July 2015 Newsletter

July 1, 2015


Preparing for Changes in AIA Post-Grant Amendment Practice
by Edmund J. Walsh, Charles T. Steenburg, and Turhan F. Sarwar
The ‘‘tables have tilted’’ toward a greater likelihood of amending claims in AIA procedures. Read more.

3 Functional Claiming Questions To Address Post-Williamson
by Justin C. Colannino and Andrew (A.J.) Tibbetts
A recent Federal Circuit decision could drastically change the scope of a patent owner’s existing portfolio. Read more.

Saving Patents from Inter Partes Review with Reissue
by Edmund J. Walsh and Stuart V.C. Duncan Smith
Patent owners anticipating an IPR challenge may find refuge in the amendment options available through reissue. Read more.

Don't Forget to Request PTAB Authorization for Motions
by Michael T. Siekman and Chelsea A. Loughran
Although it appears that the PTAB is employing a more flexible approach to considering motions filed without prior authorization, it is still a best practice to request it. Read more.

Diagnostic Patenting Since Myriad: An Update
by Patrick R. H. Waller PhD and Daniel W. Young PhD
Stakeholders shouldn’t conclude that nothing is patent eligible in the diagnostic space. Read more.

PTAB Surprises Some by Using Its Standard Operating Procedures to Assert Control of Its Case Law
by Michael T. Siekman and Oona M. Johnstone PhD
The authors detail a different system of categorization of Board opinions and its precedential effect for post-grant proceedings. Read more.

Establishing Non-Infringement and Other Creative Uses of IPR
by Michael N. Rader
IPR proceedings can be used creatively to achieve results beyond their statutory mandate. Read more.


With Request for Discovery, Patent Owner Hopes to Fry Bass

Location, Location, Location: How Filing a Declaratory Judgment Action May Affect IPR

Patent Owners: Look Out for These 5 Mistakes Petitioners Make in IPRs


Federal Circuit Clarifies Scope of § 271(f)(1), Emphasizes Full-Scope Enablement
Promega v. Life Technologies

Federal Circuit Addresses When Activities Are Undertaken “for the U.S.” Under 28 U.S.C. § 1498(a)
IRIS v. Japan Airlines

Limiting Patent Infringement Damages for Complex, Multi-Featured Products
VirnetX v. Cisco Systems

Federal Circuit Props Door Open for Doctrine of Equivalents
EPOS Technologies v. Pegasus Technologies


On June 22, renowned trademark attorney John Welch joined the firm as Counsel. You might know him as the author of The TTABlog. Read more.

We recently prevailed for client EMC in a patent infringement suit against its competitor Zerto. Read more.

We recently hosted a seminar called IPRs: Strategies for Winning and Utilizing Them Effectively in Litigation. View it now.

We co-hosted a webinar with the BPLA on June 18 called Enforcing and Defending Biotech Patents Before the ITC. View it now.

For our firm-wide Good Deeds Month in June, about 75 attorneys and staff volunteered their time. In addition, we raised more than any other law firm for the Greater Boston Legal Services Associates Fund Drive. Read more.