Prior Art Status of Conference Handouts Depends on Multiple Factors, Including Expectations of Confidentiality

Takeaway: Determining whether materials distributed at a conference or meeting qualify as prior art “printed publications” under 35 U.S.C. § 102(b) requires evaluating all relevant factors, such as the expectations of confidentiality between the distributor and the conference attendees. The Federal Circuit recently clarified how to analyze the prior art status of materials distributed to …

Dority & Manning Patent Agent Recognized for Service by USPTO

Dority & Manning is pleased to announce that John Sweet has been awarded the 2017 Patent Pro Bono Certificate by the USPTO. John participated in the regional PATENTS Program (Pro bono Assistance & Training for Entrepreneurs and New, Talented, Solo Inventors).  This program is a segment of the Georgia Lawyers for the Arts Organization and …

When an Inter Partes Review is Instituted the USPTO is Required to Decide the Patentability of All Claims Challenged By Petitioner

In SAS Institute Inc. v. Iancu, No. 16-969 (Apr. 24, 2018), the Supreme Court of the United States ruled that when the Patent Trial and Appeal Board (“PTAB”) of the United States Patent and Trademark Office (“USPTO”) institutes an inter partes review, 35 U.S.C. § 318(a) (2011) requires the PTAB to decide the patentability of …

Defense of Equitable Estoppel Held Not to Apply to Claims Substantively Amended During Reexamination

The U.S. Court of Appeals for the Federal Circuit recently held that the U.S. District Court for the Eastern District of Arkansas abused its discretion in applying the defense of equitable estoppel based on activities that occurred prior to the issuance of the reexamination certificate where the asserted claims were substantively amended during ex parte …

Dority & Manning Recognized in the Annual Ocean Tomo/IAM Patent Quality Rankings

Dority & Manning, P.A. has been recognized as a Leading Law Firm in the annual Patent Quality Rankings released by Ocean Tomo and IAM. Ocean Tomo partners with IAM to research and identify the top US firms that perform high-quality patent prosecution before the USPTO.  In addition, Dority & Manning has been recognized as one …

Forum-Selection Clause in Patent License May Thwart Licensee’s Efforts to Seek PTAB Review of Licensed Patents

In Dodocase VR, Inc. v. MerchSource, LLC, No. 17-cv-07088, 2018 U.S. Dist. LEXIS 48654 (N.D. Cal. Mar. 23, 2018), the U.S. District Court for the Northern District of California recently ordered a licensee withdraw petitions filed with the Patent Trial and Appeal Board (PTAB) of the U.S. Patent and Trademark Office (PTO) to challenge the …

Dority & Manning to Host Annual AIPLA Women in IP Global Networking Event

Dority & Manning is proud to be a part of the 11th Annual Women in IP Global Networking Event to be held on April 19th, 2018.  Various IP firms across the globe will host events to interact and network with fellow IP practitioners. During the meeting, the firms join a cross-country conference call with the …

Attorney-Client Privilege Remains Intact When Inadvertently Produced Invention Records Are Promptly Clawed Back

The United States District Court for the Central District of California recently held attorney-client privilege applies to a company’s invention record reviewed by a committee including persons other than lawyers when the primary purpose is to obtain legal advice. Cal. Inst. of Tech. v. Broadcom Ltd., CV 16-3714-GW, slip op. at 5 (C.D. Cal. Mar. …

Takedown Requests Directed to Non-Parties may not be Sufficient to Establish Personal Jurisdiction in Declaratory Judgment Actions

The United States District Court for the Central District of California recently held that personal jurisdiction for a declaratory judgment action does not exist when, in addition to sending a cease-and-desist letter, the defendant sends a takedown request that is directed to a non-party. Jobar Int’l Inc. v. Juka Innovations Corp., No. LA CV17-07441 JAK …

An Abandoned Office May Constitute a “Regular and Established Place of Business”

The United States District Court for the Middle District of Florida recently held that venue for a patent infringement lawsuit was proper even though the defendant closed its regular and established place of business in that judicial district “weeks before suit was filed,” reasoning that the delay in filing the complaint was not unreasonable. ParkerVision, …