On the Challenge app’s main dashboard, tap the ‘Scan-In’ button. Align the app viewer with the QR Code. The code will automatically be detected and provide you with a confirmation notice. Alternatively, enter the code in the field below the app viewer and submit.

Banner Witcoff is proud to sponsor the Fitness Challenge at the IPO 2021 Annual Meeting. The top 3 steppers will be announced on October 1. Good luck to all participants.

Banner Witcoff attorney Janet J. Lee contributed to the Intellectual Property Law Association of Chicago’s (IPLAC) comment to the U.S. Patent and Trademark Office (USPTO) in response to the “Changes to Implement Provisions of the Trademark Modernization Act” which was published on May 17, 2021.

 You can read IPLAC’s full comment here.

By Jihan Joo and Reilley Keane

Timeliness of motions, failure to respond to a ground of unpatentability in a motion to amend, and witness credibility are a few of the topics covered in Banner Witcoff’s latest installment of PTAB Highlights.

Timeliness of Motions. Budgetary constraints do not necessarily constitute good cause for delay in filing.  Square, Inc. v. Electronic Receipts Delivery Systems, LLC, CBM2020-00015, Paper 23 (April 21, 2021) (Quinn, joined by Arbes and Pettigrew).

Analogous Art. A reference is “reasonably pertinent” to a problem if it “logically would have commended itself to an inventor’s attention in considering his problem.” Google LLC v. Hammond Development International, Inc., IPR2020-00020 Paper 38 (April 12, 2021) (Wormmeester, joined by Hagy and Sawert).

Credibility of Witness. Corroborative evidence negates any supposed self-interest that may taint an inventor’s testimony, and the sufficiency of corroborative evidence is determined by a rule of reason analysis. LSI Corporation et al v. Regents of the University of Minnesota, IPR2017-01068, Paper 58 (April 14, 2021) (Bisk, joined by Weinschenk and Boudreau).

Failure to Respond to a Ground of Unpatentability. In determining whether a proposed substitute claim responds to a ground of unpatentability, the responsiveness analysis requires reviewing the entirety of the record to determine whether a patent owner’s amendments respond to a ground of unpatentability and it is not required that the analysis be made on a claim-by-claim basis. Renesas Electronics Corporation v. Broadcom Corporation, IPR2019-01040 Paper 41 (April 15, 2021) (Giannetti, joined by Boucher and Beamer).

Anticipation Based on Provisional Patent.  A provisional patent does not necessarily form part of a corresponding non-provisional application for purposes of anticipation where the non-provisional fails to identify the subject matter of the provisional with particularity. NeuMoDx Molecular, Inc. v. HandyLab, Inc., IPR2020-01133, Paper 21 (April 19, 2021) (Kokoski, joined by Snedden and Paulraj). 

Request for Rehearing. A motion that has not been filed prior to issuance of an institution decision will not be considered, and cannot be misapprehended or overlooked by the Board. Amazon.com, Inc., et al v. VB Assets, LLC, IPR2020-01374, Paper 12 (April 19, 2021) (O’Hanlon, joined by Kinder and Moore).


As a leader in post-issuance proceedings, Banner Witcoff is committed to staying on top of the latest developments at the Patent Trial and Appeal Board (PTAB). This post is part of our PTAB Highlights series, a regular summary of recent PTAB decisions designed to keep you up-to-date and informed of rulings affecting this constantly evolving area of the law.

Banner Witcoff is recognized as one of the best performing and most active law firms representing clients in inter partes review (IPR) proceedings. To learn more about our team of seasoned attorneys and their capabilities and experience in this space, click here.

Banner Witcoff’s PTAB Highlights are provided as information of general interest. They are not intended to offer legal advice nor do they create an attorney-client relationship.

By Roshan Bhattarai and Hengyi Jiang

Consideration of claim charts attached to an expert declaration, analogous art using claim charts in a PO Preliminary response, analogous art, and termination of CBM based on Federal Circuit Decision are a few of the topics covered in Banner Witcoff’s latest installment of PTAB Highlights.

Board Will Not Play Archeologist With the Record to Hunt for Arguments That Have Not Been Specifically Presented. Patent Owner filed a Request for Rehearing of an IPR Institution Decision, asserting that the Board did not consider the claim charts attached to a Declaration of the Patent Owner’s expert. Although the Patent Owner’s Preliminary Response included a general invitation to read through the claim charts attached to the Declaration, the Board considered only the specifically cited portions of the Declaration supporting specific arguments presented in the Preliminary Response. The Board denied the Request for Rehearing refusing to accept the “Patent Owner’s invitation to play archeologist with the record, and hunt for any other arguments that may have been contained in the claim charts appended to the [expert’s] Declaration.” The Board also noted that the Patent Owner still did not provide specific evidence in the claim charts that would have changed the outcome of the Decision. Hamilton Technologies LLC, v. Fleur Tehrani, IPR2020-01199, Paper 17 (March 5, 2021) (Horner, joined by Cherry and Wisz).

Analogous Art. The Board gave substantial weight to Patent Owner’s expert testimony that identified important differences between the problem faced by the inventors and the problem addressed in an asserted prior art reference. The Board thus held that the reference was not reasonably pertinent to the problem solved by the inventors. Perma Pure LLC v. Masimo Corp., IPR2019-01583, Paper 18 (March 11, 2021) (Franklin, joined by Mitchell and Cotta).

CBM Proceedings Terminated Without a Final Decision Based on Federal Circuit’s Affirmance of Patent Ineligibility of the Claims. The Federal Circuit affirmed a District Court’s determination that that all the contested claims in the PTAB proceedings were patent ineligible under 35 USC § 101. When the Federal Circuit’s decision came out, the Board was in the middle of the proceedings with oral arguments already scheduled. The Board postponed the oral arguments and held a conference call with the parties. After the conference call, the Patent Owner filed a Motion to Terminate along with a Declaration that the Patent Owner would not further appeal or challenge the Federal Circuit’s Decision. The Board granted the Motion to Terminate holding that it would be inefficient for the Board to allocate limited resources when every ground of unpatentability presented to the Board was now moot in light of the Federal Circuit’s decision. Stripe, Inc., Shopify Inc., and Shopify (USA) Inc., v Boom! Payments, Inc., CBM2020-00002, CBM2020-00003, CBM2020-00004, Paper 49 (March 4, 2021) (Petravick, joined by Chang and Cherry).

Board Declines to Consider New Arguments Raised for the First Time in a Request for Rehearing. In a Request for Rehearing of a Decision denying an IPR, the Petitioner raised, for the first time, a host of new arguments. The Board held that Decision was based on the pre-decisional record developed by the parties, and that the Petitioner failed to direct the Board to a place in the pre-decisional record where these new arguments were presented. Therefore, the Petitioner failed to meet the requirement of 37 CFR § 42.71(d), which requires a dissatisfied party to identify a place in the record where it previously addressed each matter it submits for review. The Board accordingly denied the Request for Rehearing. Metall Zug AG, Haag-Streit AG, and Haag-Streit USA, Inc., v. Carl Zeiss Meditec AG, IPR2020-01074, Paper 10 (Obermann, joined by Moore and Hagy).

Motivation to Combine. In an IPR Final Written Decision, the Board found that adjacent description of two embodiments in the specification of a prior art reference, by itself, is not sufficient to demonstrate a motivation to combine the two embodiments. Intel Corp. v. Tela Innovations, Inc., IPR2019-01520, Paper 64 (March 9, 2021) (Kokoski, joined by Kalan and Derrick). 

Objective Indicia of Non-Obviousness. The Board found that the statements made by Google and Apple’s executives were not sufficient to establish a long felt and persistent need for the claimed invention because the statements were “too general and disconnected.” Microsoft Corp. v. Mimzi, LLC, IPR2019-01516, Paper 29 (March 12, 2021) (Lee, joined by White and Khan).


As a leader in post-issuance proceedings, Banner Witcoff is committed to staying on top of the latest developments at the Patent Trial and Appeal Board (PTAB). This post is part of our PTAB Highlights series, a regular summary of recent PTAB decisions designed to keep you up-to-date and informed of rulings affecting this constantly evolving area of the law.

Banner Witcoff is recognized as one of the best performing and most active law firms representing clients in inter partes review (IPR) proceedings. To learn more about our team of seasoned attorneys and their capabilities and experience in this space, click here.

Banner Witcoff’s PTAB Highlights are provided as information of general interest. They are not intended to offer legal advice nor do they create an attorney-client relationship.

If you missed our DESIGN LAW 2020 Virtual Event—or if you’d like to revisit and share it, the entire program is available online to view on demand. 

For 17 years in a row, Banner Witcoff has obtained more U.S. design patents than any other law firm in the country; we brought leaders in the field together for this event.

designlaw2020.com

Former Banner Witcoff attorney Virgil Bryan Medlock Jr. passed away on Dec. 11. He was 83.

A native of Oklahoma, Bryan earned his undergraduate and law degrees from Oklahoma University. He joined Banner Witcoff in March 2010 after honing his intellectual property practice at other respected law firms.

Bryan spent five decades practicing IP law and litigating patent cases before retiring from Banner Witcoff in December 2017. Credited for being a pioneer in patent jury trials, Bryan made many contributions to Banner Witcoff, his clients, and the legal profession as a whole.

Banner Witcoff extends our deepest condolences to Bryan’s family, friends and loved ones. Click here to view the full obituary and tribute wall. 

As part of a session for the International Trademark Association’s (INTA) annual meeting, Banner Witcoff attorney Rob Katz discussed how to protect and enforce product designs.

INTA’s 2020 Annual Meeting & Leadership Meeting is taking place virtually from Nov. 16-20. Many of the sessions, including the one Rob participated in as a speaker, are available as on-demand recordings that registrants can view until Jan. 10, 2021.

Rob and the session’s other speakers discussed a variety of topics related to design protection in both the U.S. and European Union, including a comparision of protocols, registered versus unregistered rights, length and cost of protection, and divergent standards to prove infringement, among other remedies.

The session, “Design Pragmatics: How to Protect and Enforce Your Product Designs—Design Protection Protocols in the U.S. and the EU,” is available to registrants on the virtual meeting platform.

Banner Witcoff attorney Darrell Mottley has been elected secretary of the Fellows of the American Bar Foundation (ABF). His term took effect Sept. 1, 2020, and will lead him to serve as chair in three years.

Established in 1955, the Fellows is an honorary society of attorneys, judges, law faculty and legal scholars around the globe whose careers have demonstrated outstanding dedication to the legal profession and their communities. The Fellows support the research of the ABF, with membership being limited to 1 percent of the lawyers licensed to practice in each jurisdiction.

More information about the Fellows is available on ABF’s website.

Banner Witcoff is proud of our rich, 100-year history but more importantly, we are proud of our client relationships. More than anything, we value the trust we have earned from our clients by protecting their business assets for a century.

We are also proud of the role we have played in shaping IP law by representing clients in groundbreaking cases before courts across the country, including the U.S. Supreme Court, Federal Circuit and ITC. We celebrate 100 years of excellence in IP as we look toward the future, providing sound legal guidance and inventive solutions to power business for start-ups, Fortune 500 companies, and everything in between.

From Crops to Patents and Trademarks
Though we have been known as Banner Witcoff since 1997, the firm’s beginnings date back to 1920 when we were Bair Freeman. Then, many of our early clients were farmers and paid for their legal services in crops and produce. Our Chicago office opened in 1937, where we began to represent clients like Lenox, Honeywell and Meredith Publishing. Our Washington, D.C. office opened in 1960 and an office in Boston followed in 1985. Our fourth office, in Portland, Oregon, opened in 1997.

In 1978, name founder Don Banner was appointed Commissioner of the United States Patent and Trademark Office, kicking off a tradition of deep knowledge in USPTO policies among firm attorneys. This experience has been widely recognized by legal and industry organizations.

A Role in History
In 1980, we won verdicts for defendants in the history-making case Diamond v. Chakrabarty, which established that the bacterium a General Electric engineer developed to break down crude oil — and living, genetically-altered organisms in general — could be patented. We made history again in 2001 with New York Times v. Tasini, in which the court ruled that publishing articles by freelance journalists, that were licensed specifically for print editions of the New York Times and other print publications, in electronic databases such as LexisNexis or University Microfilms International was a violation of those journalists’ copyrights.

Computer Pioneers
True to our values, Banner Witcoff stands at the forefront of innovation and has a special history in the field of computer technology. Name founder Sheldon Witcoff was the first examiner of patent applications for electronic computers for the U.S. Patent Office in 1949. In 1973, we participated in a nine-month trial, one of the longest in history at the time, to prove that John Atanasoff was the first inventor of the electric computer, the ENIAC. In the late 1960’s, we also pioneered the use of computers in courtroom pre-trial discovery and document management.

Making and Breaking Records
Banner Witcoff broke our own record for the most design patent grants in a single year. According to USPTO records, the firm procured 1,032 U.S. design patents in 2016. The firm set the prior record with 959 U.S. design patents in 2008. Also, for 16 consecutive years, we have obtained more U.S. design patents than any other law firm in the United States. We continue to lead in procuring design patent portfolios. In addition to direct design filings around the world, we have filed hundreds of design registrations in the World Intellectual Property Office.

Our attorneys lead the way in all areas of IP. Banner Witcoff has been recognized as one of the best performing and most active law firms in inter partes review (IPR). And, in 2019, Banner Witcoff received industry recognition and an “Impact Case of the Year” award for our work representing Converse in its trademark battle against entities selling knock-off versions of the company’s iconic Chuck Taylor All Star sneaker. We are excited to share more of our history as we celebrate our centennial.

Banner Witcoff attorneys Scott M. Kelly and Kirk A. Sigmon will discuss challenges in patenting video games and virtual reality on Oct. 25 at the 5th Annual Chicago Video Game Law Summit (CVGLS). Banner Witcoff is sponsoring the event, which will take place at the Chicago Bar Association.

As part of their session, Scott and Kirk will examine the challenges related to patenting video games and virtual reality, and explore how virtual and augmented reality further change the game.

Scott will also speak on a panel discussing 2019’s hot topics in video game law, including legislation, litigation and transactions.

CVGLS is a daylong event featuring discussions on the latest developments in video game law by game developers, industry representatives and legal experts. Click here for more information or to register.

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