Banner Witcoff

By: Alex Bruening and Aseet Patel Beginning on February 1, 2022, the USPTO will invite qualified applicants to participate in the Deferred Subject Matter Eligibility Response Pilot Program (DSMER) Pilot Program (87 FR 776). Under this program, an applicant is permitted to defer responding to 35 USC 101 subject matter eligibility (SME) Alice rejections until…

Leading Lawyers, a division of Law Bulletin Media, has recognized 24 Banner Witcoff attorneys as “Leading Lawyers” and “Emerging Lawyers” in intellectual property law for 2022. Leading Lawyers: Matthew P. Becker, Joseph J. Berghammer, Scott A. Burow, Marc S. Cooperman, Katie Laatch Fink, Timothy C. Meece, Janice V. Mitrius, Aseet Patel, Binal J. Patel, Thomas…

By Brian Emfinger and Andy Kim So, what’s new at the PTAB? An admitted mistake by the Board, the necessity of using consistent prior art publication dates, the consequences of overstatements, and more! It takes a big Board to admit when it made a mistake. Samsung Elecs. Co. v. Neonode Smartphone LLC, IPR2021-00144 (December 3,…

Banner Witcoff attorneys and staff got together on Wednesday, December 1, to gear up for the holidays by stuffing over 200 stockings for Soldiers’ Angels Holiday Stockings for Heroes. The stockings were distributed to the VA medical center and at the mobile food distribution Soldiers’ Angels holds for low-income and homeless veterans in Charleston, S.C.…

Kirk Sigmon has accepted a 2022-2023 Thomas Edison Innovation Law and Policy Fellowship at the Center for Intellectual Property x Innovation Policy (C-IP2) at George Mason University, Antonin Scalia Law School. C-IP2’s Thomas Edison Innovation Law and Policy Fellowship Program is a fellowship program for scholars working in economics, history, law, and philosophy, studying either…

By Eric Zelepugas and Katie Becker So, what’s new at the PTAB? Applying prior art considered during prosecution, expert qualifications, and failure to address secondary considerations, and more! Cited art is not necessarily evaluated art. Satco Products, Inc. v. The Regents of the University of California, IPR2021-00662 (November 8, 2021) (Bisk, joined by Crumbley and…

Banner Witcoff attorney Rob Katz was recently interviewed by IAM for their 2021 Global Leaders interview series. The interview covered Rob’s design patent practice, how COVID-19 affected his clients, and the America Invents Act. IAM noted that Rob was “A luminary of the industrial designs world and the go-to for top companies for both design…

Robert Katz is quoted in an IAM article on how remote working has affected top IP practices. The article asked seven industry leaders about their own management styles, and how they evolved over their careers and how they have been changed by 18 months of remote working. Robert told the article “Like many things in…

Crain’s Chicago Business recognized Binal Patel as 2021 Notable Gen X Leaders in Accounting, Consulting and Law. The list includes nearly 100 members who are “at the peak of their careers, managing offices, chairing legal groups or running their own practices” according to Crain’s, which put together profiles for those who were recognized. Crain’s profile on Binal…

By Craig Kronenthal and Rebecca (Xuechen) Ding First ever Director review, the real problem with assumptions, and unique circumstances for refiling a petition are a few of the topics covered in Banner Witcoff’s latest installment of PTAB Highlights. First ever Director review granted, decision vacated, case remanded. Ascend Performance Materials Operations LLC v. Samsung SDI…