Banner Witcoff

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…

Banner & Witcoff client Seagate Technology won a clean sweep of four inter partes reviews invalidating two patents of Enova Technology Corp. The patents relate to computer storage device encryption technology and were asserted against Seagate by Enova in district court litigation. In a series of four Final Written Decisions issued between September 2, 2015…

FEDERAL CIRCUIT’S EN BANC DECISION IN LEXMARK INTERNATIONAL, INC. V. IMPRESSION PRODUCTS, INC. MAKES SIGNIFICANT DETERMINATIONS RELATING TO THE DOCTRINE OF PATENT EXHAUSTION By Jason S. Shull On February 12, 2016, the Federal Circuit issued its en banc decision inLexmark International, Inc. v. Impression Products, Inc. The en banc decision made two significant determinations relating…

On February 12, 2016, the U.S. Court of Appeals for the Federal Circuit, in an en banc opinion, ruled in favor of Banner & Witcoff client Lexmark International, Inc., finding the “first sale” doctrine under patent law does not apply to: (1) patented articles sold subject to restrictions on resale and reuse communicated to the buyer…

Banner & Witcoff remembers our friend and partner Frank Wolffe, who died on February 3, 2016. A native of Washington, D.C., Mr. Wolffe graduated from the University of Maryland in 1954 with a Bachelor of Science in Chemical Engineering. Upon his graduation, Mr. Wolffe held a position as research engineer with the Sun Oil Company,…