There has been a bloom of data analytics tools for patent practice, and some new features of these tools have profoundly enhanced patent practice. Here are five examples of how applicants and their attorneys can improve day-to-day patent strategy using the latest data analytics tools.
Our full-service Intellectual Property Group combines strategic business advice with skilled legal representation to help clients achieve their business goals and objectives.
What We Do
Our group acquires and protects clients’ critical intellectual property assets. We secure and enforce patents, trademarks and copyrights, and we help maximize the value of your intellectual property in business transactions. We also counsel clients with respect to avoiding infringement of the rights of others.
Our business clients range from individuals and small privately held business to Fortune 500 companies. Our clients have come to rely on our ability to navigate through the sometimes complex channels of the intellectual property legal scene. We have become adept at getting up to speed quickly and effectively in a technical field. The thoughtful attention we pay to clients and their changing needs often leads us to recognize better ways of serving them.
Intellectual Property Services
Fredrikson & Byron provides the following services:
- Patent Applications
- Patent Validity Analyses
- Trademark Availability Searches
- Trademark Registrations
- Infringement Litigation
- Copyright Registrations
- Licensing and Technology Agreements
- Clearance Procedures
- Trade Secret Enforcement and Counseling
- Intellectual Property Due Diligence
News & Articles
May 7, 2019
Instagram and other social media platforms have become fertile ground for all manner of intellectual property disputes.
March 25, 2019
Brand owners recently gained a new weapon for their arsenal in the ongoing fight against counterfeit products sold on online marketplace giant Amazon.com.
February 4, 2019
Fredrikson & Byron shareholders Lora Friedemann, Cynthia A. Moyer, John C. Pickerill and Ann Dunn Wessberg have been named to the 2019 World Trademark Review 1000 (WTR 1000) for Minnesota.
December 14, 2018
In the face of the nagging problem of fake products posing as genuine goods in online marketplaces, major e-commerce platforms are continuing to refine their strategies to address counterfeiting.
November 19, 2018
Major amendments to the Canadian Trademarks Act were passed in 2014.
September 25, 2018
Three new judges have recently joined the Minnesota federal bench, returning the District of Minnesota to full strength for the first time in more than two years.
September 12, 2018
The annual playoffs for Major League Baseball will soon begin in the U.S.
July 20, 2018
The United States Court of Appeals for the Federal Circuit held today that a Native American tribe may not assert sovereign immunity to bar inter partes review proceedings before the Patent and Trademark Office’s Patent Trial and Appeal Board.
July 16, 2018
A Pre-Appeal Brief Review Request (PABR) offers an alternate to traditional options when applicants face a final rejection of their application. When is a PABR worth it?
June 14, 2018
Lora Friedemann, Thomas R. Hipkins, Ann M. Ladd, Kurt J. Niederluecke, Charles D. Segelbaum and David C. West were featured in the 2018 edition of the IAM Patent 1000.
Supreme Court Upholds Constitutionality of Inter Partes Review – PTAB Must Decide Patentability of All Challenged Claims
April 24, 2018
The Supreme Court of the United States issued a pair of significant decisions today regarding post-grant practice before the PTO’s Patent Trial and Appeal Board.
March 20, 2018
Fredrikson & Byron shareholders Lora Friedemann and John Pickerill have been named to the 2018 World Trademark Review 1000, which recognizes attorneys and firms that are deemed outstanding in the trademark practice.
March 19, 2018
The District of Minnesota continues to see many cases transferred to other districts after last year’s Supreme Court decision on venue in patent cases in TC Heartland v. Kraft Foods.
March 8, 2018
Recently, industry professionals sat down together at Fredrikson & Byron to talk about social media influencers.
December 18, 2017
The District of Minnesota recently issued its fourth post-Alice decision, this time addressing the question of patent subject matter eligibility for a check processing patent.
December 8, 2017
Over a year after the Supreme Court’s decision in Halo Electronics, district courts continue to disagree over what is required to adequately plead a claim for willful infringement. The District of Minnesota is beginning to enter the fray.
September 1, 2017
In May 2017, the United States Supreme Court decided TC Heartland LLC v. Kraft Foods and limited venue in patent cases to where a corporate defendant is incorporated or has a regular and established place of business.
July 12, 2017
The Honorable Donovan Frank recently issued only the second decision in the District of Minnesota to address the question of patentable subject matter under 35 U.S.C. § 101 in the context of a motion to dismiss.
Patent Trial and Appeal Board Creates Loophole to Challenge Written Description and Enablement in Older Patent Families
June 15, 2017
The Patent Trial and Appeal Board’s May 10 decision in Minerva Surgical, Inc. v. Hologic, Inc. creates a loophole in Patent Office post-grant practice that enables challengers to bring new kinds of invalidity attacks against patents claiming priority to older applications.
May 30, 2017
May 22, 2017
The U.S. Supreme Court’s May 22, 2017, decision in TC Heartland LLC v. Kraft Foods Group redefined the possible venues for patent infringement lawsuits.
May 12, 2017
In Helsinn Healthcare, S.A., v. Teva Pharmaceuticals USA, Inc., the U.S. Court of Appeals for the Federal Circuit addressed the degree to which the Leahy-Smith America Invents Act of 2011 (AIA) altered the “on sale” prior art provision of 35 U.S.C. § 102.
May 8, 2017
In SCA Hygiene Products v. First Quality Baby Products, the Supreme Court recently ended over a 100 years of application of the equitable doctrine of laches in patent infringement cases.
Malicious counterfeiters often hide their identities, making it impossible to serve them through traditional means.
Relying On Assumptions in Your Complaint May Subject You to An Exceptional Case Finding and Award Of Attorneys’ Fees
In M-I Drilling Fluids UK Ltd. v. Dynamic Air Inc., Chief Judge Tunheim recently adopted the Report and Recommendation of Magistrate Judge Bowbeer, finding the case to be exceptional and awarding attorneys’ fees against Plaintiff M-I.
January 25, 2017
By Timothy M. O’Shea and Ted C. Koshiol
Parties facing allegations of willful patent infringement can rebut the claim by proving that they relied in good faith upon the advice of counsel when undertaking the allegedly infringing activity. However, asserting the advice of counsel defense carries a heavy cost – waiver of privilege as to at least the attorney work product and attorney-client communications relied upon in formulating the opinion. Some courts have even extended the scope of this waiver more broadly to cover any information even considered by the advising counsel. This tradeoff leads many to forego raising the advice of counsel defense.
January 18, 2017
If you read past the title, you are a civil procedure nerd. The answer for you is as easy as two plus two. Rule 15! You can recite the standard in your sleep: “freely given when justice so requires.”
January 12, 2017
On January 9, 2017, the U.S. Court of Appeals for the Federal Circuit issued its decision in Phigenix, Inc. v. ImmunoGen, Inc. (Case No. 2016-1544), severely limiting the appellate rights of petitioners in America Invents Act proceedings that do not engage in potentially infringing activities.
January 9, 2017
In Solutran, Inc. v. Elavon, Inc. and U.S. Bancorp, Magistrate Judge Thorson recently granted the defendants’ motion to compel the production of three slides in a PowerPoint presentation that plaintiff claimed were protected by attorney-client privilege or the work product doctrine. Plaintiff initially produced the entire presentation, which included a section discussing patent litigation. The slides in that section were drafted by plaintiff’s attorneys and included the law firm’s logo. When the presentation was used in a deposition, plaintiff immediately clawed it back and subsequently produced a new version with the three slides at issue redacted.
December 23, 2016
Hydreon Corporation sells a product called FakeTV®, which deters burglars by emitting and projecting light patterns to simulate real television broadcasts. The light patterns make it appear that someone is home watching television when the house is actually empty. In recent years, counterfeit versions of the FakeTV® device have sprung up on Amazon.com and eBay.com. This has become an all-too-common occurrence for U.S. companies.
December 22, 2016
With support from the Department of Justice (DOJ), the U.S. Immigration and Customs Enforcement (ICE) and U.S. Customs and Border Protection (CBP) launched a new program to stop the illegal importation and distribution of dangerous counterfeit consumer electronics at the border.
District of Minnesota Adopts Local Rule 5.6, – Instituting New Processes and Requirements for Civil Parties Filing Under Seal
December 21, 2016
With the adoption of new Local Rule 5.6, the District of Minnesota will be changing the game for filing documents under seal in civil cases.
December 9, 2016
The maker of the popular Snuggie blanket, Allstar Marketing Group, LLC, sued Amazon for trademark infringement earlier this week, alleging that the online retailer enabled the importation and sale of counterfeit Snuggie blankets.
November 22, 2016
Under 28 U.S.C. § 1404(a), “[f]or the convenience of parties and witnesses, in the interest of justice, a district court may transfer any civil action to any other district or division where it might have been brought.” When a party moves to transfer venue under § 1404(a), courts consider: (1) “the convenience of the parties,” (2) “the convenience of the witnesses,” (3) “the interests of justice,” and (4) “any other relevant factors when comparing alternative venues.” A recent opinion from Judge Nelson in the The Valspar Corporation and Valspar Sourcing, Inc. v. PPG Industries, Inc. case provides useful guidance for parties considering such a motion, especially concerning the convenience-of-the-parties prong of the analysis.
October 19, 2016
The Federal Circuit’s recent patent eligibility opinion in McRO Inc. v. Bandai Namco Games America, 2016 WL 4896481 (Fed. Cir. Sept. 13, 2016) is the latest to find claims involving computer technology that survive a § 101 challenge.
Avoiding Punitive Damages in Patent Infringement Cases: Staying on the Right Side of the Now-Blurred Line
September 19, 2016
The United States Supreme Court’s recent Halo Electronics v. Pulse Electronics case made it easier for a patent holder to win punitive damages in a patent infringement case.
Your First Shot to Invalidate a Patent May be Your Last—District of Minnesota Holds Issue Preclusion Bars Party from Presenting ANY Invalidity Arguments
August 30, 2016
The District of Minnesota recently held that the doctrine of issue preclusion bars a party from making any invalidity arguments or re-construing claims of a patent it has previously litigated.
August 25, 2016
The Federal Circuit has had few opportunities to address the new standard for proving indefiniteness since the Supreme Court relaxed the standard from “insoluble ambiguity” to “reasonable certainty” more than two years ago in Nautilus v. Biosig. Recently, however, the Federal Circuit applied Nautilus in affirming decisions in parallel cases, Icon Health & Fitness, Inc. v. Polar Electro Oy and Icon Health & Fitness, Inc. v. Garmin International, Inc., finding Icon’s asserted patent invalid as indefinite.
July 7, 2016
What is old is new again when it comes to willful infringement.
Six Fredrikson & Byron Attorneys Recognized in Intellectual Asset Management’s 2016 Patent 1000 Guide
June 1, 2016
Debuting in the 2016 edition of the IAM Patent 1000: The World’s Leading Patent Professionals were Lora Friedemann and Ann M. Ladd. Also ranked again were Thomas R. Hipkins, Kurt J. Niederluecke, Charles D. Segelbaum and David C. West. The IAM Patent 1000 identifies the top patent professionals in key jurisdictions around the world.
May 11, 2016
On May 11, 2016, President Obama signed the Defend Trade Secrets Act (DTSA) into law, creating a new federal cause of action for trade secret misappropriation. Previously, all trade secret claims had to be brought under state law (either under a state’s Uniform Trade Secrets Act or under common law). The new federal trade secret law has some notable features that will make it a useful tool for protecting innovation, especially for those industries where patent protection may be hard to obtain under the Supreme Court’s recent Mayo and Alice decisions.
April 26, 2016
In Genetic Technologies Ltd. v. Merial LLC, the Court of Appeals for the Federal Circuit recently issued an opinion holding yet another biotech patent invalid. The Federal Circuit applied the two-step Alice/Mayo test for patent eligibility in upholding the district court’s finding of invalidity. The patent at issue, U.S. Patent No. 5,612,179 (the ‘179 patent), is directed to methods of analyzing DNA sequences to detect an allele of gene by amplifying non-coding regions of the DNA. The parties agreed that claim 1 is representative of all of the invalidated claims:
April 18, 2016
Important changes in the regulations governing European Union Community Trademarks (formerly CTMs, now called EUTMs) may affect the scope of your trademark protection for CTM applications filed before June 22, 2012.
April 1, 2016
In October 2015, the Federal Trade Commission (FTC) said that it was investigating the advertising practices of Volkswagen Group of America, Inc. (Volkswagen) after it was uncovered that Volkswagen fitted its “clean diesel” automobiles with illegal emission defeat devices meant to mask emissions during government tests.
Recent Order from Magistrate Judge Franklin L. Noel Provides Important Lessons on Expert Disclosures
March 15, 2016
Contact: Intellectual Property Litigation
A recent order by Magistrate Judge Noel in Luminara Worldwide, LLC v. Liown Electronics Co. helps to clarify the Federal Rules on expert disclosures.
March 2, 2016
LifeLock will pay $100 million to the Federal Trade Commission (FTC) to settle the FTC’s contempt charges that the company violated a 2010 federal court order that requires the company to protect consumers’ personal information and stop its deceptive advertising. This settlement is the largest award the FTC has obtained in an enforcement action.
100 Bottles of Beer on the Wall (All with the Same Name) – What’s Wrong with Co-Existence Agreements?
March 1, 2016
Are co-existence agreements no longer a surefire strategy for getting a trademark registration in the face of a likelihood of confusion refusal? That could be the takeaway from the Trademark Trial and Appeal Board’s (TTAB) recent decision in which it held that a co-existence agreement was insufficient to overcome a refusal based on likelihood of confusion. In re Bay State Brewing Co., Inc., Serial No. 85826258 (Feb. 25, 2016).
Magistrate Judge Hildy Bowbeer Offers Further Guidance on When a Court Should Order a Patentee to Reduce the Number of Asserted Claims
A Patent holder bringing an infringement suit sometimes brings suit to enforce hundreds of patent claims and may have little motivation to drop asserted claims until late in the litigation, leaving a defendant and the Court with numerous claims in the pre-trial phase. A recent case before Magistrate Judge Bowbeer offered further guidance on how and when courts should reduce the number of asserted claims.
February 10, 2016
In a precedential decision issued by the Trademark Trial and Appeal Board (TTAB), the TTAB affirmed the examining attorney’s refusal to register SMART SERIES because the mark was merely descriptive. In re Cannon Safe, Inc., Serial No. 85651960 (TTAB Sept. 24, 2015). This raises two questions: how is SMART SERIES descriptive? And, what is wrong with being descriptive?
February 2, 2016
A recent decision by the Trademark Trial and Appeal Board serves as a good reminder that the title of a single work cannot be a trademark. Independent Media Corporation (PVT) Ltd. v. BOL Enterprise (PVT) Ltd., decided January 14, 2016.
February 1, 2016
January 22, 2016
In Hollywood Casino LLC v. Chateau Celeste, Inc., Opposition No. 91203686 (December 14, 2015), Applicant Chateau Celeste filed a trademark application to register the mark Hollywood Hotel. A problem arose, however, when Applicant’s President and CEO testified in a deposition that the Applicant was only a licensee – not the owner – of the mark. The Opposer, Hollywood Casino, seized on this testimony and moved for summary judgment, saying the Applicant could not apply to register a mark it did not actually own.
It is not uncommon for a party seeking to license or acquire a patent to request information from the patent holder regarding the patent’s validity and strength. Often, this includes highly confidential documents between the patent holder and attorneys, which are generally privileged and protected from disclosure. However, disclosing privileged documents to a third party usually constitutes a waiver of the privilege. In limited circumstances, the “common interest doctrine” allows two or more entities with a joint interest to share privileged information without waiving its protection. This can include, for example, communications between separate parties negotiating a patent license. Before disclosing any privileged communications to a potential licensee, though, a patent holder should carefully consider whether they may be discoverable in subsequent litigation by a party seeking to invalidate the patent.
December 2, 2015
Pleading patent infringement got a little bit trickier on December 1, 2015.
November 13, 2015
An early motion for summary judgment can be a useful tool when a claim turns on a question of law and the facts are not in dispute. In other cases, summary judgment is more appropriate after the opponent has had a full opportunity for discovery.
November 4, 2015
On October 19, the Supreme Court granted certiorari in two cases in which patent owners are challenging the Federal Circuit’s rigid standard for proving willful infringement. In their petitions, both patent owners compared the current test for enhanced damages to the Federal Circuit’s old test for attorney’s fees, which the Supreme Court tossed out last year in Octane Fitness LLC v. ICON Health & Fitness, Inc.
October 13, 2015
For all the protection the attorney-client privilege offers, it presents a bevy of potential pitfalls that may lead to the ultimate disclosure of the privileged documents.
October 6, 2015
If you sit on your rights as a patent owner, you may lose your claims against infringers. Patent owner Dane Technologies recently learned that lesson the hard way.
Magistrate Judge Rau Offers Primer on “Prevailing Party” Status Under the Patent Act’s Attorney Fees Provision
September 28, 2015
Patent law permits the award of legal fees to a “prevailing party” only in “exceptional cases.” A recent decision from Magistrate Judge Rau applying the Patent Act’s attorney fees provision reminds litigants that demonstrating a case is “exceptional” in only one part of the equation.
District Court in Octane Fitness Remand Awards Majority of Requested Attorneys’ Fees Under Section 285
September 11, 2015
In a lawsuit that redefined the standard for an exceptional case under 35 U.S.C. § 285, the District Court awarded defendant Octane Fitness $1,778,030 in fees and costs. The District Court initially denied Octane Fitness’ motion for fees. But after the Supreme Court redefined the standard on appeal, reversed and remanded the case (Octane Fitness, LLC v. Icon Health & Fitness, Inc., 134 S. Ct. 1749 (2014)), the District Court found the case exceptional under the new standard.
Want to Preliminarily Enjoin the Sale of an Infringing Device? Be Prepared to Show the Value of Your Patent
September 3, 2015
Recently, the District Court of Minnesota denied a patent holder’s motion to preliminarily enjoin the sale of an infringing device because the patentee failed to show a sufficient nexus between the allegedly infringing technology and lost sales.
August 17, 2015
Should a patent infringement lawsuit be stayed where an IPR challenges some, but not all, of the asserted claims? Magistrate Judge Hildy Bowbeer grappled with that issue in Oticon A/S v. GN Resound A/S, Case No. 15-cv-2066. Oticon, the patent holder, accused GN Resound of infringing 22 claims in a single patent. GN Resound petitioned for inter partes review. The PTAB instituted review on eighteen claims, but declined to institute review on the remaining four claims.
District of Minnesota Orders Patentee to Reduce Number of Asserted Claims After Filing Joint Claim Construction Statement
In May, the District of Minnesota ordered the parties in a patent case to meet and confer to try to reach an agreement regarding the deadline by which the patentee must reduce the number of asserted claims.
August 12, 2015
On May 8, 2013, Steven M. Gardner filed an action against CafePress, Inc. (CafePress). Gardner alleged that contents posted on the CafePress website, infringed Gardner’s copyrights in four works entitled “Find 12 Tigers,” “Polar Bears 10 Hidden Bears,” “Alaska Wildlife,” and “Harmony of Wolves.” The alleged infringement led to approximately $6,320 worth of products being sold.
July 29, 2015
Octane Fitness, the winner in a six year patent infringement lawsuit, will receive an award of attorney’s fees. In 2014, the case resulted in a change in the legal standard that applies when a prevailing party seeks a finding that a patent case is “exceptional,” allowing the party to seek an award of attorney’s fees.
July 21, 2015
In 1964, the Supreme Court decided Brulotte v. Thys and held that a patent owner cannot charge royalties for the use of a patented invention after the patent’s term has expired. While the Brulotte rule is simple, it has faced plenty of criticism over the years. Lower courts and academics alike have challenged the economic logic underlying the rule and criticized the decision as counterintuitive.
July 8, 2015
Magistrate Judge Leung considered this question in Stratasys, Inc. v. Microboards Technology, LLC. In the case, Stratasys claims that the H-Series 3D printer sold by Microboards Technology (“Afinia”) infringes various patents.
June 30, 2015
Despite the Supreme Court’s recent Commil USA, LLC v. Cisco Systems, Inc. decision, invalidity opinions of counsel remain an important tool for mitigating patent infringement risk. Under Commil, invalidity opinions cannot be used to show that an accused infringer lacked the requisite intent to induce—i.e., the scienter element—under 35 USC § 271(b). But companies will continue to use the opinions to memorialize early-stage validity analyses as part of a broader strategy of assessing potential patent infringement risk.
June 16, 2015
Last year Congress tried to pass a bill aimed at curbing abusive patent litigation initiated by so-called “patent trolls,” or non-practicing entities (NPEs), but the bill died in the Senate when it was dropped from the Senate’s agenda as it was nearing a vote, even though the bill had passed in the House and President Obama had indicated he would sign it. This year, the push for legislation has been revived and bills have been introduced in both the House of Representative and the Senate.
June 4, 2015
Patent holders bringing infringement suits sometimes unnecessarily assert that a competitor infringes an unreasonable number of patent claims. Courts have the authority and discretion to reasonably limit the number of asserted claims in order to combat potential abuse. When that reduction should occur is less certain.
May 21, 2015
The District of Minnesota is one of the busiest courts in the nation. The District also carries a greater than average load of patent cases. The Senior Status Judges in the District take a full case load, but do not handle patent cases.
May 19, 2015
Many companies accused of infringement have turned to Inter Partes Review (IPR) as an alternate route for challenging the validity of patent claims. But what happens if an accused infringer moves to stay litigation in light of a pending IPR petition? In the District of Minnesota, that motion will likely be considered premature.
District of Minnesota Holds that Mayo, Myriad, and Alice Apply to Dog-Eat-Dog World of Canine Genetic Testing
On March 31 in Genetic Veterinary Sciences, Inc., d/b/a Paw Print Genetics v. Canine EIC Genetics, LLC, No. 14-CV-1598 (JRT/JJK), Judge John R. Tunheim addressed the question of whether veterinarians can obtain patents for identifying genetic markers of canine disease. Not surprisingly, the court held that the Supreme Court’s recent decisions regarding unpatentable subject matter (Mayo Collaborative Servs. v. Prometheus Labs; Ass’n for Molecular Pathology v. Myriad Genetics, Inc.; and Alice Corp. Pty. Ltd. v. CLS Bank Int’l) apply equally to all forms of medicine, even if the patient is a dog. Because the patent claims simply identified a natural law, Judge Tunheim found them invalid.
When should a company facing charges of patent infringement be required to recall the accused products? A recent District of Minnesota decision noted the absence of controlling authority on that question, but ordered a recall nonetheless.
May 1, 2015
Magistrate Judge Bowbeer recently granted Plaintiff Polaris Industries Inc.’s motion for a protective order preventing testimony on a Rule 30(b)(6) topic relating to disputed prior art.
April 29, 2015
Many courts have done away with oral argument on motions. The District of Minnesota, however, continues to holds hearings on dispositive and non-dispositive motions.
April 18, 2015
Does the United States Patent Act apply to a U.S. ship in international waters? Judge Montgomery considered this question in M-I Drilling Fluids UK Ltd. v. Dynamic Air Inc., Case No. 14-cv-4857.
Attorneys Eric Snustad & Charles Segelbaum Featured in The National Law Journal’s Twin Cities Counsel to Counsel Report
April 13, 2015
FTC Warning to Brain and Fitness App and Software Makers: Game / App Must Remove Unscientific Claims of Memory and Mental Fitness Improvement
January 27, 2015
The Federal Trade Commission (FTC) has signaled its willingness to regulate and scrutinize claims of improved physical and mental fitness made by software and app makers.
January 5, 2015
Courtney A. Hofflander Thompson has joined Fredrikson & Byron as an attorney in the Advertising, Marketing & Trademark, Data Protection & Cybersecurity, Life Sciences and Intellectual Property Groups.
December 22, 2014
December 19, 2014
The Business Software Alliance (BSA) targets small and mid-size businesses, extracting settlements with threats of huge damages. In this article, you will be provided a legal background on software license disputes and tips to consider in interacting with the BSA.
November 4, 2014
By John S. Parzych and Krithiga Ganesan
It is no secret that the U.S. Supreme Court’s decision in Alice Corp. v. CLS Bank International (Alice) is wreaking havoc to software and business method patents found to merely link abstract ideas with conventional elements, such as a computer. However, we are now also getting a taste of Alice’s potential effects on non-business method patents.
Limelight Decision Opens the Door to Challenge Federal Circuit’s Standard for Direct Infringement of a Method Claim
June 30, 2014
The United States Supreme Court recently confirmed the long-standing law regarding inducement of infringement in their decision in Limelight Networks, Inc. v. Akamai Technologies, Inc. Patent holders should read more for an analysis of the decision.
May 21, 2014
By Timothy M. O’Shea and Ted C. Koshiol
The United States Supreme Court recently changed the standard for awarding attorneys’ fees in infringement cases, giving district courts greater latitude to award fees, and making it less likely that those awards will be overturned on appeal.
Federal Circuit Court of Appeals Denies Patent on Cloned Animals to the Inventors of Dolly the Sheep
May 12, 2014
By Mia E. Mendoza and Kara K. Fairbairn
Last week, in the case of In re Roslin Institute (Edinburgh), the Federal Circuit Court of Appeals held that claims to cloned animals were not eligible for patent protection under 35 U.S.C §101 because the cloned animals are copies of products of nature. A key factor in the decision was that, although cloned animals are not completely identical to the animals from which they were copied, the differences between them were not claimed. The biotech community should take note of this decision which has important implications for the patentability of many biotech products as well as how to draft claims to avoid problems under §101.
The Supreme Court Decides that False Advertising Standing Requires Economic or Reputational Injury Proximately Caused by Defendant’s Advertising
March 27, 2014
On March 25, 2014, the Supreme Court decided the relevant test for determining if a plaintiff has standing to sue for false advertising in the case of Lexmark Int’l, Inc. v. Static Control Components, Inc.
March 13, 2014
A three year old patent suit has been stayed pending review in the Patent Trial and Appeal Board. The stay is the first granted in the District of Minnesota since the Leahy-Smith America Invents Act created a new procedure for challenging Covered Business Method patents. When granting the stay, the Court expressed “grave doubts” about the validity of the patents.
March 6, 2014
By Kara K. Fairbairn and Mia E. Mendoza
The United States Patent and Trademark Office (USPTO) just published new guidelines advising examiners and the public of the factors for determining whether an invention satisfies the U.S. Supreme Court’s interpretation of patent eligible subject matter under 35 U.S.C. §101 under their Myriad and Prometheus holdings.
Is It Time to Reevaluate Your Patent Licenses? The Supreme Court Strengthens the Hand of Licensees in MedImmune and Medtronic
March 5, 2014
If you have a license to a patent and have lingering doubts about whether the patent actually covers your product, two recent Supreme Court decisions should be of interest to you.
February 24, 2014
January 21, 2014
What if someone sold you a product and then sued you for patent infringement because you used the product for its intended purpose? The doctrine of patent exhaustion guards against such a situation, and the Federal Circuit recently made an important clarification of that doctrine.
October 1, 2013
Everyone knows the adage “the best defense is a good offense.” That adage can now be applied to the field of patent procurement. United States patent laws recently underwent a radical transformation from a first to invent system to a first to file system.
July 1, 2013
Just as people were starting to gain a sense of comfort dealing with changes to the U.S. patent system brought on by the America Invents Act of 2011, we now find that Europe is also planning changes to its own patent system.
June 1, 2013
A new Vermont state law set to go into effect on July 1, 2013, creates penalties for “bad faith assertions of patent infringement.”
April 1, 2013
By Fredrikson’s Securities Group
On April 2, 2013, the SEC confirmed that public companies may use social media, such as Facebook and Twitter, and other emerging means of communication in much the same way that they use their own websites to announce key information in compliance with Regulation FD. The key is whether investors have been notified about the social media accounts ahead of time.
October 1, 2012
By Asmah Tareen
The fashion industry has long complained about the fact that, unlike European law, U.S. intellectual property law does not offer protection for those who create unique fashion design.
October 1, 2011
The most significant revamping of United States patent law in the last 50 years was enacted on September 16, 2011, with President Obama’s signature of the America Invents Act. The Act, which will be implemented over the next 18 months, changes the procedures for obtaining new patents and provides new tools for challenging existing patents.