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Bejin Bieneman was founded on the philosophy of partnering with clients to assist them in achieving a positive return on investment in the legal process. Our attorneys maximize returns on clients’ long-term investments by understanding our clients’ business objectives.

Webinars

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Tricks of the Trade: Efficient and Effective Patent Drafting and Prosecution – Part II

March 16, 2023 | 12:00-1:00 PM EDT

In this two-part webinar, Bryan Hart and Mark St. Amour will discuss best practices for drafting patent applications and pursuing those applications in front of the Patent Office, from inventor interviews to office action responses. Bryan covered drafting in February’s Part I, and Mark will cover prosecution in Part II.

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IP Blog

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Federal Circuit Upholds District Court Inventorship Ruling

In Tube-Mac Indus. v. Campbell, the Federal Circuit upheld a district court ruling mandating a correction of inventorship for US Patent 9,376,049. While nonprecedential, the Federal Circuit opinion nonetheless provided a refresher on requirements of inventorship and the standard used when inventorship is challenged. The ‘049 patent is directed toward a container for transporting refrigerated gaseous fluids and originally named...

Federal Circuit Again Address Whether “A” is a Singular-Only or Plural-Allowing Interpretation: ABS Global, Inc. v. Cytonome/ST, LLC

In ABS Global, Inc. v. Cytonome/ST, LLC, No. 22-1761 (Fed. Cir. Oct. 19, 2023), the Federal Circuit determined that the PTAB erred in its claim construction of a limitation common to all challenged claims (claims 1, 2, 6, 8, and 9) of U.S. Patent No. 10,583,439 (“the ‘439 patent”). Ultimately, the court reversed the Board’s written decision with respect to...

Federal Circuit Affirms the Board’s Claims Construction and Denial of Revised Motion to Amend: Sisvel Int’l v. Sierra Wireless, Inc.

In Sisvel Int’l v. Sierra Wireless, Inc., No. 2022-1387 (Fed. Cir. Sep. 1, 2023), the Federal Circuit affirmed the Patent Trial and Appeal Board’s decision that claims 10, 11, 13, 17, and 24 of U.S. 7,433,698 (“the ‘698 patent”) and claims 1, 2, 4, and 13-18 of U.S. 8,364,196 (“the ‘196 patent”) were unpatentable as anticipated and/or obvious over certain...

Federal Circuit Affirms Grant of Summary Judgement Relating to Invalidity for Lack of Enablement Using Amgen Reasoning: Baxalta Inc. v. GenenTech, Inc.

In Baxalta Inc. v. GenenTech, Inc., No. 2022-1461 (Fed. Cir. Sep. 20, 2023), Baxalta Inc. and Baxalta GmbH (“Baxalta”) appealed from the U.S. District Court for the District of Delaware a grant of summary judgement that claims 1-4, 19, and 20 of U.S. Patent No. 7,033,590 (“the ‘590 patent”) are invalid for lack of enablement. The Federal Circuit affirmed. Baxalta...

Fed. Cir. Focuses on the Facts in PTAB Appeal

The saga between Apple and Corephotonics continues in Corephotonics, Ltd. v. Apple Inc. where the Federal Circuit vacated and remanded final decisions of the PTAB concluding that challenged claims of 9,661,233 (“’233 patent”), 10,230,898 (“’898 patent”), 10,326,942 (“’942 patent”), and 10,356,332 (“’332 patent”) (collectively, the “Challenged Patents”) are unpatentable as obvious. In vacating the decisions, the Federal Circuit point to...