Filing/Prosecution and Patentshttp://www.managingip.com/RSS.aspx?FeedID=2910©2017 Managing Intellectual Property60Filing/Prosecution and PatentsQualcomm, Apple, Saint Regis Mohawk Tribe, Amazon, Microsoft, PTAB, Oil States, SAS, Rule 36 – the week in IPRecent intellectual property news included Qualcomm suing Apple in the Beijing Intellectual Property Court, the chipmaker being fined in Taiwan, the Saint Regis Mohawk Tribe asserting SRC patents against Amazon and Microsoft, the SAS case at the Supreme Court potentially having a bigger PTAB impact than Oil States, the Federal Circuit reducing its use of Rule 36 affirmances, and the FT suggesting the troll problem is overblownhttp://www.managingip.com/Article/3760377/Qualcomm-Apple-Saint-Regis-Mohawk-Tribe-Amazon-Microsoft-PTAB-Oil-States-SAS-Rule-36the-week-in-IP.htmlThu, 19 Oct 2017 14:00:00 GMTAllergan, Waymo, Uber, Aqua Products, Marrakesh Treaty, EPO, INPI – the week in IPRecent intellectual property news included a judge asking Allergan whether its Native American tribe deal is a sham, Waymo and Uber’s trade secrets trial date being pushed back, the ramifications of the Aqua Products opinion, Costa Rica becoming the 33rd country to join the Marrakesh Treaty, and the EPO and Brazil’s INPI launching a PPH pilot programmehttp://www.managingip.com/Article/3758518/Allergan-Waymo-Uber-Aqua-Products-Marrakesh-Treaty-EPO-INPIthe-week-in-IP.htmlWed, 11 Oct 2017 18:00:00 GMTFederal Circuit vacates injunction in Amgen’s dispute with SanofiThe permanent injunction granted by the District of Delaware in the dispute between Amgen and Sanofi/Regeneron over cholesterol-lowering treatment has been vacated, in a decision that also included some implications for the USPTO’s practice of granting broad antibody claimshttp://www.managingip.com/Article/3758434/Federal-Circuit-vacates-injunction-in-Amgens-dispute-with-Sanofi.htmlWed, 11 Oct 2017 15:45:00 GMTAnalysis: Was the Federal Circuit’s Aqua Products opinion a wash out?The Federal Circuit’s en banc Aqua Products v Matal ruling has been described as “a complete non-event” and “a real mess” that “did little to resolve the big questions” surrounding the PTAB's treatment of motions to amend. However, it did shift the burden of persuasion to the petitioner, while some believe the Chevron implications of the decision are most interestinghttp://www.managingip.com/Article/3757162/Analysis-Was-the-Federal-Circuits-Aqua-Products-opinion-a-wash-out.htmlFri, 06 Oct 2017 10:45:00 GMTUSPTO, AbbVie, Amgen, ITC, design patents – the week in IPRecent intellectual property news included a proposal to make the USPTO an independent agency, a record year for US patent issuance, a settlement of AbbVie and Amgen’s Humira biosimilar dispute, a surge of complaints at the International Trade Commission, and the first post-Samsung verdict on design patent damageshttp://www.managingip.com/Article/3756819/USPTO-AbbVie-Amgen-ITC-design-patentsthe-week-in-IP.htmlWed, 04 Oct 2017 19:00:00 GMTFederal Circuit issues narrow en banc Aqua Products opinionThe long-awaited Aqua Products ruling is narrow – a result of different views on the judgment and the rationale that should be employed. The matter is remanded for the PTAB to consider the patentability of the proposed substitute claims without placing the burden of persuasion on the patent ownerhttp://www.managingip.com/Article/3756784/Federal-Circuit-issues-narrow-en-banc-Aqua-Products-opinion.htmlWed, 04 Oct 2017 17:00:00 GMTPTAB filling falls in Q3 but still on track for record yearThe third quarter had the fewest Patent Trial and Appeal Board petitions since the first quarter of 2016. In September, the Board designated one of its decisions as informative and also granted a rare rehearing in an IPR involving the Coalition for Affordable Drugshttp://www.managingip.com/Article/3756642/PTAB-filling-falls-in-Q3-but-still-on-track-for-record-year.htmlWed, 04 Oct 2017 14:30:00 GMTCanada and Americas supplements now onlineOur latest supplements, on Canada and the Americas, are now available to read online. They include articles on Canada’s new drug and biosimilar patent linkage system and litigation landscape, Brazil’s new Civil Procedure Code, and Mexico’s boundaries of patent claim amendmenthttp://www.managingip.com/Article/3756236/Canada-and-Americas-supplements-now-online.htmlMon, 02 Oct 2017 20:45:00 GMTAllergan, Saint Regis Mohawk Tribe, Apple, Uber, Waymo, Inside Out, Netflix, FTC endorsement guidance – the week in IPRecent intellectual property news included a motion to dismiss IPRs covering Allergan’s Restasis treatment, an Apple dispute involving a patent transferred to a company with Native American tribe links, the latest in the Waymo/Uber trade secrets case, a copyright lawsuit over Disney’s Inside Out, Pablo Escobar’s brother threatening to close Narcos down because of trade marks and revised FTC guidance on social media endorsershttp://www.managingip.com/Article/3755305/Allergan-Saint-Regis-Mohawk-Tribe-Apple-Uber-Waymo-Inside-Out-Netflix-FTC-endorsement-guidancethe.htmlThu, 28 Sep 2017 19:00:00 GMTSigns of life for doctrine of equivalents in the USSome recent Federal Circuit decisions as well as a petition to the Supreme Court suggest the doctrine of equivalents is not dead in the US, despite a declining number of decisions referencing the doctrine since Warner-Jenkinson in 1997http://www.managingip.com/Article/3754949/Signs-of-life-for-doctrine-of-equivalents-in-the-US.htmlWed, 27 Sep 2017 17:45:00 GMTHow Allergan’s Mohawk tribe patent deal could blow up the IPR systemIf successful, Allergan’s eye-catching gambit of seeking to cancel PTAB proceedings by assigning patents to the Saint Regis Mohawk Tribe would be a blueprint for others to follow. But will the PTAB rule that sovereign immunity applies in this case?http://www.managingip.com/Article/3753211/How-Allergans-Mohawk-tribe-patent-deal-could-blow-up-the-IPR-system.htmlThu, 21 Sep 2017 21:15:00 GMTGoogle, HTC, TTAB, PTAB, Judge Michel, Apple, Acacia, Microsoft – the week in IPRecent news included Google receiving a licence for HTC intellectual property, the TTAB again finding “Pretzel Crisps” to be generic, the PTAB designating a decision as informative, Judge Paul Michel suggesting seven ways to improve the US patent system, Apple settling with Acacia following a $22m verdict, and Microsoft extending its Azure programme to Chinahttp://www.managingip.com/Article/3753155/Google-HTC-TTAB-PTAB-Judge-Michel-Apple-Acacia-Microsoftthe-week-in-IP.htmlThu, 21 Sep 2017 17:00:00 GMTMonkey selfie, Octane, Halo, Garmin, Navico, Qualcomm, Apple, PTAB, Amazon – the week in IPA monkey selfie settlement, the Federal Circuit ruling on Octane, Halo being denied enhanced damages, an award of $39m damages for Navico, a denial of Qualcomm’s motion for an injunction against Apple, the percentage of women appearing before the PTAB, the expiration of Amazon’s one-click patent, and IBM chief patent counsel Manny Schecter’s hopes for the new USPTO director were in the recent intellectual property newshttp://www.managingip.com/Article/3751254/Monkey-selfie-Octane-Halo-Garmin-Navico-Qualcomm-Apple-PTAB-Amazonthe-week-in-IP.htmlThu, 14 Sep 2017 20:00:00 GMTRopes & Gray hires PTAB chair from Oblon, and other US people movesManaging IP’s regular update of people moves includes hires by Ropes & Gray, Norton Rose Fulbright, Honigman Miller Schwartz and Cohn, Hogan Lovells, Wolf Greenfield, Shook Hardy & Bacon and BakerHostetler. These include new roles for two former AIPLA presidentshttp://www.managingip.com/Article/3750643/Ropes-and-Gray-hires-PTAB-chair-from-Oblon-and-other-US-people-moves.htmlTue, 12 Sep 2017 21:45:00 GMTPTAB August round-up: Filing down; Federal Circuit criticises PTAB in two opinions; ruling on standing126 PTAB petitions were filed in August, while the Federal Circuit expressed concern with the Board’s practice of joinder and expanded panels in Nidec Motor v Zhongshan Broad Ocean Motor, said it abused its discretion for failing to consider material evidence in Ultratec v CaptionCall, and ruled that an IPR petitioner doesn’t need to satisfy Article III standing requirements to participate in a patent owner’s appeal in Personal Audio v EFFhttp://www.managingip.com/Article/3749451/PTAB-August-round-up-Filing-down-Federal-Circuit-criticises-PTAB-in-two-opinions-ruling-on-standing.htmlThu, 07 Sep 2017 23:30:00 GMTFederal Circuit to answer “serious questions” about PTAB joinder and panelsA concurring opinion in Nidec Motor v Zhongshan Broad Ocean Motor critical of the PTAB’s position on joinder and expanded panels suggests the Federal Circuit will further scrutinise these issues in future decisionshttp://www.managingip.com/Article/3749428/Federal-Circuit-to-answer-serious-questions-about-PTAB-joinder-and-panels.htmlThu, 07 Sep 2017 18:30:00 GMTIn Re Brunetti, Nintendo, hashtag trade marks, Blackbird Technologies, patent application references, CBS, Dr Phil – the week in IPFederal Circuit oral arguments over scandalous and immoral marks, a jury awarding $10m against Nintendo, hashtag trade mark applications increasing 64%, data on cited references in patent applications, a profile of Blackbird Technologies, a dispute over CBS’s use of a photograph in a news programme and an unusual copyright case involving Dr Phil were in the recent intellectual property newshttp://www.managingip.com/Article/3749042/In-Re-Brunetti-Nintendo-hashtag-trade-marks-Blackbird-Technologies-patent-application-references-CBS.htmlWed, 06 Sep 2017 21:30:00 GMTFederal Circuit to hear USPTO attorneys' fees issue en bancParties have been asked to brief on the issue of whether Section 145’s “[a]ll the expenses of the proceedings” provision authorises an award of the USPTO’s attorneys’ fees, after the Federal Circuit ordered a sua sponte rehearing en banc of Nantkwest v Matalhttp://www.managingip.com/Article/3748965/Federal-Circuit-to-hear-USPTO-attorneys-fees-issue-en-banc.htmlWed, 06 Sep 2017 16:45:00 GMTAssessing Trump’s USPTO director nominee, Andrei IancuUSPTO director nominee Andrei Iancu has broad experience of patent litigation and PTAB proceedings. But observers are unclear about his views on a number of issueshttp://www.managingip.com/Article/3748671/Assessing-Trumps-USPTO-director-nominee-Andrei-Iancu.htmlWed, 06 Sep 2017 02:45:00 GMTNews round-up – recent IP stories of interestRecent intellectual property news included stories involving VidAngel, Finjan, a protest at the USPTO, Costco, Tiffany, Cheerios, Rubik’s Cube, CPA Global, Aqua Licensing, Crocs, Warner Bros and Pepe the Froghttp://www.managingip.com/Article/3746728/News-round-uprecent-IP-stories-of-interest.htmlThu, 31 Aug 2017 00:00:00 GMTNew Zealand joins global patent prosecution highwayThe Intellectual Property Office of New Zealand (IPONZ) became a participant patent office in the global patent prosecution highway (GPPH) on July 6. IP practitioners in New Zealand point out that the GPPH provides an accelerated option, but not acceptance of a patent. They also stress that use of the GPPH may not result in the broadest possible claims as claims need to sufficiently correspond to those found allowablehttp://www.managingip.com/Article/3746414/New-Zealand-joins-global-patent-prosecution-highway.htmlWed, 30 Aug 2017 10:30:00 GMTTrump nominates Irell & Manella’s Iancu for USPTO directorAndrei Iancu will succeed Michelle Lee as USPTO director if the US Senate confirms his nomination. He is a managing partner of Irell & Manella in Los Angeleshttp://www.managingip.com/Article/3745986/Trump-nominates-Irell-and-Manellas-Iancu-for-USPTO-director.htmlTue, 29 Aug 2017 05:30:00 GMTIndia releases new guidelines for examination of computer-related inventionsIndia has a new set of guidelines for examination of computer-related inventions that are more favourable to patentees. But Indian IP practitioners see ambiguities that may lead to unsuitable patents being grantedhttp://www.managingip.com/Article/3744871/India-releases-new-guidelines-for-examination-of-computer-related-inventions.htmlThu, 24 Aug 2017 15:30:00 GMTUK and the UPC system: the state of playThe UK has made remarkable progress towards ratifying the UPC Agreement but there will be difficult negotiations to remain in the UPC and unitary patent system post-Brexit. In the first of a two-part article, Kingsley Egbuonu spoke to Alan Johnson of Bristows about UK’s preparations, post-Brexit participation and the impact of being outside the systemhttp://www.managingip.com/Article/3743143/UK-and-the-UPC-system-the-state-of-play.htmlMon, 21 Aug 2017 09:15:00 GMTThe latest Americas IP people movesManaging IP’s regular update of people moves includes hires by Orrick, Mintz Levin, Merchant & Gould, Foley & Lardner, BakerHostetler and King & Spalding, as well as Erich Spangenberg leaving Marathon and a new INTA chief representative officer for Latin America and the Caribbeanhttp://www.managingip.com/Article/3741026/The-latest-Americas-IP-people-moves.htmlMon, 14 Aug 2017 05:15:00 GMTAttorneys’ fees, Federal Circuit, will.i.am, EFF, Erich Spangenberg, CRISPR, Prism, Philips, ITC, Qualcomm, Apple, Aqua IP Investor Pool – the week in IPThe Federal Circuit confirming the attorneys’ fees standard is the same in patent and trade mark cases, will.i.am being denied a trade mark registration, EFF winning an appeal of its podcasting dispute with Personal Audio, Erich Spangenberg leaving Marathon, the EPO intending to grant a CRISPR patent, a $30m damages award being set aside, a $10.3m award for Philips, a pool to connect patent holders with high-growth start-ups, and the ITC taking on Qualcomm’s complaint against Apple were in the recent intellectual property newshttp://www.managingip.com/Article/3740634/Attorneys-fees-Federal-Circuit-william-EFF-Erich-Spangenberg-CRISPR-Prism-Philips-ITC-Qualcomm-Apple.htmlThu, 10 Aug 2017 19:15:00 GMTCanada publishes proposed amendments to Patent RulesThe Canadian government has published proposed amendments to the Canadian Patent Rules for public consultationhttp://www.managingip.com/Article/3740633/Canada-publishes-proposed-amendments-to-Patent-Rules.htmlThu, 10 Aug 2017 19:15:00 GMTJuly PTAB data and analysis: Filing falls, motion to amend granted on remand, Federal Circuit reverses amendment, sovereign immunity applied for third time139 Patent Trial and Appeal Board petitions were filed in July. The month also included the Board granting a motion to amend on remand, the Federal Circuit vacating a granted motion to amend, and sovereign immunity as a defence to an IPR being applied for the third timehttp://www.managingip.com/Article/3740239/July-PTAB-data-and-analysis-Filing-falls-motion-to-amend-granted-on-remand-Federal-Circuit-reverses.htmlWed, 09 Aug 2017 17:00:00 GMTPTAB designates Athena Automation assignor estoppel decision as precedentialThe Patent Trial and Appeal Board’s October 2013 decision determining that the doctrine of assignor estoppel is not an exception to Section 311(a) is the ninth to be deemed precedentialhttp://www.managingip.com/Article/3740237/PTAB-designates-Athena-Automation-assignor-estoppel-decision-as-precedential.htmlWed, 09 Aug 2017 17:00:00 GMTCRISPR, Apple, Nokia, Blockchain patents, Dominion Harbor, Quincy Jones, TC Heartland – the week in IPUC Berkeley’s appeal in its CRISPR dispute with the Broad Institute of MIT and Harvard, Apple’s $2bn payment to Nokia, Blockchain applications at the USPTO almost doubling, Dominion Harbor and Hawkeye Ventures creating a $50 million patent acquisition fund, Quincy Jones being awarded $9.4m in unpaid royalties, and a judge stating TC Heartland was a “sea change” were in the recent intellectual property newshttp://www.managingip.com/Article/3738316/CRISPR-Apple-Nokia-Blockchain-patents-Dominion-Harbor-Quincy-Jones-TC-Heartlandthe-week-in-IP.htmlWed, 02 Aug 2017 00:15:00 GMT