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Katz Patent Reexaminations: A Change in Momentum Favoring RAKTL Targets ( June 2004 )
On March 26, 2004, the Director of the United States Patent & Trademark Office issued reexamination orders regarding four patents from the Katz Patent Portfolio, representing nearly 350 separate claims. Although the orders require reexamination of only a fraction of the claims in the Katz Patent Portfolio, likely these Director-initiated reexaminations will invigorate prior art searching efforts and requests for reexamination proceedings by companies Katz has approached about taking a license. -
Pre-litigation Strategies: Patent Reexamination ( May 2004 )
The costs of patent litigation - both in terms of time and money - have been well documented. For example, a patent lawsuit can require several years of concerted effort by company management and outside counsel to complete pretrial discovery and trial. Then, the trial may be followed by an appeal to the Federal Circuit Court of Appeals. -
Patents, Politics, And Cloning ( February 2004 )
The United States is on the verge of enactment of a law that would inject "pro-life" politics squarely into the patent arena. Indeed, a bill sponsored by Rep. David Joseph Weldon (R-Fla.) would codify the U.S. Patent and Trademark Office's existing policy that human organisms are ineligible subject matter to patent. In other words, if the bill becomes law, then the USPTO would be barred from issuing patents claiming human organisms, including genetically engineered embryos, fetuses, and human beings. -
Federal Circuit Decides Festo on Remand from the Supreme Court ( January 2004 )
On September 26, 2003, the Federal Circuit decided <i>Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., Ltd.</i>, 344 F.3d 1359 (Fed. Cir. 2003), which was on remand from the Supreme Court. The Federal Circuit's decision appears to be directed towards a very limited exception to the total surrender presumption, and the minority opinions illustrate that there is tension within the Federal Circuit regarding the approach to barring equivalents. -
Patent Foreseeability in the Wake of Festo ( October 2003 )
On remand from the Supreme Court, the Court of Appeals for the Federal Circuit recently revisited the issue as to whether prosecution history estoppel barred a patent owner from relying on the doctrine of equivalents in a patent infringement suit. In this highly anticipated decision, <i>Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., Ltd.</i>, the court concluded that the doctrine of equivalents might still be available to the patentee and remanded the case to the district court to make the determination. In reaching this conclusion, the Federal Circuit addressed whether any of three mechanisms for rebutting the presumption that prosecution history estoppel applies were available to the plaintiff and determined that one of them – unforeseeability – might be. -
IP Litigation Strategies: Patents: Markman Hearings (Part 1) ( September 2003 )
Michael Bettinger, leader of the Intellectual Property Litigation Group at Preston Gates & Ellis LLP, discussed the Markman hearing, which in patent litigation determines the meaning and scope of the patent claims in dispute. In the Supreme Court's Markman decision, Mr. Bettinger explained, the court held that meaning of patent claims is to be determined by judges as a matter of law, not by juries. According to Mr. Bettinger, it is now the single biggest event that happens in a patent case prior to trial. -
Technology Licensing Agreements: Findlaw Interview with Richard C. Hsu of Townsend and Townsend and Crew ( August 2003 )
Richard C. Hsu is Co-Chair of the Technology Licensing Group, where he counsels and provides companies advice on all licensing transactions and associated intellectual property issues. He has extensive experience in licensing, development, acquisitions, service and other partnering agreements for a variety of industries, including semiconductors, life sciences, medical devices, hardware, software and telecommunications. -
Intellectual Property Audits: A More Diligent Approach ( September 2003 )
Conducting an intellectual property audit is an important business process. It can insure a company's IP assets are being adequately identified, protected, and enforced; provide information to potential investors; and inform a potential licensee or acquirer of an IP asset's value. In addition, an IP audit can result in company executives adopting or changing an approach toward IP that adds value and reduces risk to the company. -
Intellectual Property Strategies in Security and Privacy ( September 2003 )
Current technological advances ranging from biotech and nanotechnology to electronics and software can be used to both protect and jeopardize the security and privacy of individuals. This paper highlights some Intellectual Property (IP) strategies to successfully navigate the competitive landscape of these technical industries. -
FindLaw Interview with William J. Bohler of Townsend and Townsend and Crew ( August 2003 )
William J. Bohler is a partner in Townsend and Townsend and Crew LLP’s San Francisco office. He has extensive experience in all phases of intellectual property practice, including patent preparation and prosecution, client counseling, technology licensing, and litigation. Mr. Bohler received his J.D. from Southern Illinois University magna cum laude, and a B.S. in Electrical Engineering from Purdue University.
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