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Category Archives: Intellectual Property Litigation

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Patent Law: Making On-Sale Bar Jurisprudence Coherent

Posted in Development & Commercialization of Technology, Intellectual Property Litigation, Patent Counseling & Strategies, Patent Prosecution, Technology Transactions, Uncategorized

“Rather than rest our decision on formalities, our focus is on what makes our on-sale bar jurisprudence coherent: preventing inventors from filing for patents a year or more after the invention has been commercially marketed, whether marketed by the inventor himself or a third party.”  The Medicines Company v. Hospira, Inc., No. 2014-1469, slip op…. Continue Reading

Unitary Patents, the Unified Patent Court, Opt-Out Timing, Pros and Cons

Posted in Biotechnology, Development & Commercialization of Technology, Intellectual Property Litigation, Nanotechnology, Patent Counseling & Strategies, Technology News & Events

Regardless of the June 23, 2016 vote on Brexit, all owners of European patents, and all applicants seeking patents in Europe, will have both new options, and a new set of important decisions to make.  Most commentators anticipate that the Unitary Patents (UPs) and the Unified Patent Court (UPC) will come into effect and patentees… Continue Reading

Virtual Patent Marking

Posted in Biotechnology, Development & Commercialization of Technology, Intellectual Property Litigation, Nanotechnology, Patent Counseling & Strategies

Patent Marking Under the patent marking statute, 35 U.S.C. § 287(a),  notice can be actual, or  constructive notice. Actual notice occurs when the alleged infringer is directly informed that its product infringes the patent. Constructive notice can be achieved by affixing a product with the word “patent” or abbreviation “pat.” along with the patent number…. Continue Reading

Patent Issues Arising from Consulting Agreements (TriReme Med., LLC v. Angioscore, Inc., No. 15-1504 (Fed. Cir. 2016))

Posted in Consulting Agreements, Intellectual Property Litigation, Patent Counseling & Strategies

In a recent dispute between two medical device companies, a consultant’s alleged contributions to Angioscore patents became a central issue (TriReme Med., LLC v. Angioscore, Inc., No. 15-1504 (Fed. Cir. 2016)). The dispute underscores several patent issues that can arise from consulting agreements. A brief summary is provided below: The consultant Dr. Lotan claimed an… Continue Reading

Standard of Review for Claim Construction on Appeal

Posted in Intellectual Property Litigation, Patent Counseling & Strategies

On January 20, 2015, the Supreme Court provided guidance on the standard of review for claim construction on appeal in Teva Pharmaceuticals USA, Inc. v. Sandoz, Inc., No. 12-854. The Court held “[w]hen reviewing a district court’s resolution of subsidiary factual matters made in the course of its construction of a patent claim, the Federal… Continue Reading

Patent Definiteness Requirement Update

Posted in Definiteness/Indefiniteness, Intellectual Property Litigation

The Supreme Court recently “conclude[d] that the Federal Circuit’s formulation, which tolerates some ambiguous claims but not others, does not satisfy the statute’s definiteness requirement.” Nautilus, Inc. v. Biosig Instruments, Inc., No. 13-369 (2014). Instead, the Court concluded that “a patent is invalid for indefiniteness if its claims, read in light of the specification delineating… Continue Reading

Adam Carolla Gets It On with Personal Audio Settlement

Posted in E-Commerce (Internet Agreements and Issues), Intellectual Property Litigation, Technology News & Events

As part of their settlement, Adam Carolla and Personal Audio LLC agreed to not make any public statements concerning their patent infringement lawsuit until September 30th.[1]  On Wednesday’s podcast, Adam Carolla and Mike August, a former attorney, discussed the lawsuit and the settlement that was reached between Carolla and Personal Audio.[2] Personal Audio had filed… Continue Reading

Personal Audio No Longer Trolling Adam Carolla

Posted in Intellectual Property Litigation, Technology News & Events

Adam Carolla has reportedly settled the lawsuit that was filed against him by Personal Audio LLC.[1]  The Agreed Motion to Dismiss Claims is available for review, but the specific terms of the settlement have not been disclosed—the parties have agreed to not make any public statements concerning the litigation until September 30th.[2]  Nonetheless, there are… Continue Reading

Ongoing Developments in Patent Law: Claim Construction on Appeal, Indefiniteness, and PTAB Decisions

Posted in Intellectual Property Litigation

There are a few patent cases to keep track of in the future that may have an impact on claim construction, indefiniteness, and Patent Trial and Appeal Board (PTAB) decisions.  Here is a list of cases to watch: The Supreme Court granted certiorari in the Teva Pharmaceuticals USA, Inc. v. Sandoz Inc. (Dkt. No. 13-854) to consider… Continue Reading

The Cost of Defending Against Patent Trolls

Posted in Intellectual Property Litigation, Technology News & Events

It should come as no surprise that defending against Non-Producing Entities—most of which are Patent Trolls[1]—is expensive, especially for small businesses and corporations. In support of his ongoing legal battle with the patent troll Personal Audio, LLC, Adam Carolla has currently raised over $445,000 dollars towards litigation through the crowdfunding website FundAnything.com.[2] Yet, unless Personal… Continue Reading

Victims of Patent Trolls Get Re-Sharpened Weapon in their Defense

Posted in Intellectual Property Litigation, IP Counseling and Strategies, Technology News & Events, Technology Transactions

 Fee-shifting in patent infringement suits has been authorized by statute since 1952, for application in “exceptional cases.” [1] For the past nine years, that statute has not often been applied as a result of the Federal Circuits’ decision in Brooks Furniture, which requires the prevailing party in a patent infringement action seeking attorney’s fees establish… Continue Reading

Carolla Going after the Patent Trolls

Posted in Intellectual Property Litigation

Adam Carolla continues his battle against the patent troll, Personal Audio, LLC.  So far, Carolla has spent more than $450,000 in attorney fees.  The result?  There has been enough discovery for Carolla to determine that Personal Audio does not have a case against him.  The lawsuit, however, is still proceeding against Carolla.[1] But there is… Continue Reading

The Adam Carolla Show v. Patent Trolls

Posted in E-Commerce (Internet Agreements and Issues), Intellectual Property Litigation, Technology News & Events, Technology Transactions

The Adam Carolla Show was sued last year in the Eastern District of Texas by a company claiming that Carolla’s podcasts violate their patent.  Rather than bend over and settle out of court with the claimant, Adam Carolla has taken a stance against the so-called patent troll. Earlier this year, Julie Samuels made an appearance… Continue Reading

Intellectual Capital Development for Technology Companies, Cost Effective Adjunct to IP

Posted in Biotechnology, Development & Commercialization of Technology, Employment & Personnel Issues, Intellectual Property Litigation, Nanotechnology, Patent Counseling & Strategies, Technology News & Events, Technology Transactions, Venture Capital, Private Equity and Other Financings

 The term Intellectual Capital means different things to different people even in the technology space.  For business planning purposes, intellectual capital should be recognized as more than patents, copyrights, and other forms of intellectual property, extending broadly to employee skills, knowledge, and problem solving abilities.  This is sometimes referred to as a company’s or its… Continue Reading

Adam Carolla Refusing to Feed the Trolls

Posted in Intellectual Property Litigation, Technology News & Events, Uncategorized, Venture Capital, Private Equity and Other Financings

The WinTech blog previously covered a patent infringement lawsuit filed against the “Adam Carolla Show” from ACE Broadcasting Network, LLC.[1]  The plaintiff, Personal Audio, LLC, alleges that the “Adam Carolla Show” is infringing on their patent for a “[s]ystem for disseminating media content representing episodes in a serialized sequence.”[2]  The patent could also be interpreted… Continue Reading

Bring-Your-Own-Device: Are Employers Opening the Door to Security and Legal Risks?

Posted in Employment & Personnel Issues, Intellectual Property Litigation

According to a recent press release by Gartner, Inc., a global technology research and advisory company, half of all employers are expected to require their employees to supply their own devices for work by 2017.  A well-implemented and maintained mobile initiative, like a bring-your-own-device (BYOD) workplace, has its benefits, such as driving innovation, creating new… Continue Reading

Pirates, or Freedom Fighters on the Electronic Frontier, Copyright Changes for the Digital Age?

Posted in Development & Commercialization of Technology, E-Commerce, Employment & Personnel Issues, Intellectual Property Litigation, Technology News & Events, Technology Transactions

The U.S. Patent and Trademark Office (USPTO) announced this month that they will be engaging with stakeholders through public comments and roundtables to study a variety of policy issues highlighted in the Department of Commerce’s Internet Policy Task Force (IPTF or Task Force) Green Paper, titled “Copyright Policy, Creativity, and Innovation in the Digital Economy.”… Continue Reading

Are Human Genes Patentable? It depends,

Posted in Biotechnology, Development & Commercialization of Technology, Intellectual Property Litigation, Nanotechnology, Patent Counseling & Strategies, Technology News & Events, Technology Transactions

On June 13, 2013, the U.S. Supreme Court issued a unanimous decision on the issue of whether or not human genes are patentable.  In Association for Molecular Pathology v. Myriad Genetics, Inc. (the Myriad decision), the Court unanimously held that naturally occurring deoxyribonucleic acid (DNA) segments are products of nature and not patent eligible, even… Continue Reading