Washington, D.C. | March 2015 – RatnerPrestia Counsel Brian S. Seal has been selected to speak at Patent Trolls – Patent Settlement Strategy LIVE Webcast on April 27 from 10:00 am – 12:00 pm (ET). The program will cover The Patent Assertion Entity – An Overview, Facing Patent Trolls and Defense, Patent Wars, Non-Infringement, Effective Policies and Supports on Patents including Recent Trends.

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The U.S. Supreme Court held on March 24, 2015 in B&B Hardware, Inc. v. Hargis Industries, Inc. (No. 13-352) that decisions from the U.S. Patent and Trademark Office Trademark Trial and Appeal Board (“TTAB”), an administrative tribunal, may have preclusive effect, particularly with respect to likelihood of confusion determinations, in later court proceedings so long as “the ordinary elements of issue preclusion are met.”

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Brian P. O’Shaughnessy, Shareholder, RatnerPrestia, is an invited speaker at the 2015 National Congress of the Mexican Association of Applied Research and Technology Development (ADIAT). Brian’s presentation will address “Leveraging Intellectual Property for Value.” ADIAT is a non-profit professional organization created in 1989 to promote regional economic growth and social development through enhanced innovation and competitiveness. ADIAT’s 2015 Congress will be held in Guadalajara, Jalisco, Mexico, March the 25-27, 2015 at the Fiesta Americana Hotel. The overall theme of the conference is: “Entrepreneurship and Innovation Ecosystems.” Brian also serves as Regional Vice President, USA, Licensing Executives Society (USA and Canada), Inc., with responsibility for public policy and government relations; and he has extensive international experience teaching and training in matters of intellectual property portfolio management and value extraction.
     
Written By: Keith E. George
This article appeared in the March 2, 2015 Edition of IP Law 360
There is now little doubt the Supreme Court’s decision last year in Alice Corp. Pty. Ltd. v. CLS Bank Int’l[1] has had and continues to have a profound impact on many aspects of patent protection. There seem to be new developments every day – Federal Circuit and district court decisions, new guidelines from US Patent and Trademark Office, and additional USPTO examples regarding patentable or unpatentable subject matter. On any given day in patent prosecution, it is difficult to know what will be most effective in advancing the client’s application in the face of a difficult Alice conundrum. It may help, though, to keep in mind that the burden rests with the examiner whenever making any rejection. Much like an art rejection, the examiner must address all requirements of each rejected claim (ordered list of elements, as in Alice or claim as a whole as in Diamond v. Diehr[2]) and must present evidence on the underlying factual issues to support the legal conclusion that claim is unpatentable under the statute. It is time to adapt many of our response techniques, honed in overcoming obviousness rejections, to addressing 101 subject matter rejections.

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Wilmington, DE | March 2015Rex Donnelly was selected as the Delaware recipient of the 2015 Client Choice Awards for “Intellectual Property – Trademarks.” Winners were announced on February 26 in the Client Choice Guide – International 2015 and the Client Choice Guide – USA & Canada 2015. Donnelly previously received this honor in 2014.
Established in 2005, the Client Choice awards recognize those law firms and partners around the world that stand apart for the excellent client service they provide. The criteria for the awards focus on the ability to add real value to clients’ business above and beyond other players in the market. Uniquely, these awards survey senior corporate counsel only, with this year’s winners chosen from a pool of more than 2,000 individual client assessments.

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Valley Forge, PA | February 2015 – Shareholders Jacques L. Etkowicz, Christopher R. Lewis and Kenneth N. Nigon were recently selected by their peers for inclusion in The Best Lawyers in America© 2015 in the field of Patent Law. This is Nigon’s eighth year for receiving the honor, and Lewis’ second year. Shareholder Benjamin E. Leace was also selected by his peers for inclusion The Best Lawyers in America© 2015 in the fields of Litigation – Intellectual Property, Litigation – Patent, and Trademark Law. Leace has been selected for four consecutive years. The Best Lawyers in America® is based on more than 5 million detailed evaluations of lawyers by their peers, and includes attorneys in 80 practice areas covering all 50 states and the District of Columbia.

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Washington, D.C. | February 2015 - Shareholder Brian O’Shaughnessy will lead a panel discussion addressing US legal and legislative developments affecting licensing, with a special focus on likely patent legislation targeting litigation abuse, and the potential for unintended consequences for the innovation economy and society as a whole.  The panel is part of the LES 2015 Webinar series, and is entitled: A New Congress and Yet More Patent Reform: How Impending Legislative Developments are Likely to Affect Licensing and will take place on February 11, 2015.  The speakers include Paul Michel, Chief Judge (ret.), U.S Court of Appeals for the Federal Circuit; Manus Cooney, Principal, American Continental Group, a Washington DC consulting and advocacy firm; and Bill Elkington, Senior Director, Intellectual Property Management, Rockwell Collins.

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On behalf of the Licensing Executives Society (U.S.A. and Canada), Inc., RatnerPrestia shareholder Brian P. O’Shaughnessy and counsel Brian S. Seal today filed an amicus brief with the Supreme Court in Kimble v. Marvel Enterprises, Inc., Case No. 134-720. The case, on appeal from the Ninth Circuit, addresses the much-criticized holding of Brulotte v. Thys Co., 379 U.S. 29 (1964) that “a patentee’s use of a royalty agreement that projects beyond the expiration date of the patent is unlawful per se.” The brief, which supports neither party, notes that Brulotte’s per se rule as originally set forth was narrow in its holding, and suggests that the criticism it has since received derives from unwarranted expansion of the rule in subsequent case law. It urges the Supreme Court to clarify the scope of the per se rule and, in the event the court chooses to overrule Brulotte, offers a set of factors to be considered under an alternative rule of reason analysis. Oral argument in the case is set for March 31, 2015.

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By: Thomas G. Southard and Sunjeev S. Sikand of RatnerPrestia
This article appeared in the February 4, 2015 Edition of The Legal Intelligencer
As an alternative to litigating in federal court, the America Invents Act (“AIA”) vests the U.S. Patent Trial and Appeal Board (“PTAB”) with power to conduct post-grant proceedings in which accused infringers can challenge a patent’s validity in a trial-like procedure at the Patent and Trademark Office.1 Considered a quicker and more economical route, post-grant proceedings have dramatically altered the United States patent litigation landscape in the last two years.
Currently, the PTAB stands as the second most popular forum for patent disputes, behind only the Eastern District of Texas.2 According to statistics, the number of post-grant proceedings filed in the PTAB nearly tripled from 564 in 2013 to 1,494 in 2014.3 Over the same time period, the number of federal court patent complaints filed in other primary patent jurisdictions remained relatively static.4

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Valley Forge, PA | January 2015 – RatnerPrestia Shareholder Christopher R. Lewis will moderate a panel at the 2015 AIPLA Mid-Winter Institute on January 28, 2015. He will lead the Opening Plenary Session entitled Establishing Licensing in an IP Program and Partnering to Obtain or Procure IP. The panel will discuss topics including developing and monetizing an IP portfolio in today’s changing times, crowd-sourcing, and alternative pathways of transferring IP. The panelists include the Chief IP Counsel of a large international pharmaceutical company, IP Counsel of a leading equipment manufacturer, and an experienced U.S. licensing attorney. The 2015 AIPLA Mid-Winter Institute will be held in Orlando, Florida from January 28 – 31. For more information click here.

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