few weeks, one each in the House and the Senate, and both could have drastic implications for PTAB practice. The PACED Act, introduced in the Senate, would eliminate Tribal Immunity as a defense for all Patent Owners in proceedings before the Patent Office. The STRONGER […]