Tag: Markman

More Words, Less Patent Clarity

The Director of the U.S. Patent and Trademark Office has announced that in her zeal to prevent substandard patents from issuing, she will insist on clarity of the record. Every word of every patent will have to be defined. And every word stated in the patent process—in the give and take (or “prosecution”) between applicant

Some Kind of Patent Trial

Patent jury trials reached their zenith in the mid-1990s. The stakes remain high, though the drama has faded. Now, even if it’s called a trial, what you get is “some kind of hearing,” as Judge Henry Friendly once called it in his seminal lecture and law review article. Some kind of hearing: That’s all you can expect in […]

Fear of Patents Incited by Lobbyists

Patent law promotes the progress of technology by rewarding inventors who patent their inventions. From the beginning, the Constitution empowered Congress to pass a Patent Act, and President George Washington called for it in his first State of the Union address. Congress acted affirmatively in 1790, with periodic updates ever since. As Abraham Lincoln said, the patent system adds […]

Patent System under Attack: Interview with USPTO Director Michelle Lee

This morning, my fellow leaders of the Chicago Intellectual Property Law Association (IPLAC) and I met with Michelle K. Lee, Under Secretary of Commerce for Intellectual Property and Director of the U.S. Patent and Trademark Office (USPTO), and several of her fellow USPTO executives, including the impressive Dr. Christal Sheppard, Director of the Detroit Office. Director Lee has excellent qualifications. Unfortunately, as discussed below, […]

Build Your Patent Portfolio: Preparation, Prosecution, Appeals

Are you General Counsel, Patent/IP Counsel, or an executive of a company that owns valuable proprietary technology? If your company or your client files patent applications, you’re probably encountering rejections. You may be wondering how to deal with the cases at hand and how to improve your strategy, procedures and execution for preparation and prosecution of patent applications. […]

Luck, Resources, Skill: In Basketball & Patent Cases

I write these words just hours before the Final Four—Kentucky, Duke, Michigan State, and Wisconsin—contend for the NCAA basketball title. Luck, resources, or skill: Which factor is most important in basketball? In patent cases? In basketball, one counts on a bit of luck as the ball rolls around the rim. Talented players are the key resources. For skill, just look at the […]

Inter Partes Review (IPR) of Patents

If you are asserting or defending against a patent, here are key points on “Inter Partes Review (IPR) of Patents” as presented to Chicago Bar Association. The Leahy-Smith America Invents Act of 2011 (AIA) created new post-grant patent invalidation procedures including Inter Partes Review (IPR) by the Patent Trial and Appeal Board (PTAB) in the U.S. Patent and Trademark […]

Teva v. Sandoz: Lessons for Patent Owners & Counsel

In Teva v. Sandoz, 574 U.S. __, No. 13-854 (slip op. Jan. 20, 2015), the Supreme Court held that “evidentiary underpinnings” such as expert testimony considered by a trial court in construing patent claims can be reversed on appeal only upon a showing of “clear error,” even while the intrinsic record and the ultimate legal […]