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IPO Daily News™

Thursday, 10 January 2019 8:12 am

* * USPTO DID NOT ERR IN ADDRESSING ON RECONSIDERATION A GROUND OF UNPATENTABILITY FOR WHICH IT DID NOT INSTITUTE REVIEW

AC Techs. v. Amazon.com, 18-1433 — Yesterday in an opinion by Judge STOLL, the Federal Circuit upheld a USPTO inter partes review decision invalidating AC’s claims for a data management system as obvious. AC argued that the USPTO exceeded its authority and denied it due process by addressing on reconsideration a ground of unpatentability raised in Amazon’s petition for which it had not instituted review.

The Federal Circuit disagreed. The USPTO was required by statute to “issue a final written decision addressing all claims challenged by the petitioner” and “must similarly address all grounds of unpatentability raised by the petitioner.” There was no due process violation because the USPTO allowed both parties to take discovery and submit additional arguments and evidence after granting Amazon’s motion for reconsideration.
(1 to 4 stars rate impact of opinion on patent & trademark law)

MANAGE YOUR MEMBERSHIP BENEFITS

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IP IN THE MASS MEDIA

Naperville, Illinois Settles Trademark Dispute with Henderson, Nevada

Yesterday Illinois’ Naperville Sun reported that the city of Naperville, Illinois and developer Marquette Cos. will settle a trademark infringement dispute with the city of Henderson, Nevada concerning Naperville’s use of the name “Water Street District” for a new development project. Henderson has a registered trademark on the phrase.

Fujian Jinhua Pleads Not Guilty to Charges of Trade Secret Theft

Yesterday Reuters reported that Chinese company Fujian Jinhua Integrated Circuit Co. Ltd. pleaded not guilty to U.S. charges that it stole trade secrets from U.S. chip maker Micron Technology, Inc.

TODAY ON IPO’S IP CHAT CHANNEL™: INEQUITABLE CONDUCT AFTER REGENERON: WHAT LITIGATORS, PATENT PROSECUTORS AND PATENT OWNERS NEED TO KNOW

Tune in to the IP Chat Channel™ today at 2:00p.m. ET to hear experts discuss the impact on litigation and patent prosecution of Regeneron, a 2017 Federal Circuit decision that found a Regeneron patent unenforceable due to inequitable conduct based partly on the behavior of litigators. Our panel includes DAVID HRICIK (Mercer University School of Law), a leading academic expert on legal ethics and IP; KEVIN NOONAN (McDonnell Boehnen Hulbert & Berghoff LLP), who urged the Supreme Court to grant cert. to Regeneron; and ROHIT SINGLA (Munger Tolles & Olson).

IP Chat Channel™ webinars are recorded and available on our website after the live webinars. CLE granted in many states. IPO will apply for ETHICS credit for this webinar. Please note that not all states will approve for Ethics credit.