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Is the Safe Harbor for Divisional Applications Shrinking? By Sarah A. Kagan In October, the U.S. Court of Appeals for the Federal Circuit heard arguments in a pair of related cases that may add yet another boundary to the safe harbor of §121. One suit was an appeal from an ex parte reexamination in the…

Banner & Witcoff was recognized by Law360 for successfully representing NIKE, Inc., in inter partes reviews brought by adidas AG against two NIKE patents related to its FLYKNIT technology. Christopher Renk, Michael Harris, and Aaron Bowling represented NIKE in these proceedings. The Patent Trial and Appeal Board concluded that, based on the arguments and evidence the parties presented,…

Banner & Witcoff received a National Tier 1 ranking in intellectual property litigation, patent litigation and patent law in the 2018 edition of U.S. News & World Report and Best Lawyers’ “Best Law Firms.” Tier 1 rankings are determined through feedback from clients and peers, as well as from information provided in law firm survey responses.…

Federal Circuit Discredits Special Disclosure Rule for Antibodies By Sarah A. Kagan For decades, patents claiming antibodies have enjoyed a charmed life. Rather than requiring a written description of the antibodies per se, the U.S. Patent and Trademark Office has allowed claims based on a written description of the antigen to which the antibodies bind.…

Divided Infringement and Subject-Matter Eligibility: Are Mixed Diagnostic and Therapeutic Method Claims Viable and Valuable? By Sarah A. Kagan Until recently, diagnostic assay developers wanting to protect their innovations with patents have faced a Hobson’s choice: claim a treatment step to gain subject-matter eligibility but do so at the risk of creating downstream enforcement problems…

Subject-Matter Eligibility Swallows Infringement Litigation? By Lisa M. Hemmendinger and Sarah A. Kagan On October 4, 2017, the U.S. Court of Appeals for the Federal Circuit heard oral arguments in a case that has been running for more than 10 years—Classen Immunotherapies, Inc., v. Elan Pharmaceuticals, Inc. (No. 17-1033). During that time, much has changed…

Banner & Witcoff was recognized by Law360 for its role in client YETI Coolers LLC’s lawsuit against Costco Wholesale Corp. for infringing its trademarks and design patents by selling unlicensed knockoffs of its 36-ounce “Rambler” bottle. Click here to read the article, “YETI Coolers Sues Costco Over Patent, TM Infringement.”  

Anna L. King and Luke S. Curran discuss why registration of sound marks is a key business strategy and will become more frequent at the U.S. Patent and Trademark Office in their article, “The Hidden Persuader: Sound Marks as Sonic Indicators of Source.” Click here to read the article.

Banner & Witcoff attorney Robert H. Resis was recognized by Law360 for his role in drafting the Intellectual Property Law Association of Chicago amicus brief “calling for the full Federal Circuit to review its panel decision affirming that a Regeneron Pharmaceuticals Inc. patent is unenforceable in part because of inequitable conduct of litigators during a later infringement case.” Click here…

Obviousness: The Analytic Framework May Control the Outcome By Sarah A. Kagan Some aspects of the law of obviousness seem hard to apply, as they are repeatedly challenged on appeals to the Court of Appeals for the Federal Circuit. One such aspect is the role of objective indicia of nonobviousness, which are sometimes also referred…