Written by: Mark Terry Last night I had the pleasure of attending a South Florida Intellectual Property Law dinner in Miami, Florida that featured a presentation by Commissioner Robert Stoll. Super nice guy, by the way. In a word, he killed. He knew…
Written by: Mark Terry PART TWO In general, a reexamination is the process by which a patent owner or third-party requests that a patent’s claim(s) be reviewed against other patents or publications (prior art) by the USPTO’s Board. A patent…
Written by: Mark Terry Last week, the Board of Patent Appeals and Interferences (BPAI) upheld a Patent Examiner’s rejection under 35 U.S.C. § 102(e) of a patent application for an invention that was claimed too broadly. As a Miami Patent and…
Written by: Mark Terry What happens when you only disclose a larger range of values in the specification and later amend the claims to recite a smaller range of values encompassed by the larger range? Do you run into a…
Written by: Mark Terry The photo below is the ceiling of my gym – my local Crossfit box in Miami. At least a couple of times a week, I collapse on the floor of that gym after completing a WOD, heart pounding, and try…
Written by: Mark Terry PART ONE The USPTO and Congress have been looking for ways to reduce the damage done by patent trolls and their often-times frivolous lawsuits. One way of doing this has been by restructuring the inter…
Written by: Mark Terry Last week’s Board of Patent Appeals and Interferences (BPAI) decision of Ex Parte Lim , which affirmed a Patent Examiner’s 35 U.S.C. 103 obviousness rejection, teaches an important lesson – obviousness rejections must address both references – not…
Written by: Mark Terry In light of all of the news about patent reform legislation and the backlash against Non-Practicing Entities (NPE) [you know … patent trolls], did you know that large corporations like Microsoft, Sony, Apple, Intel, and Google…
Written by: Mark Terry Short Answer: where the defendant has minimum contacts 28 U.S.C. § 1400(b) makes it very clear that “Any civil action for patent infringement may be brought in the judicial district where the defendant resides, OR where the…
Written by: Mark Terry The Board of Patent Appeals and Interferences (BPAI) recently handed down an influential decision when it reversed an obviousness-type rejection (Ex Parte McManamy, Appeal 2009-008781) entered by a patent examiner under 35 U.S.C. § 103(a). The 103(a)-obviousness rejection…
