Valley Forge, PA | September 2014 – RatnerPrestia is pleased to announce that Jacob Blumert and Alyssa Miller have joined its Valley Forge office as Scientific Advisors. Jacob and Alyssa worked at the firm as Summer Associates in 2013. Read more »
Valley Forge, PA | September 2014 – RatnerPrestia Shareholder Jacques L. Etkowicz will continue his role as Chair of the Professional Programs Committee for the 2014-2015 association year. The committee assists The Board of Directors (or the responsible corporation officer) in the preparation of approved educational programs throughout the year. They also identify and recommend curricula and obtain speakers for the presentation of approved educational programs during the year. Jacques has been an active member of AIPLA committees since 1999 having held positions on the Electronics and Computer Law Committees. This is his second year as Chair of the Professional Programs Committee. Read more »
Shareholder Brian P. O’Shaughnessy will again serve as a faculty member for the LES USA & Canada’s Certified Licensing Professional (CLP) Exam Review Course on September 3, 2014 in Washington, D.C. This one-day exam review course is designed to prepare licensing professionals for the successful completion of the CLP certification exam. The CLP certification is administered by CLP, Inc., an independent 501(c)(3) organization. Read more »
Written By: Sunjeev S. Sikand
This article appeared in the July 22, 2014 Edition of IP Law 360
In proceedings before the Patent Trial & Appeal Board, whether a reference is publicly accessible and therefore qualifies as a prior art printed publication depends on the "facts and circumstances surrounding the reference’s disclosure to members of the public.”[1] When a patent challenger in a PTAB case lacks evidence showing the specific date that a document became publicly accessible, a common approach for qualifying that document as a printed publication is to submit evidence of a routine business practice. But in cases before the PTAB, the evidentiary standard for establishing routine business practice appears far from settled.

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In RPX Corp. v. VirnetX Inc., the Patent Trial and Appeal Board (“Board”) for the first time, defined a “real party-in-interest” within the meaning of 35 U.S.C. § 315(b). IPR2014-00171 (June 5, 2014). Specifically, the Board found that Apple Inc. was a “real party-in-interest” with respect to RPX’s seven petitions for the VirnetX Patents, because (among other factors) Apple (1) suggested that RPX challenge four of VirnetX’s patents (“the VirnetX Patents”), and (2) compensated RPX to (among other tasks) file inter partes reviews (“IPR”). The Board denied RPX’s petitions as time barred under 35 U.S.C. § 315(b), because Apple, a real party-in-interest, had been served with a complaint more than 1 year before RPX filed the petitions. Read more »
Written By: Brian S. Seal
The United States International Trade Commission (“ITC”) has received significant attention recently for its role in patent protection, due in part to the high-profile battle between Apple and Samsung. But while it is an effective venue for patent disputes, it may also be used to protect other forms of intellectual property, including trademarks, copyrights, and trade secrets.
Created in 1916, the ITC is an arm of the Executive branch – tasked with ensuring fair competition between domestic and foreign entities. Part of its mission is to protect domestic industry from imported goods that misappropriate intellectual property, including patents, trademarks, copyrights, and trade secrets. Read more »
Written By: Thomas G. Southard
Non practicing entities (“NPEs”), commonly derided as patent “trolls,” account for more than half of all new patent infringement lawsuits filed in the United States. In 2013 alone, NPEs initiated over 3,000 lawsuits in courts across the country, most often in the District of Delaware, Eastern District of Texas and Northern, Central and Southern Districts of California. These lawsuits target scores of industries, including companies in the hospitality, banking, retail and restaurant sectors. While Congress has struggled to pass laws designed to thwart bad-faith NPE claims, companies confronting an NPE demand letter or litigation can take a number of precautions to ensure that they are not victimized by troll tactics. Read more »
Q: In your twenty years at Schering-Plough and Merck, what were your various roles?
I joined Schering-Plough in the early 90’s and started out with a broad range of responsibilities including strategic patent portfolio management, client counseling, freedom-to-operate assessments, patent due diligence in support of in-licensing, patent preparation and prosecution, and patent litigation. With regard to technologies, my work primarily involved small molecule pharmaceuticals, new polymorphs, proteins, protein conjugates, antibodies, and chemical and biotech process technology; and while most of my work was in the pharmaceutical area, I also had the chance to work on cases related to contact lenses and optical inspection systems as Schering owned a contact lens subsidiary back then. Over time, I began to focus more on tech transfer and licensing, as well as global patent litigation. Read more »
Written By: Lawrence E. Ashery
When legal principles are at odds with each other, it can be immensely difficult to reach a conclusion that is fair and just. Such is the dilemma in Nautilus v. Biosig Instruments, 572 U.S. _______ (2014). The case has been talked about for months, and seen by some as a possible major step forward in the "war" against "patent trolls." Read more »