Patent Office Trials Blog
    • 2/23/2016
      Esteemed Partner, John Callahan, will participate in the upcoming Life Sciences Patent seminar in New York on February 23-24, 2016. Mr. Callahan will be joined by an equally impressive panel as they take on the topic of "Strategies for Avoiding or Overcoming the Growing Reach of Obviousness-Type Double Patenting in the wake of Gilead.

      For registration information, please click here.
    • 12/28/2015

      Last Wednesday, California Gov. Jerry Brown tapped 14 judges and attorneys to fill vacancies in California’s intermediate appeals court as well as trial courts in Los Angeles, San Francisco, San Diego and elsewhere. In San Diego, Sughrue Mion partner and former assistant U.S. attorney John Scherling, 56, was named to the Superior Court bench.

      Mr. Scherling previously served as an Assistant United States Attorney in the United States Attorney’s Office in the Southern District of California. In that capacity, he handled all aspects of litigation, including district court jury trials, bench trials and appeals in the United States Court of Appeals for the Ninth Circuit, and received numerous awards from the United States Department of Justice and the Department of State.

      Mr. Scherling has been selected by the San Diego Daily Transcript as a "Top Attorney" in Intellectual Property Litigation and has been named a Super Lawyer in Intellectual Property Litigation.  In addition to his litigation practice, Mr. Scherling is on the World Intellectual Property Organization's List of Mediators for resolving intellectual property disputes.

      Mr. Scherling received his J.D. from Vanderbilt University, where he was Order of the Coif and Associate Articles Editor of the Vanderbilt Law Review. Following receipt of his J.D., Mr. Scherling served as a law clerk to the Honorable Judith N. Keep in the United States District Court for the Southern District of California.

      For more information, please click here.

    • 1/10/2016
      Mr. Callahan will provide a review of key aspects of successful practice before the PTAB – what do the statistics show and what does the PTAB require from a petitioner and patent owner.
    • 11/16/2015
      Institute for Law and Technology (ILT) of The Center for American and International Law

      J. Warren Lytle, Jr. , Sughrue Mion, PLLC was a featured speaker at the 53rd Annual Conference on Intellectual Property Law on November 16 - 17, 2015 at The Center for American and International Law in Plano, Texas.

      Jay Lytle spoke on the topic of Software Prosecution: Dealing with the Hard Realities of a Software Practice, Developing disclosures and draft software cases to be prepared for the future, managing patent office prosecution for software cases already filed, and answering the challenges of functional claiming..

      The conference was co-chaired by Marc A. Hubbard of Hubbard Law, PLLC, Dallas, Texas and Steve Malin, Chen Malin LLP, Dallas, Texas.

      Conference highlights will included:

      • Annual patent, trademark and copyright law updates
      • Deep dive track on hot issues in patent litigation
      • Overcoming challenges in drafting and prosecuting patent applications on software inventions
      • A half day on conducting PTAB trials
      • Alice and the patent eligibility morass - How did we get here, how bad is it, and can we fix it?
      • Recent developments in patent portfolio licensing models
      • The new Texas Uniform Trade Secrets Act and pitfalls to avoid when hiring technology employees
      • Introduction to the Texas Regional PTO Office

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    • 2/4/2016
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    • 1/14/2016
    • 12/31/2015

      Federal Circuit, December 31, 2015, 2015-1047

      Author: Arun Shome

      In Redline Detection LLC v. Star Envirotech, Inc., the Federal Circuit held that the Patent Trial and Appeal Board must be granted deference in interpreting the PTO's own regulations. More specifically, a motion to submit supplemental information under 37 CFR 42.123(a) can still be denied by the PTAB, even if it meets the minimum requirements set forth in that Rule, as that Rule is permissive and not mandatory.

      At trial, Redline, the petitioner, filed a motion to submit four exhibits, one of which was a sixty page declaration from its expert, just under 30 days after institution of trial. Normally, the petitioner must present its substantive case in the petition, which is filed well before institution of trial. Redline argued that this was a valid submission under 37 CFR 42.123(a), which only requires that the supplemental information be relevant and submitted less than one month after institution of trial. The Board denied Redline's motion to submit this supplemental information, and Redline appealed.

      The Federal Circuit affirmed the Board's decision for several reasons. Firstly, the PTAB is accorded deference when interpreting its own regulations unless its interpretation is plainly erroneous or inconsistent with the regulation. Here, the PTAB's interpretation was neither erroneous nor inconsistent because the plain meaning of the Rule does not preclude consideration of additional criteria beyond relevance and timing. The Rule specifically states: "a party may file a motion to submit supplemental information in accordance with the following requirements…" In other words, the requirements in the Rule are a floor, not a ceiling, and the PTAB can impose additional requirements.

      Lastly, the Federal Circuit also held that the PTAB did not act arbitrarily or capriciously, and that the PTAB's findings that the that claims in question were not obvious was supported by substantial evidence.

      The Redline decision shows that the PTAB has significant leeway in interpreting its own regulation, as long as the interpretation is not plainly erroneous or inconsistent with the Rule at issue. Additionally, the Federal Circuit gave significant weight to the PTO's mandate to secure the just, speedy, and inexpensive resolution of trials. In this case, Redline erred because it could have submitted the exhibits in question much earlier, but failed to do so and even admitted as much. Late submissions make it more difficult for the Board to reach a decision on the merits in a timely manner, and the Board is required by statute to reach a final written decision within one year of institution of trial. Thus if the PTAB denies a motion under its Rules in accordance with the just and speedy mandate, parties may find it difficult to overturn on appeal.

    More Publications
    • 2/12/2016
      Hyatt Regency Scottsdale Resort & Spa at Gainey Ranch
      Scottsdale, AZ
      As part of the 2016 NBA-CLS Corporate Counsel Conference, Sughrue partners Jennifer Hayes and Diallo Crenshaw will participate in the law firm interview and expo portion of the conference. The NBA-CLS Annual Corporate Conference provides an opportunity for participants to have a one-on-one informational interview with In-House Counsel/Corporate Representative attendees (if selected) and to otherwise speak with In-House Counsel/Corporate Representatives during the Expo to discuss the legal services they offer. The Expo provides a unique networking platform and an additional opportunity for In-House Counsel/ Corporate Representatives to meet with Outside Counsel.
    • 2/24/2016
      DoubleTree Suites by Hilton Times Square
      New York City, NY
      Comprehensive and Practical Prosecution and Non-Hatch-Waxman Litigation Strategies for Biotechnology, Pharmaceutical, and Diagnostics Companies.
    • 3/16/2016
      Bethesda North Marriott Hotel & Conference Center
      5701 Marinelli Road
      North Bethesda, MD
      hTe ASENT annual meeting will contain very special programs, designed specifically for members and welcomed new attendees. Registrants from academia, advocacy, government, and industry will discuss, address and advance the science of Neurotherapeutics. From basic science to clinical trials to discussions about the newest therapies, the ASENT Annual Meeting will provide a forum to connect, to network and to participate in continuous learning and discovery
    • 9/26/2016
      PLI New York Center
      1177 Avenue of the Americas, (2nd floor), entrance on 45th
      New York City, NY
      United States of America
      Patent Law Institute
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