FOLLOW THE PLUS IP BLOG

Categories

Ten Facts about Patents

Written by Mark Terry Patents grant you the right to exclude others from making, using, selling or importing a patented product or process. Without a patent, others can typically use your ideas and monetize them without any recourse. Patents can be used to protect many different things including products or innovative new ways of doing things, i.e., a process that offers a new solution to a complex problem. It is highly recommended that you enlist the services of a legal professional who will help you through the patent process. I, Mark Terry, am a patent lawyer located in Miami, Florida. In

Read More »

PTAB Reverses a 35 U.S.C. §102 Rejection Today: This is Why They Did It

Written by Mark Terry This is a great Patent Trial and Appeal Board (PTAB) decision that highlights in one, short decision the main arguments every patent practitioner should make when responding to a 35 U.S.C. §102 anticipation rejection. In today’s Ex Parte Farkas decision, the PTAB reversed an Examiner’s anticipation rejection based on the following main reasons: Concepts do not anticipate Missing element by element analysis Elements not arranged in the same way We explain each one below. It is often the case that when issuing a 35 U.S.C. §102 anticipation rejection, the Examiner cannot find one or more of the claim elements in the

Read More »

The Importance of Evidence In Office Action Responses

It is often the case that the U.S. Patent and Trademark Office (USPTO) will issue a 35 U.S.C. § 103 obviousness rejection based on what an Examiner believes is material that is known to a person of ordinary skill in the art. That is, the Patent Examiner will often state that such-and-such claim element (or some combination of claim elements) are well known to a person of ordinary skill in the art (POSITA). As a patent practitioner, you can respond with “attorney argument” and/or you can respond with hard evidence. The attached Patent Trial and Appeal Board (PTAB) decision of Ex Parte Skryten et

Read More »

Similarity in Advertising and the Trademark Infringement Analysis

Does the type of advertising employed by a defendant in a trademark infringement case matter? Yes it does. In fact, it is one of several key factors that are central to a trademark infringement case. As a Miami Trademark Attorney currently representing litigants in multiple trademark infringement cases in the Southern District of Florida, advertising and its relation to the trademark infringement analysis are subjects that have come up more than once in a dispute. It is standard in a trademark infringement case to discover information about advertising employed by the defendant, since similarity in advertising media is one of the seven factors used

Read More »

Can Filing a Patent Infringement Suit Hurt You in a Re-Exam?

I came upon a super interesting Board of Patent Appeals and Interferences (BPAI) decision issued today. I found the Smucker v. Mack-Ray case interesting for both educational and entertainment reasons. The decision involves the effect an infringement action may have on a re-exam. But the BPAI used uncharacteristically harsh words to reject the Appellant’s arguments, which made it amusing. It’s rare to see any emotion in a BPAI decision, so when you see Jones Day get a verbal spanking, you can’t help but write about it. In the Smuckers v. Mack-Ray case, the patent owner had sued the defendant for patent infringement in District Court. Naturally,

Read More »

Are terms of “degree” indefinite claim language under 35 U.S.C. 112?

Terms of degree – such as “easily,” “readily,” and “aesthetically pleasing” – can be subjective and therefore problematic when used as claim language. But the recent Federal Circuit decision of Hearing Components, Inc. v. Shure Inc., 600 F. 3d 1357 (Fed. Cir. 2010) provides some guidelines on how to properly use terms of degree in claim language without worrying about a 35 U.S.C. §112 indefiniteness rejection. As a Florida Patent Attorney, I write claims almost every day, so this case is topical for me. Under 35 U.S.C. § 112, second paragraph, the “specification shall conclude with one or more claims particularly pointing

Read More »

Can You Get Punitive Damages for Trademark Infringement?

Can you get punitive damages in a Trademark Infringement case? In short, the answer is yes, but only in certain cases and certain jurisdictions. This is an issue that often comes up in trademark infringement cases where compensatory damages are not adequate to compensate the aggrieved party. As a Miami Trademark Lawyer currently litigating trademark infringement cases in the Southern District of Florida, I am constantly dealing with the subject of damages. Punitive damages are damages intended to reform or deter the defendant and others from engaging in conduct similar to that which spawned the lawsuit. The purpose of punitive damages is not

Read More »

TTAB Finds No Fraud on the USPTO in Burrito Case

The Trademark Trial and Appeal Board (TTAB) of the U.S. Patent and Trademark Office (USPTO) issued another decision evidencing how enormously difficult it is to invalidate a trademark registration on the basis of fraud on the USPTO. In the decision of MCI Foods, Inc. v. Brady Bunte (TTAB 92046056), the TTAB found that a knowingly overly-expansive description of goods and services did not constitute fraud on the USPTO. As a Miami Trademark Lawyer with a full docket of trademark disputes, this case is instructive in its exposition of the law surrounding fraud on the USPTO. The registrant owned a federal trademark registration for CABO PRIMO

Read More »

Federal Circuit: You Are Not A Person of Ordinary Skill in the Art

Today the Court of the Appeals for the Federal Circuit issued a decision that plainly answers the question of who is a person of ordinary skill in the art – Extreme Networks v. Enterasys Networks (Fed. Cir. 2010). As a Florida Patent Attorney who routinely deals with this question, I found it refreshing to read a Federal Circuit decision that tackles this issue head on. The case of Extreme v. Enterasys involved a two-way patent dispute over router-based technologies. At issue was whether the lower court erred in excluding one party’s expert because he was not a person of ordinary skill in the art. The

Read More »

THE PLUS IP FIRM

We are board-certified intellectual property attorneys, inventors, and engineers that help small-size inventors, entrepreneurs, and businesses register and protect patents, copyrights, and trademarks so you can profit from them faster.

Call Now: 786.443.7720