Banner Witcoff

FEDERAL CIRCUIT HOLDS CLAIMS INDEFINITE BASED ON PROSECUTION HISTORY IN TEVA PHARMACEUTICALS USA V. SANDOZ, INC. By R. Gregory Israelsen and Shawn P. Gorman On June 18, 2015, the United States Court of Appeals for the Federal Circuit released its decision in Teva Pharmaceuticals USA, Inc. v. Sandoz, Inc.i The case was on remand from the Supreme Court,…

Bradley J. Van Pelt and Brittany M. Martinez discuss how patent holders can prepare for the issue of obviousness in inter partes reviews in their Law360 Expert Analysis article, “Preparing for the Obvious at the PTAB.” In the article, they say precedent indicates that the Patent Trial and Appeal Board is twice as likely to invalidate claims…

FEDERAL CIRCUIT CHANGES COURSE AND UPHOLDS LIGHTING BALLAST PATENT FOLLOWING TEVA REMAND By Paul M. Rivard In 2014, in Lighting Ballast Control LLC v. Philips Electronics North America Corp., the Federal Circuit sitting en banc upheld its longstanding practice of reviewing all aspects of claim construction without deference to the district court. In the en banc decision, the…

FEDERAL CIRCUIT CHANGES COURSE AND UPHOLDSLIGHTING BALLAST PATENT FOLLOWING TEVAREMAND By Paul M. Rivard In 2014, in Lighting Ballast Control LLC v. Philips Electronics North America Corp., the Federal Circuit sitting en banc upheld its longstanding practice of reviewing all aspects of claim construction without deference to the district court. In the en banc decision, the…

Mr. Shifley explains in Law360 that the Supreme Court’s decision in Kimble v. Marvel Enterprises allows patent owners and licensees to confidently and without concern extend “in-term” royalties on patents into the post-expiration period. Please click here to read the article, “Attorneys React to Supreme Court Patent Royalties Case.”

SUPREME COURT AFFIRMS BRULOTTE, “GREEN-LIGHTS” COLLECTING PATENT ROYALTIES AFTER PATENTS EXPIRE By Charles W. Shifley In an important decision for patent licensing freedom, on June 22, 2015, the United States Supreme Court cleared the way for spreading patent royalty payments after the expiration of patents, in some simple and other complex ways. In Kimble v.…

Banner & Witcoff is recognized for patent prosecution in Illinois in the 2015 Intellectual Asset Management Patent 1000. Four attorneys were also recognized in this year’s edition: Robert S. Katz, design patents, national; Christopher J. Renk, litigation, Illinois; Ross A. Dannenberg, prosecution, Washington, D.C.; and John P. Iwanicki, prosecution, Massachusetts. Please click here to view the firm’s IAM Patent 1000…

USPTO ANNOUNCES EXPEDITED PATENT APPEAL PILOT PROGRAM By Paul M. Rivard Yesterday, the United States Patent and Trademark Office announced the “Expedited Patent Appeal Pilot” to provide a temporary basis for an applicant to have an ex parte appeal to the Patent Trial and Appeal Board accorded special status (advanced out of turn). To take…

On Saturday, May 30, Mr. Mottley discussed 3-D printing and developments in patent, design patent and copyright law on “Law Talk with Ethel Mitchell.” “Law Talk with Ethel Mitchell” is a weekly program that airs each Saturday on WOL 1450 AM in the Washington, D.C., area. According to its website, it is dedicated to inspiring people, particularly minorities, to use…

Mary Boney Denison, the U.S. Patent & Trademark Office Commissioner for Trademarks, visited Chicago on June 1 to discuss current developments and topics in trademark law and policy, as well as recent USPTO initiatives. Banner & Witcoff shareholder Richard S. Stockton played a key role in organizing the event, hosted by the Intellectual Property Law…