Banner Witcoff

On March 15, 2016, the U.S. Court of Appeals for the Federal Circuit entered judgment in favor of firm clients Skype Technologies S.A. and RTX Telecom A/S. The Federal Circuit affirmed the U.S. Patent and Trademark Office Patent Trial and Appeal Board’s March 2014 final decision in two inter partesreexaminations initiated by Skype Technologies and…

R. Gregory Israelsen offers his reaction to the U.S. Court of Appeals for the Federal Circuit’s recent decision in In re Simon Shiao Tam in the April/May 2016 edition of World Trademark Review. The Federal Circuit reversed the Trademark Trial and Appeal Board’s refusal to register THE SLANTS as entertainment in the form of a…

FEDERAL CIRCUIT PANEL NOT SWEET ON TC HEARTLAND’S PETITION TO CHANGE RULES FOR PATENT VENUE By R. Gregory Israelsen “Boy, doesn’t this feel like something a legislature should do?” So said Judge Moore on March 11 in the oral argument on the pending petition for a writ of mandamus in In re TC Heartland LLC.1…

PATENT AGENT PRIVILEGE CONFIRMED BY FEDERAL CIRCUIT By Ernest V. Linek Yesterday, in a 2-1 mandamus decision in the case In re Queens University, the Federal Circuit ordered the district court to withdraw its order compelling discovery of communications with non-attorney patent agents. The decision here recognizes “patent agent privilege:” [W]e find that the unique roles…

Banner & Witcoff client Airlite Plastics Co. has prevailed in defense of a patent infringement claim asserted by Phil-Insul Corp (d/b/a IntegraSpec) in the U.S. District Court for the District of Nebraska. The patent at issue relates to insulated concrete forms used to make energy efficient concrete buildings. The district court granted summary judgment of…

Banner & Witcoff represents the Licensing Executives Society in its effort to persuade the Supreme Court in Cuozzo Speed Technologies LLC v. Michelle K. Lee that post-grant proceedings, including inter partes review, post-grant review and covered business method review, using the broadest reasonable interpretation standard, diminish the value of patents. The Supreme Court will hear…

Brian Emfinger discusses how stakeholders can approach Congress amid continuing uncertainty about subject matter eligibility and offer their suggestions for improving Section 101 in World Intellectual Property Review. Please click here for digital access to the article,”Clarity of thought: telling Congress how to improve §101.” (Subscription is required.) Please click here for a PDF of the article.

Timothy C. Meece, V. Bryan Medlock Jr., Jason S. Shull and Audra Eidem Heinze were featured as “Legal Lions” for their successful representation of Lexmark International, Inc., in, “Law360’s Weekly Verdict: Legal Lions & Lambs.” On February 12, the Federal Circuit handed a win to the printer cartridge maker with an en banc decision to retain a longstanding rule that overseas sales of…

Banner & Witcoff client Mentor Graphics has prevailed in a Federal Circuit appeal by rival Synopsys, Inc. seeking to overturn the Patent Trial and Appeal Board’s final decision in an inter partes review that upheld challenged claims of Mentor’s U.S. Patent No. 6,240,376. The ‘376 patent at issue relates to software tools used in the…