By Matt Becker and Scott Burow In this installment of the PTAB Highlights, Banner Witcoff attorneys examine recent decisions at the PTAB featuring: the Board finding an operating manual and thesis in a library database qualified as printed publications, the importance of supporting a motivation to combine with rational underpinnings, the Board refusing to apply…
By Reilley Keane and Kamaram Munira In this installment of the PTAB Highlights, Banner Witcoff attorneys examine recent decisions at the PTAB featuring: the Board granting additional discovery for Patent Owner’s Final Infringement Contentions, the importance of applying your own claim construction, the Board refusing to speculate about the trial date of related litigation, and…
Banner Witcoff launched its 2022 summer associate program this month and will welcome twelve law students to the firm’s Chicago and Washington, D.C., offices throughout the summer months. The following first-and-second-year law students will participate in Banner Witcoff’s 2022 summer associate program, which is designed to provide students with meaningful law firm experience in the…
By Kevin Keenan & Christian LaForgia So, what’s new at the PTAB? Amending a declaratory judgment complaint after filing a petition to circumvent the 315(a)(1) bar, motion to strike vs. motion to exclude, how the Petitioner-customer relationship impacts multiple petitions, and more! With careful timing, petitioners can have their cake and eat it too: adding…
Twelve Banner Witcoff attorneys have been selected for inclusion on the 2022 Washington, D.C. Super Lawyers and Rising Stars lists for their work in intellectual property law. 2022 Washington, D.C. Super Lawyers John R. Hutchins Robert S. Katz Fred M. Meeker Darrell G. Mottley Joseph M. Potenza Bradley C. Wright 2022 Washington, D.C. Rising Stars…
By Hengyi Jiang and Pei Wu So, what’s new at the PTAB? No adverse judgment despite disclaimer of all claims, reversing institution decision after claims are dropped from parallel litigation, improper use of AAPA, and more! No IPR will be instituted based on disclaimed claims. Microsoft Corporation v. LiTL LLC et al, IPR2021-01011, Paper 11…
Managing IP ranked Banner Witcoff’s trademark practice in its 2022 edition of “IP Stars,” a guide to the world’s top intellectual property firms. IP Stars “highly recommended” the firm’s trademark practice in Illinois, the guide’s highest recognition. Banner Witcoff is one of only six firms to be “highly recommended” in the category. The rankings are…
By Scott Burow and Christian Wolfgram So, what’s new at the PTAB? Failure to separately address a disputed claim term, the on-sale bar, submitting evidence with a sur-reply, and more! Side-stepping is not a good move before the Board. Samsung Electronics Co., Ltd. v. Blaze Mobile, Inc., IPR2021-01569, (Paper 16) (March 22, 2022) (Engels, joined…
After a three-year-long legal battle, Banner Witcoff has successfully won asylum for a pro-bono client. Our client escaped to the United States from Ethiopia, where they experienced violence based on their gender and political views. Further, there was a fear of returning based on the ongoing civil war in Ethiopia and reports of ethnic cleansing.…
By Robert Boyd and Christopher Galfano So, what’s new at the PTAB? Reliance on IEEE documents, relationships in district court vs. relationships at the PTAB, showing error during prosecution history, and more! Tradeshow and professional conference papers may be prior art. Intel Corporation v. FG SRC LLC, IPR2020-01449 (March 1, 2022) (Szpondowski, joined by Deshpande…
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