October 12th, 2020
Michael Koptiw will be speaking at the Licensing Executives Society (U.S.A. and Canada), Inc. Annual Meeting. Mike will be on a panel entitled “Patent Eligibility for Machine Learning Networks, Home Automation, and the IOT.” The panel will discuss the current state of the law, its impact on protecting […] Read More
October 12th, 2020
Brian J. Hubbard moderated a panel at the Intellectual Property Owners (IPO) Annual Meeting entitled “Automating IP Operations.” Speakers included Steven Kibby (Caterpillar), Ann McCracken (Black Hills IP), and Gordon MacSween (CPA Global). The panel discussed recent trends, best practices, and forward looking predictions for […] Read More
July 22nd, 2020
CRK is pleased to announce that John Sun has joined the firm as an associate. John is a registered patent attorney with both undergraduate and graduate degrees in Computer Science, as well as significant industry experience as a system analyst. John will be practicing in […] Read More
July 9th, 2020
Condo Roccia Koptiw LLP welcomes our 2020 Summer Associate: Fan Chen 1L Summer Associate from The University of Pennsylvania Carey Law School Fan has an undergraduate degree in Electrical Engineering from Georgia Tech University. She worked briefly as an engineer before attending law school. In […] Read More
May 18th, 2020
CRK is pleased to announce that Matt Voog has joined the firm as an associate. Matt has undergraduate degrees in both Electrical Engineering and Applied Engineering Sciences. He comes to us with experience in a variety of technologies, including wireless communications, semiconductors, light emitting diodes […] Read More
May 12th, 2020
CRK’s Michael Koptiw and Brian Hubbard, along with In-house Counsel Jennifer Carnahan and Heather Bowen, will be speaking this Thursday (May 14) at 11 am EDT, on the topic “Things I’ll NEVER include in an IP Agreement.” The panel notes that negotiation may require flexibility […] Read More
October 28th, 2019
CRK is proud to be a Silver Sponsor for the Philadelphia chapter of the South Asian Bar Association’s (SABA) Second Annual Gala, taking place Nov. 1 at The Logan Hotel. The Gala recognizes and celebrates the continuing growth of SABA-Philly and the proliferation of South Asian Americans […] Read More
September 23rd, 2019
CRK Attorneys Michael Koptiw, Brian Hubbard, Ross Alexander, and Michael Bonella will be attending the IPO Annual Meeting this week. This is IPO’s 47th Annual Meeting, and attendees include IP attorneys practicing in all types of industry segments, government officials such as the Hon. Andrei […] Read More
May 23rd, 2019
Temple Law’s Alumni Commentary recently published an article by CRK’s Aakash Patel regarding the Temple Law Rome Program. Aakash notes, “[i]n addition to broadening my perspectives, the Temple Law Rome program also served as a great opportunity to build relationships with two of my Temple […] Read More
May 23rd, 2019
Condo Roccia Koptiw LLP welcomes our 2019 2L Summer Associate: Edward Davis2L Summer Associate from Rutgers Law School Edward has an undergraduate degree in Physics from Bucknell University. Edward’s interest in patent law started early in his undergraduate career. As part of a research team […] Read More
May 10th, 2019
A CRK team including Vincent Roccia, Joseph Klinicki, Ross Alexander, Mike Piscitelli, Ryan Peddle, and Ben Chalfin won the Law Firm Challenge associated with the 22nd Annual Richie Ashburn Memorial Home Runs For Heart. It is the second time CRK has won the event, previously […] Read More
April 3rd, 2019
CRK partners Michael Bonella and Ross Alexander will present at The 5th Annual IP Strategy Summit: Boston on April 11. Mike and Ross will discuss the sea change in opinion practice after the Supreme Court’s decision in Halo (Halo Elecs., Inc. v. Pulse Elecs., Inc., […] Read More
March 12th, 2019
CRK partner Mu Yang will be speaking March 20th at the Women, Diversity & Change event in Philadelphia, a part of The Women in Law Summit Series. Mu has demonstrated an impressive commitment to this issue, spending time formally, as a speaker, and more informally, […] Read More
March 1st, 2019
CRK’s Brian J. Hubbard will be traveling to the IPO Spring Summit in Austin TX on March 7. The one day summit focuses on corporate IP best practices and offers concurrent educational tracks for outside and inside counsel, networking opportunities, and outside counsel workshops on collaborating […] Read More
November 14th, 2018
On November 13, 2018, Michael Bonella, a partner with Condo Roccia Koptiw LLP, presented at the 7th Annual IP Strategy Summit in New York, NY. Michael was a member of a panel that included Jim Harrington, Global Chief Intellectual Property Counsel at Shire Pharmaceuticals. The panel […] Read More
November 13th, 2018
On November 13, 2018, Joe Klinicki, a partner with Condo Roccia Koptiw LLP, presented at the IP + AI 2018 Innovative IP Strategies for AI Development program in Washington DC. Joe was a member of a panel that included David Andrews, Caroline Pinkston, and Neel Patel. […] Read More
July 25th, 2018
CRK’s Michael Piscitelli, Joseph Klinicki, and Ross Alexander will be interviewing potential summer associates at the Loyola Patent Law Interview Program in Chicago on July 26 and 27! Below are a couple of items that may be of use to students: How do you say […] Read More
July 24th, 2018
On July 24, 2018, Joe Klinicki, a partner with Condo Roccia Koptiw LLP, presented at the 15th Annual Summit on Protecting Innovations in the Financial Services Industry in New York, NY. Joe was a member of a panel that included Colm Dobbyn, General Counsel, Intellectual […] Read More
June 4th, 2018
Condo Roccia Koptiw LLP is pleased to welcome our 2018 2L Summer Associate: Nick Rogillio 2L Summer Associate from The University of Alabama School of Law Nick has an undergraduate degree in Electrical Engineering, also from The University of Alabama. Nick’s interest in patent law evolved over time. […] Read More
May 15th, 2018
On May 15, 2018, Brian J. Hubbard, a partner with Condo Roccia Koptiw LLP, presented at the 4th Annual IP Strategy Summit in Boston, MA. Brian was a member of a panel that included Scott Asmus, Chief Intellectual Property Counsel for BAE Systems, and Atabak Royaee, […] Read More
March 12th, 2018
On March 14, 2018, Mu Yang, a partner with Condo Roccia Koptiw LLP, will present at the Women in Law & Leadership Summit in Philadelphia, PA. Mu is a member of a panel consisting of Bonnie Chong of Anthony & Sylvan Pools, Melissa Sullivan of Ascensus, and Erin Dunston of […] Read More
March 12th, 2018
On March 13, 2018, Michael Bonella, a partner with Condo Roccia Koptiw LLP, will present at the 2nd IP Strategy Summit in Philadelphia, PA. Michael is a member of a panel consisting of Daniel Shulman of Reynolds Group Holdings Ltd., Saket Sankhla of Schneider Electric, […] Read More
November 6th, 2017
On November 1, 2017, Michael Bonella, a partner with Condo Roccia Koptiw LLP, presented at the IP Strategy Summit in New York City, NY. Michael was a member of a panel consisting of Edward Tempesta, Vice President and Senior Counsel IP, for Mastercard, Marc Began, former Assistant General […] Read More
July 21st, 2017
On July 20, 2017, Ross Alexander, of Condo Roccia Koptiw LLP, moderated a panel discussing the implication of the Supreme Court’s change in willful infringement law in Halo Electronics, Inc. v. Pulse Electronics, Inc. 136 S. Ct. 1923 (2016) at the Patents for Financial Services Summit […] Read More
June 12th, 2017
On June 7, 2017, Michael Bonella, a partner with Condo Roccia Koptiw LLP, presented at the IP Strategy Summit in Philadelphia, PA. Michael was a member of a panel consisting of Matthew Blischak of Teva Pharmaceuticals and Leon Lum of Novo Nordisk. The panel discussed […] Read More
June 8th, 2017
Condo Roccia Koptiw LLP is pleased to welcome our 2017 Summer Associates: Ben Chalfin Summer Associate from Duke University Ben has undergraduate degrees in History and Neuroscience from the College of William & Mary, a law degree from Duke University, and is currently working on a Master’s […] Read More
May 23rd, 2017
On May 17, 2017, Michael Bonella and Brian Hubbard presented at the Philadelphia Intellectual Property Law Association’s (PIPLA) annual “year-in-review” meeting. Brian Hubbard presented on recent developments in obviousness law in Arendi S.A.R.L. v. Apple Inc., 832 F.3d 1355 (Fed. Cir. 2016) and Allied Erecting & Dismantling Co. […] Read More
February 7th, 2017
Condo Roccia Koptiw LLP is pleased to announce that Jacob Huh recently joined our firm as an attorney, focusing his practice on patent procurement. Jacob has a degree in Electrical Engineering from the University of Illinois at Urbana-Champaign, and received his law degree from the University of […] Read More
October 24th, 2016
Condo Roccia Koptiw LLP (“CRK”) is pleased to announce that we were listed as the 6th largest IP Firm in the Philadelphia Business Journal’s List of IP Law Firms, October 21, 2016. CRK also moved up when sorted by number of registered patent attorneys, with […] Read More
September 7th, 2016
Condo Roccia Koptiw LLP is pleased to announce that John E. McGlynn has joined our firm, focusing his practice on a mixture of patent procurement, intellectual property litigation, and post-grant proceedings work. John has extensive technical experience in mechanical devices, telecommunications, software, and electrical hardware technology. He has […] Read More
September 6th, 2016
Condo Roccia Koptiw LLP is pleased to announce that Ross Alexander, Michael Bonella, Brian Hubbard, and Mike Koptiw will be attending IPO’s 44th Annual Meeting in New York, Sept. 11-13th, 2016. Intellectual Property Owners Association (IPO) is a trade association for intellectual property owners. IPO […] Read More
August 1st, 2016
Condo Roccia Koptiw LLP is pleased to announce that Ross Alexander, Brian Hubbard, and Stuart Schanbacher will be presenting a 1.5 Hour PA CLE entitled “ADDING VALUE TO A COMPANY’S PATENT PROSECUTION STRATEGY FROM ACQUISITION TO DEPARTURE.” The CLE will be presented August 2, 2016, […] Read More
June 29th, 2016
Condo Roccia Koptiw LLP is pleased to welcome our 2016 Summer Associates: Aakash Patel 2L Summer Associate from Temple University Aakash has an undergraduate degree in Computer Engineering from Villanova University. After college, Aakash joined Comcast Cable, as an engineer, where he designed a new […] Read More
February 19th, 2016
Condo Roccia Koptiw LLP is pleased to announce that Ross Alexander, Michael Bonella, Brian Hubbard, and Michael Koptiw will be presenting a 1.5 Hour PA CLE entitled “IDENTIFYING AND ADDRESSING IP ISSUES THAT ARISE IN PRACTICE FOR NON-IP ATTORNEYS.” The CLE will be presented Feb. […] Read More
October 19th, 2015
Condo Roccia Koptiw LLP is pleased to announce that Jingshi Shi recently joined our firm as an attorney, focusing her practice on patent procurement. Jingshi has technical experience with fuel cells, microelectromechanical systems, circuit modeling, telecommunications, polymer electronics, and drug encapsulation. She has a Ph.D. in Electrical Engineering, […] Read More
September 18th, 2015
Condo Roccia Koptiw LLP is pleased to announce that Richard Howe recently joined our firm as an attorney, focusing his practice on patent procurement. Rich has experience as an inventor, an in-house counsel, and as a private practitioner. Rich has nearly ten years of engineering experience, and has dealt with matters […] Read More
September 11th, 2015
Condo Roccia Koptiw LLP is pleased to announce that Shuang Zhao recently joined our firm as an attorney, focusing his practice on patent procurement. Shuang has extensive experience in diverse technology areas both as an engineer and as a practitioner. Shuang’s engineering experiences include over ten years of real-world engineering […] Read More
April 2nd, 2015
Condo Roccia Koptiw LLP (“CRK”) is pleased to announce that we tied for 5th largest IP Firm when sorted by number of registered patent attorneys in the Philadelphia Business Journal’s article: “Top 25 Intellectual Property Law firms in the Philadelphia Region,” December 12, 2014 issue. CRK’s IP […] Read More
October 8th, 2014
Condo Roccia Koptiw LLP is pleased to announce that Aaron F. Bourgeois recently joined our firm as an attorney, focusing his practice on patent procurement. Aaron has extensive experience in diverse technology areas both as an engineer and as a practitioner. Aaron’s engineering experiences include seven years in […] Read More
March 28th, 2014
PHILADELPHIA – Intellectual Property boutique Condo Roccia Koptiw LLP has expanded beyond its core patent prosecution practice to bolster its patent litigation practice. The firm announced that noted patent litigator Michael J. Bonella has joined the firm as a partner. Bonella previously co-chaired the patent litigation practice […] Read More
February 5th, 2014
The law firm of Condo Roccia LLP is pleased to announce that it has changed its name to Condo Roccia Koptiw LLP. Michael A. Koptiw focuses his practice on complex prosecution/portfolio management projects, infringement analysis, and invalidity studies. Mike has experience with patent litigation and licensing. […] Read More
October 14th, 2013
Condo Roccia Koptiw LLP is pleased to announce that Allen J. Oh has joined our firm as an attorney. Allen J. Oh focuses his practice on patent procurement within the electronic and computer fields, with an emphasis on a variety of technologies, such as wired […] Read More
September 27th, 2013
PHILADELPHIA – Condo Roccia Koptiw LLP announced today that Brian J. Hubbard has joined the firm as a partner. Hubbard’s practice focuses on both patent procurement (i.e., preparation and prosecution) and innovation-related agreement work. With over 15 years of private practice and in- house legal […] Read More
August 5th, 2013
Philadelphia Business Journal has named Condo Roccia Koptiw LLP one of its Best Places to Work in the Philadelphia region. The award recognizes the company’s achievements in creating a positive work environment that attracts and retains employees through a combination of benefits, working conditions, and […] Read More
November 5th, 2012
Condo Roccia Koptiw LLP is pleased to announce that Arshid Sheikh has joined our firm as an attorney. Arshid Sheikh focuses his practice on patent procurement and litigation in the electrical engineering and computer science arts. Prior to becoming an attorney, Arshid worked in the […] Read More
July 5th, 2012
Condo Roccia Koptiw LLP is pleased to announce that Jeremy C. Estes has joined our firm as an attorney. Jeremy focuses his practice on patent procurement in the mechanical engineering, electrical engineering, and computer science arts. Prior to becoming an attorney, Jeremy worked full time […] Read More
June 25th, 2012
Condo Roccia Koptiw LLP is pleased to announce that Michael F. Piscitelli has joined our firm as an attorney. Michael F. Piscitelli is a registered patent attorney with experience in both patent prosecution and litigation matters. Michael’s current practice is primarily focused in the electrical […] Read More
April 25th, 2012
Condo Roccia Koptiw LLP is pleased to announce that Ross E. Alexander has joined our firm as an attorney. Ross concentrates his practice on patent procurement and patent litigation and focuses on technologies such as computer hardware/software, telecommunications systems and devices, wireless networks, mobile devices, […] Read More
February 21st, 2012
By Gina Passarella and Zack Needles of the The Legal Intelligencer: Joseph R. Condo, former chair of Woodcock Washburn’s patent procurement services group, and Vincent J. Roccia, former transactions operations manager at the firm, left the firm to open Condo Roccia Koptiw in May. Their […] Read More
January 26th, 2012
An article written by Stuart Schanbacher will appear in the January 27th, edition of Law 360. The article entitled, “2 PCT Written Opinions for the Price of 1,” describes the European Patent Office’s recent decision to make it easier for applicants to get a second written […] Read More
January 23rd, 2012
Condo Roccia Koptiw has been named as one of the “Top Ten” lateral moves of 2011 by the Legal Intelligencer, Philadelphia’s daily legal publication. Each year the Legal analyzes the lateral moves in Pennylvania to determine the 10 most important lateral hires of the previous […] Read More
November 17th, 2011
Attorneys from Condo Roccia Koptiw attended the Philadelphia Intellecutual Property Law Association’s (PIPLA) 88th Annual Judges Dinner on Thuresday, November 17, 2011. This year, the Dinner was held to honor the Hon. Sue. L. Robinson of the District Court for the District of Delaware who […] Read More
September 28th, 2011
Condo Roccia Koptiw and KTMC LLP successfully defended their client, Triangle Software of Santa Clara, California, against a summary judgment motion for noninfringement and invalidity that was filed by Garmin International Inc. The case is Triangle Software LLC v. Garmin International Inc. et al, case […] Read More
By Michael A. Koptiw // March 28th, 2020
Many U.S. legal teams have moved to remote work this month—patent prosecution teams are no different. Remote work can increase a prosecution team’s productivity, efficiency, and effectiveness. We at CRK have supported remote work from day one. With a remotely accessible docket and document management and […] Read More
By Brian J. Hubbard // December 30th, 2019
This blog post first ran in 2013, and is becoming something of a holiday tradition for the author. As the year winds down, tradition dictates that we reflect back on the year and, in some cases, resolve to do certain things differently. You can effectively […] Read More
By Michael A. Koptiw // August 28th, 2019
When your company has a product in the marketplace and the next innovative feature is ready to be launched, IP counsel is often asked, “Do we have it patented? Are we covered?” And while covering the feature with a patent filing or two can be […] Read More
By Michael A. Koptiw // June 14th, 2019
The third and final day of testimony on draft legislation to reform the law of patent eligibility wrapped up Tuesday, June 11, 2019, with lawmakers acknowledging that there was more work to do but suggesting that a bill could be introduced as soon as after […] Read More
By Michael A. Koptiw // June 7th, 2019
Another 15 witnesses testified on June 5, 2019, before the Senate Judiciary Committee’s Subcommittee on Intellectual Property in the second of three days of hearings on proposed changes to sections 101 and 112 of the patent law. For section 101, the proposed changes would allow […] Read More
By Michael A. Koptiw // June 4th, 2019
The Senate Judiciary Committee held its first of three hearings today, June 4, 2019, on proposed amendments to sections 101 and 112 of the patent code. The proposed change would allow patentability for “any invention or discovery that provides specific and practical utility in any field […] Read More
By Michael A. Koptiw // March 25th, 2019
We analyzed 53k recent patents: it takes fewer responses to get a patent when you interview the examiner on the first office action. This is a topic I’ve been excited about for a long time. At CRK we love examiner interviews. Getting the examiner on […] Read More
By Condo Roccia Koptiw LLP // March 15th, 2019
CRK: We’re talking with Mu Yang about diversity and inclusion (D&I). Mu is a frequent speaker on these important issues, and has “walked the walk,” devoting her time to co-found the Philadelphia Women in IP Mentoring Program. Mu, when’s the next opportunity to hear you […] Read More
By Michael A. Koptiw // March 2nd, 2019
Are your computer claims part of the 5% that lack the word “comprising”? The Federal Circuit tells patentees it’s not a good idea. Good claims have three parts, a preamble, a transition word, and a body. A recent Federal Circuit precedential opinion spoke directly to the […] Read More
By Mu Yang // February 4th, 2019
“Listen-Before-Talk” is a well-known technique in the Wi-Fi world to prevent problems. Similarly, here are some of my thoughts on the importance of “File-Before-Sale” in the patent world. First, I almost always advise my clients to get a patent application filed before doing anything outside […] Read More
By Condo Roccia Koptiw LLP // January 25th, 2019
Under 35 U.S.C. § 102(b) (pre-AIA), a person was not entitled to a patent if “the invention was . . . on sale in this country, more than one year prior to the date of the application for patent in the United States.” This provision […] Read More
By Brian J. Hubbard // December 10th, 2018
This blog post first ran in 2013, and is becoming something of a holiday tradition for the author. As the year winds down, tradition dictates that we reflect back on the year and, in some cases, resolve to do certain things differently. You can effectively […] Read More
By Condo Roccia Koptiw LLP // June 26th, 2018
In WesternGeco LLC v. ION Geophysical Corp., the United States Supreme Court held in a 7-2 decision that lost profits are a proper damages remedy under 35 U.S.C. § 284 for infringing acts under 35 U.S.C. § 271(f)(2). 2018 U.S. LEXIS 3842 (2018). Infringement under […] Read More
By Brian J. Hubbard // May 3rd, 2018
Most in-house teams are confident that their standard employment agreement creates an existing “obligation to assign.” After a recent Federal Circuit case, they may want to review their internal documents and procedures. The case is Advanced Video Technologies LLC v. HTC Corp. (Jan. 11, 2018; […] Read More
By Condo Roccia Koptiw LLP // March 8th, 2018
In Polaris Indus., Inc. v. Arctic Cat, Inc., the Federal Circuit reversed in part the PTAB’s holding that claims were obvious because the PTAB failed to properly credit testimony on the secondary factors of nonobviousness. 2018 U.S. App. LEXIS 3168 (Fed. Cir. 2018). The Federal […] Read More
By Condo Roccia Koptiw LLP // February 6th, 2018
In Core Wireless Licensing, S.A.R.L. v. LG Electronics, Inc., the Federal Circuit affirmed summary judgment that a claim for a “computing device configured to display” claimed patent eligible subject matter. Nos. 2016-2684 & 2017-1922 (Jan. 25, 1988 Fed. Cir.). The asserted patents disclosed improved display […] Read More
By Condo Roccia Koptiw LLP // January 26th, 2018
In Arthrex, Inc. v. Smith & Nephew, Inc., the Federal Circuit addressed two important inter-partes review (“IPR”) procedural issues. The Federal Circuit addressed the issue of whether the Patent Trial and Appeal Board (“PTAB”) properly entered an adverse judgment against patent owner Arthrex. The Federal […] Read More
By Condo Roccia Koptiw LLP // September 15th, 2017
In Intellectual Ventures I & II LLC v. Motorola Mobility LLC, No. 2016-1795 (September 13, 2017 Fed. Cir.), the Federal Circuit addressed the seldom-raised issue of what constitutes an infringing use of a device or system claim under 35 U.S.C. § 271(a). The Federal Circuit […] Read More
By Brian J. Hubbard // August 23rd, 2017
Changes in employment are a fact of life in corporate R&D. That’s not necessarily a bad thing. An exiting inventor (“departing employee”) gets to experience different groups, technologies, and/or approaches, leading to greater expertise. Whoever steps into the departing employee’s role gets a growth opportunity. […] Read More
By Condo Roccia Koptiw LLP // May 23rd, 2017
Historically, patent venue was interpreted based on two statutes. The patent venue statute provides that “any civil action for patent infringement may be brought in the judicial district where the defendant resides, or where the defendant has committed acts of infringement and has a regular […] Read More
By Brian J. Hubbard // December 22nd, 2016
This blog post first ran in 2013, and is becoming something of a holiday tradition for the author. As the year winds down, tradition dictates that we reflect back on the year and, in some cases, resolve to do certain things differently. You can effectively […] Read More
By Condo Roccia Koptiw LLP // July 15th, 2016
In Bascom Glob. Internet Serv., Inc. v. AT&T Mobility LLC, No. 02015-1763 (Fed. Cir. June 27, 2016) the Federal Circuit reversed a finding that the claims of U.S. Patent 5,987,606 (the ‘606 patent) claim ineligible subject matter. Bascom, opinion at 2. In doing so, Bascom […] Read More
By Condo Roccia Koptiw LLP // May 23rd, 2016
IDENTIFYING PRACTICAL TAKEAWAYS FROM ENFISH, LLC v. MICROSOFT CORP. AND TLI COMM. LLC v. A.V. AUTOMOTIVE, LLC Two recent Federal Circuit cases (Enfish, LLC v. Microsoft Corp. and TLI Comm. LLC v. A.V. Automotive, LLC) have helped give some much needed guidance to patent-eligible subject […] Read More
By Condo Roccia Koptiw LLP // April 18th, 2016
Many IP issues arising after a merger or an acquisition might have been avoided by performing a proper IP due diligence. In some circles, a typical IP due diligence is limited to confirmation of record ownership of identified IP assets and a search for […] Read More
By Michael A. Koptiw // February 29th, 2016
Write A Policy Perhaps the most important first step to handling issues with unsolicited ideas is to have an Idea Submission Policy. Without a clear written policy, it is more likely that offhand statements and actions could obligate the company. For example, something as simple […] Read More
By Brian J. Hubbard // December 14th, 2015
This blog post first ran in 2013, and is becoming something of a holiday tradition for the author. As the year winds down, tradition dictates that we reflect back on the year and, in some cases, resolve to do certain things differently. You can effectively […] Read More
By Mu Yang // November 12th, 2015
I am proud to announce the rollout of the Philadelphia Women in IP Mentoring Program as the chair of this exciting program. This program is sponsored by the Women in Intellectual Property Subcommittee of the Philadelphia Bar Association, and seeks to facilitate and promote mentorship for women […] Read More
By Condo Roccia Koptiw LLP // August 14th, 2015
The Federal Circuit, en banc, set forth new standards for establishing liability for direct infringement of a method claim under 35 U.S.C. § 271(a) where a single actor does not perform all the steps of claimed method, but multiple actors do perform all of the […] Read More
By Brian J. Hubbard // June 12th, 2015
In Ariosa Diagnostics, Inc. v. Sequenom, Inc., No. 2014-1139 (June 12, 2015 Fed. Cir.), the Federal Circuit upheld a grant of summary judgment of invalidity for Sequenom’s US Pat. No. 6,258,540, based on a finding that the claims were not directed to patent eligible subject […] Read More
By Condo Roccia Koptiw LLP // March 11th, 2015
In Pacing Techs., LLC v. Garmin Int’l, Inc. and Garmin USA, Inc., No. 2014-1396 (February 18, 2015 Fed. Cir.). the Federal Circuit upheld a disclaimer finding based on a statement that the all of the objects and features of the “ present invention” are accomplished […] Read More
By Condo Roccia Koptiw LLP // February 4th, 2015
Federal Circuit Holds that a Decision to Institute an IPR is not Appealable After a Final Decision and Upholds the Broadest Reasonable Construction Standard for IPRs In in Re Cuozzo Speed Techs. LLC, No. 2014-1301 (Feb. 4, 2014 Fed. Cir.), the Federal Circuit rendered two […] Read More
By Condo Roccia Koptiw LLP // February 4th, 2015
In Alice Corp. v. CLS Bank Int’l, 134 S. Ct. 2347 (2014) the Supreme Court reinforced the Mayo Collaborative Srvs. v. Prometheus Labs., Inc., 132 S. Ct. 1289 (2012) two-part test for assessing patent eligibility under 35 U.S.C. § 101 for computer-related inventions: (i) whether […] Read More
By Condo Roccia Koptiw LLP // January 20th, 2015
Supreme Court Holds that Resolving Factual Disputes Based on Extrinsic Evidence During Claim Construction is Reviewed on Appeal Under the Clearly Erroneous Standard In Teva Pharm. USA, Inc. v. Sandoz, Inc., No. 13-854 (2015), the Supreme Court reaffirmed its decision in Markman v. Westview […] Read More
By Condo Roccia Koptiw LLP // December 28th, 2014
In Ericcson, Inc. D-Link Sys., Inc., the Federal Circuit vacated a jury’s damages award of about $0.15/infringing device amounting to about $10 million in total damages for infringement of Ericcson patents that covered 802.11 standards and were subject to a RAND obligation. The overall message […] Read More
By Condo Roccia Koptiw LLP // December 8th, 2014
In DDR Holdings, LLC v. Hotels.com, L.P., No. 2013-1505 (Dec. 5, 2014 Fed. Cir.), the Federal Circuit held that claims directed towards solving the problem of website merchants having their users lured to other websites by clicking on advertising links on the merchant’s website claimed […] Read More
By Brian J. Hubbard // October 23rd, 2014
LawMeet® – Eastern Regional Finals Litigators have long influenced legal education. As a result, law school competitions mainly center on classic litigator skills, such as brief drafting and oral arguments (i.e., moot court). When I was a law student, if you were interested in IP […] Read More
By Condo Roccia Koptiw LLP // September 23rd, 2014
Apotex Inc. v. UCB, Inc., No. 2013-1674 (Aug. 15, 2014 Fed. Cir.). Since the Federal Circuit raised the standard for proving inequitable conduct in Therasense, Inc. v. Becton, Dickinson & Co., 649 F.3d 1276 (Fed. Cir. 2011) (en banc), there have been few affirmances of […] Read More
By Condo Roccia Koptiw LLP // August 19th, 2014
Medisim Ltd. v. BestMed, LLC In Medisim Ltd. v. BestMed, LLC, No. 2013-1451 (Fed. Cir. July 14, 2014), Chief Judge Prost authored a unanimous decision in which the Court ruled that defendant BestMed had not properly moved for judgment as a matter of law (“JMOL”) […] Read More
By Condo Roccia Koptiw LLP // June 19th, 2014
The Supreme Court issued a blow against software and method patents on Thursday, affirming that a financial services method and systems claims were unpatentable subject matter under 35 U.S.C. § 101 in Alice Corporation Pty. Ltd. v. CLS Bank Int’l, No. 13-298 (June 19, 2014). […] Read More
By Condo Roccia Koptiw LLP // June 10th, 2014
On June 4th, the Federal Circuit issued a decision regarding standing which raises issues for parties to consider in deciding whether to institute an Inter Partes Review (IPR), because it found that in some instances there is no right to appeal the Board’s IPR decision. […] Read More
By Condo Roccia Koptiw LLP // June 2nd, 2014
The Supreme Court waded into patent litigation with two high profile decisions on June 2, 2014, one on indefiniteness and the other on inducement: Nautilus, Inc. v. Biosig Instruments, Inc. In Nautilus, Inc. v. Biosig Instruments, Inc., the court struck down the Federal Circuit’s “insolubly […] Read More
By Brian J. Hubbard // April 11th, 2014
Patents are enjoying an unprecedented amount of attention currently. For example, patents are frequently in the news in the context of acquisitions, and more often, litigation. While litigation is important (https://condoroccia.com/crk-expands-patent-litigation-practice), some studies suggest that less than 2% of patents are ever involved in litigation. […] Read More
By Brian J. Hubbard // February 20th, 2014
Say you plan a visit to a customer. As a salesperson, researcher, or marketer, you appreciate that it’s a top priority to make sure that a confidentiality agreement (CDA) is in place. The customer may have even told you that you’re covered. But as the meeting […] Read More
By Brian J. Hubbard // January 31st, 2014
Consulting relationships are a staple of today’s economy. Clients appreciate receiving a consultant’s expertise with relatively few strings attached. Consultants appreciate autonomy and the ability to leverage their experiences to multiple clients. Intellectual property (“IP”) is important to consulting at a fundamental level, since a […] Read More
By Brian J. Hubbard // January 16th, 2014
Are Your Agreement Drafts Sending The Wrong Signals? You understand the benefits of exchanging ideas with external parties. In fact, several times, you’ve found a strong value proposition for working together with a well-reputed, innovative, partner. Your team (and even your lawyer) has been on […] Read More
By Michael A. Koptiw // January 2nd, 2014
The U.S. House of Representatives passed the Innovation Act, “The Goodlatte” Bill, on December 5, 2013. The Senate is expected to pass the Innovation Act, or a similar bill. The Innovation Act focuses on patent litigation reform. But patent prosecution professionals should be aware of […] Read More
By Brian J. Hubbard // December 19th, 2013
As the year winds down, tradition dictates that we reflect back on the year and, in some cases, resolve to do certain things differently. You can effectively leverage this frame of mind for patent portfolio management as well. Of course, “patent” in a portfolio context […] Read More
By Brian J. Hubbard // December 4th, 2013
In the past five years, most of the major legal markets can name IP boutiques that dissolved or were absorbed by general practice firms. In a boutique, the entire law firm focuses on one or two areas of practice, thereby creating an “all the eggs […] Read More
By Brian J. Hubbard // November 19th, 2013
What if you’ve read all my previous blogs on the subject and exhausted the internal ways to pump up your innovation pipeline? Working with external partners adds complexity, but can result in new IP. Which type of external partner is right for you? In any […] Read More
By Brian J. Hubbard // November 7th, 2013
This series of blogs focuses on ways to pump up your innovation pipeline. It’s not very insightful to point out that your innovation pipeline depends on the ability of your inventors. But surprisingly, the bottleneck is not usually their ability to invent things – it’s […] Read More
By Brian J. Hubbard // October 28th, 2013
Conventional wisdom expects a certain correlation between R&D spent and patent applications filed. If you’re doing the things I mentioned in my previous blogs, but are still not happy with your applications/R&D spend metric, there are several possibilities: Your definition of R&D spend may be […] Read More
By Brian J. Hubbard // October 16th, 2013
Pronouncements that you need an IP strategy are practically cliché, but nonetheless true. Paraphrasing a mentor of mine, there’s a big difference between having a general strategic intent and a written plan. Putting specifics, timing, and deliverables in writing drives accountability and facilitates onboarding of […] Read More
By Brian J. Hubbard // October 8th, 2013
Innovation review with input from Legal, Marketing, and Research (R&D) functions is one of the strongest value drivers in the IP world. The combination of perspectives gives a 3D picture that helps decision-makers see the underlying value and often focuses attention on potential issues sooner, […] Read More
By Michael T. Ghobrial // March 7th, 2013
Under current case law, the doctrine of joint infringement may be established through direct infringement under 35 U.S.C. 271(a), or may be established though inducement under 35 U.S.C. 271(b). Akamai Tech. v. Limelight Networks, 692 F.3d 1301 (Fed. Cir. 2012); Mckesson Tech. v. Epic Systems […] Read More
By Condo Roccia Koptiw LLP // September 18th, 2012
Apple’s intellectual property has been in the news quite a bit lately. In what had to be the most publicized patent trial in at least half a decade, a California jury recently awarded the consumer electronics giant $1.05 billion in damages due to competitor Samsung’s […] Read More
By Condo Roccia Koptiw LLP // April 20th, 2012
With technological advancements in data communication, networking, and file management systems making it easier than ever to work with anyone around the world at any time of day, joint ventures between companies and other cooperative partnerships have continued to increase in number and importance over […] Read More
By Michael A. Koptiw // April 4th, 2012
Once a patent examiner makes a rejection of a patent application “final” the Applicant has very few options. Ordinarily, the Applicant can appeal, which is time consuming, or can file a request to reopen prosecution to present new or revised claims, which is costly. Now, […] Read More
By Condo Roccia Koptiw LLP // March 19th, 2012
Written by Michael T. Ghobrial, Michael Jordan, and Joseph R. Condo for the 28th Annual Joint Patent Practice Continuing Legal Education Seminar (www.jppcle.org), which will be held on April 17, 2012 in New York City. I. SUMMARY Under the majority’s rule in Marine Polymer I, arguments made before […] Read More
By Stuart A. Schanbacher // February 21st, 2012
A new fee schedule being proposed by the USPTO may create unexpected expenses for patent filers. The proposed new fees and fee increases are meant to help the USPTO cover its expenses (1). In some instances, the proposed fees may be unreasonable in relation to […] Read More
By Stuart A. Schanbacher // February 2nd, 2012
Law360, New York (January 26, 2012, 12:50 PM ET) — On Aug. 31, 2011, the European Patent Office issued new procedures making it much easier to get a second written opinion in Patent Cooperation Treaty patent applications. The new procedures are applicable when the EPO […] Read More
By Condo Roccia Koptiw LLP // January 11th, 2012
With the passage of the Leahy-Smith America Invents Act (AIA) in September 2011, the USPTO was expressly authorized by Congress to continue the expansion of the Track 1 Prioritized Patent Examination Program. Originally announced in the February 2011, the Track 1 program was formerly a […] Read More
By Michael A. Koptiw // December 13th, 2011
The word “only” is one of those magic words in patent specifications and claims. The word conveys such a strong absolute that it tends to drown out other arguments. And, given the law of unintended consequences, patent drafters should have a very good reason to […] Read More
By Michael T. Ghobrial // October 20th, 2011
Arguments made to the PTO during reexamination can amend the scope of claims and trigger absolute intervening rights for the accused infringer under 35 U.S.C. §§ 252 and 307(b), thereby eliminating all damages for the period before the issuance of the reexamination certificate. In Marine […] Read More
By Vincent J. Roccia // October 4th, 2011
Condo Roccia Koptiw LLP is pleased to announce it has formed a partnership with CPA Global, the world’s top intellectual property (IP) management specialist, and will continue to use CPA Global’s FoundationIP platform to support Condo Roccia Koptiw’s patent portfolio and management practice. Offering an […] Read More
By Michael T. Ghobrial // September 29th, 2011
In Ultramercial, the CAFC held that a method claim for distributing copyrighted products over the Internet was patentable subject matter under 35 USC 101 due to the programing complexity required to carry out the claimed elements. Although the CAFC mentioned the “machine or transformation test,” […] Read More
By Michael T. Ghobrial // September 23rd, 2011
When drafting claims practitioners often struggle defining limiting terms such as “a,” “at least one,” and “one.” However, the key to defining these terms may be to focus less on the term itself and focus more on the context surrounding the term. For example, the […] Read More
By Michael A. Koptiw // September 20th, 2011
The Federal Circuit struck down a computer readable medium (CRM), or Beauregard, claim under § 101. In Cybersource Corp. v. Retail Decisions, Inc., the court held that the CRM limitation in the claim did not make an otherwise unpatentable method patent-eligible under § 101. In […] Read More
By Michael A. Koptiw // September 15th, 2011
There aren’t any no-brainers in patent law, but the USPTO’s ePetitions system comes close. In March, the USPTO began an automated filing and decision process for eight patent-related petitions through a new system called ePetitions. Not only does ePetitions allow practitioners to file the petitions […] Read More
