Bryan K. Wheelock

In the News

• “Employee-Created Intellectual Property: Protecting Employer Ownership,” HR.com
• “Should Kellogg’s be Frosted by Seinfeld’s ‘Unfrosted’?,” IPWatchdog
• “Disney Copyright Expiration Spurs Trademark Questions,” Law360
• “Copy, Paste, Infringe!” – Harness IP’s Bryan Wheelock and Joel Samuels Clear Up Copyright Misconceptions in the St. Louis Bar Journal
• “Maximizing License Agreements with Precision,” Industry Today
• Unlocking The Power Of Intellectual Property Of Mid-Size Companies
• “Trademarks in the Middle Market: Uncovering Hidden Value and Assets” – Harness IP’s Wheelock and Walsh on The Market That Moves America Podcast
• "Lexicography: The Ultimate Superpower" – Harness IP’s Bryan Wheelock in The Patent Lawyer
• Patent Attorney Bryan Wheelock Quoted in Law360 about Written Description Requirement Rulings
• Bryan Wheelock Quoted about Submarine Patents in Bloomberg Law Article
• Bryan Wheelock Discusses Amended Patent Claims in PTAB Proceedings with Law360
• Bryan Wheelock Interviewed by Law360 about USPTO Deadlines amid COVID-19 Outbreak
• Bryan Wheelock talks to Diagnostics World News about the Value of Diagnostic Patents and Why Congress Must Protect Diagnostic Inventions
• Bryan Wheelock Comments on Peloton’s Ongoing IP Fights in Bloomberg Law Article
• Trademark Attorney Bryan Wheelock Adds Perspective to Brunetti Trademark Case
• Bryan Wheelock Discusses Disney’s Trademark Worries with Bloomberg Law
• Bryan Wheelock Discusses the IP Considerations for Developing an Enterprise App
• Bryan Wheelock Discusses Scandalous Versus Disparaging Trademarks with Bloomberg Law
• Wheelock Shares Insights on GoPro "Printed Publication" Ruling with Law360
• Entire Market Value Has Its Day in Court, Says Bryan Wheelock in Law360 Article
• Bryan Wheelock Discusses Patent Damages with Law360
• Patent Attorney Bryan Wheelock Discusses 2017’s Biggest Cases
• Humvee-maker AM General Uses “Lawsuit Launcher” in Video Game Trademark Battle
• Bryan Wheelock Quoted in Law60 Article on Ensnarement Defense
• New York Post Quotes IP Attorney Bryan Wheelock on Artistic Fair Use
• "Patent Prosecutors Alarmed By Inequitable Conduct Ruling," Law360, August 2, 2017
• St. Louis IP Attorney Bryan Wheelock Discusses "Lit Year" Metric with Inside Counsel
• "Antennas Direct seeks monetary damages for allegedly false patent infringement claim," St. Louis Record, May 1, 2017
• "Qualcomm ordered to refund BlackBerry £650M in royalty overpayments," Bit-tech, April 13, 2017
• "Hedge Fund Drug Patent Challenges In Doubt After Bass' Test," Law360, March 31, 2017
• "Why What's Going On Inside IBM's Big, New IoT Center Could Deeply Change Our Lives," Forbes, March 14, 2017
• "Attys React To High Court's Copyright Attys' Fees Ruling," Law360, June 16, 2016
• "The Business of IP: Choosing Between Patents and Trade Secrets," IP Watchdog, May 25, 2016
• "How the USPTO's “analysis paralysis” changed the software patent game," Inside Counsel, December 9, 2015
• "Was the Federal Circuit Trying to Save Us from Ourselves in Williamson v. Citrix?," IP Watchdog, July 28, 2015
• "STRATEGIC PERSPECTIVES: The pros and cons of the proposed PATENT Act," IP Law Daily, June 25, 2015
• "Uncertainty Over PTAB Remand After First Federal Circuit Reversal," Managing Intellectual Property, June 23, 2015
• "Attorneys React To Supreme Court Patent Royalties Case,"Law360, June 22, 2015
• "Federal Circuit reverses PTAB invalidation of patent for first time citing unreasonably broad claims construction," The Patent Investor, June 22, 2105
• "Federal Circuit Rules in Two PTAB Appeals," The Recorder, June 17, 2015
• "In 1st AIA Reversal, Fed. Circ. Finds Patent Wrongly Axed," Law360, June 16, 2015
• "Patent attorney argues PATENT Act still not the best approach to reform," Legal Newsline, May 18, 2015
• "Attorneys React To Supreme Court's TTAB Preclusion Ruling,"Law360, March 24, 2015

Events

• Patent Attorney Bryan Wheelock Co-presents 2021 Federal Circuit Year in Review CLE
• Patent Attorney Bryan Wheelock to Participate in Strafford CLE Webinar on the Expectation of Success Doctrine
• Attorneys Michael Thomas and Bryan Wheelock to Participate as Featured Speakers in a Virtual Meeting Hosted by the USPTO
• Harness IP Attorneys to Lead Enterprise University St. Louis Course, "The Technology Pre-Nup: Protecting Your Intellectual Property When Working with Others"
• Harness IP Attorneys Set to Present Enterprise University Course, "The Technology Pre-Nup: Protecting Your Intellectual Property When Working with Others"
• Bryan Wheelock Co-presents 2018 Federal Circuit Year in Review CLE
• Harness IP Attorneys Present Enterprise University Course on Unfair Competition
• AIPLA Annual Meeting in Washington, D.C.

• “Forces Converge to Make Trademark Law Hot,” Of Counsel Newsletter

Presentations

“CLE: Annual Federal Circuit Year in Review and PTC Section Annual Election,” Co-presenter, Bar Association of Metropolitan St. Louis, March 3, 2017

“Intellectual Property Owner’s Manual,” Guest Speaker, Center for Emerging Technologies, June 2016

“Patent Federal Circuit Year in Review and Annual Election Meeting,” Guest Speaker, The Bar Association of Metropolitan St. Louis, St. Louis, MO, March 2016

Articles

• “Employee-Created Intellectual Property: Protecting Employer Ownership,” HR.com
• “Should Kellogg’s be Frosted by Seinfeld’s ‘Unfrosted’?,” IPWatchdog
• “Disney Copyright Expiration Spurs Trademark Questions,” Law360
• “Copy, Paste, Infringe!” – Harness IP’s Bryan Wheelock and Joel Samuels Clear Up Copyright Misconceptions in the St. Louis Bar Journal
• “Maximizing License Agreements with Precision,” Industry Today
• "Lexicography: The Ultimate Superpower" – Harness IP’s Bryan Wheelock in The Patent Lawyer
• Bryan Wheelock Discusses the Limits on Modifying Branded Goods in a Recent World Trademark Review Article
• Bryan Wheelock Discusses IP Rights for Kiosks and Vending Machines in Vending Times Article
• Bryan Wheelock Shares IP Design Protection Strategies in Nutrition Industry Executive Magazine
• Bryan Wheelock Authors Article for Robotics Business Review on the Battle over USPTO Legal Fees
• Wheelock & Cauble Co-Author Article about Technology Policies to Protect Your Company
• Attorneys Wheelock & Cauble Share Employee Agreement Basics with Dallas Business Journal
• Bryan Wheelock Pens Article about IP and Video Games for World Trademark Review
• Bryan Wheelock Shares IP Basics for App Developers in New Article
• "Darmok and Jalad in District Court," IPLS Proceedings, March, 2017
• "Human-Robot Interfaces Should Be Subject to Legal Protection," Robotics Business Review, December 21, 2016
• “The Award of Attorneys’ Fees in Exceptional Cases Under 5 U.S.C. § 1117(a) of the Lanham Act,” The Trademark Reporter, November–December, 2016
• "The DTSA Should Add a Spark to Trade-Secret Enforcement," Electronic Design, June 22, 2016
• "Patents — The Last Border Guard?," ACC Docket, June, 2016
• "STRATEGIC PERSPECTIVES: TTAB results not a guarantee of district court performance," IP Law Daily, March 27, 2015
• "6 Reasons Inter Partes Review Was Popular In 2013," Law360, December 17, 2013
• "A Look At 1st Year Stats On Inter Partes Review," Law360, October 15, 2013
• "What We've Learned From 9 Months Of Inter Partes Reviews," Law360, July 9, 2013

Blogs

• Joe Walsh and Bryan Wheelock Talk Middle Market IP on NCMM Podcast
• Website and Press Releases Created Plausible Claim of Inducement of Infringement by a Skinny Labelled Generic Product
• Plaintiff Failed to Show It was Entitled to a Preliminary Injunction to Protect its Trade Secrets
• Supreme Court Affirms 100+ Year Period for Copyright Damages
• Have a Seat Over There — Petitioner Has No Standing to Appeal PTAB Decision
• Extrinsic Evidence Needed to Construe Numerical Limitation in the Claims
• Co-owned, but Unrelated Application Cited in IDS Does not Inform the Meaning of the Claims
• Computer-Readable Recording Medium Is Not a Transitory Medium
• How Many?
• Storing and Displaying Video is an Abstract Idea
• A Court Can Only Enjoin Public Accusations of Patent Infringement if They Are Objectively Baseless
• Functional Medical Device Demonstrated at Trade Show Trigged On Sale Bar of pre-AIA 102(b)
• Holiday Countdown
• Still Chasing A Buck?
• Sitting On A Gold Mine
• July 4, 2022
• Juneteenth 2022
• June 14, 2022 — Flag Day 2022
• June 6, 2022 Patent of the Day
• Memorial Day 2022
• Not so fast — Letters to Customers + Customer Litigation Required More Analysis Before Dismissing a DJ Action
• “AND” Can Mean “OR” Depending on the Context
• Happy Mother’s Day 2022
• Dashed Lines Broaden the Scope of a Design Patent, But this is Ridiculous
• Plaintiff’s Gonna Lose, Lose, Lose, Lose, Lose
• Apparently Goodwill, like Love and like Diamonds, is Forever
• Wait ... Ignorance of the Law is an Excuse?
• Black Inventors and Their Inventions
• Groundhog Day: Thank you Mr. Sowerby
• Proper Claim Construction is Essential to a Determination of Patentability
• PTO Examiners are Entitled to Appropriate Deference
• Ordinary Meaning Can Be Broader than Disclosed Embodiments
• Silence is not only Golden, it is a Written Description if the Skilled Artisan Would Understand it that Way
• The Proper Claim Construction of a Term is Not Necessarily the Sum of its Parts
• Patents for a Happy Thanksgiving
• To Claim a Range, Make it Clear You are a Claiming a Range
• Any Third Party Use is Relevant to Whether a Claimant Made Exclusive Use of a Mark
• Veterans: Thank You for your Service
• Patent Venue Construed Strictly, Even in ANDA Litigation
• Indians Acting Like Cowboys: The Cleveland Guardians Trademark Dispute
• Failure in the Art Undermines any Reasonable Expectation of Success
• Too Late for Brooklyn Brewery to Pursue Brooklyn Brew Shop
• IPR’s Survive More Constitutional Challenges
• An Army of Citation Footnotes Crouching in a Field of Jargon is no Substitute Explanation
• THIS forum selection clause in THIS NDA agreement did not bar the IPRs
• What’s in a Name? Patentability.
• §101: Why We Won’t Have Nice Things
• There’s More to Being an Inventor than Butterscotch Ripple
• False Association Under 2(a) is not the Same As Likelihood of Confusion Under 2(d)
• Mmm, Mmm, Obvious
• Federal Circuit Holds USPTO Can’t Recover Expert Witness Fees under 35 USC § 145
• Wayback Machine Helps Prove Exhibit was Prior Art
• Broad, Functional Claims Made it Hard to Presume Nexus for Commercial Success
• The Step that Can Be Performed in The Human Mind is a Telltale Sign of Abstraction
• Following the Rules is Not Enough (Check the Statutes)
• Skimpy Proof of a Regular and Established Place of Business Bares Absence of Venue for Corporate Affiliates
• I will Gladly Assign to You Today an Invention I will Make Tomorrow
• Do Lawyers Make Us Rude?
• Trademark Dispute: Upwork Can Use the Term “Freelancer” to Describe an App for Freelancers
• Father’s Day 2021
• Recognizing Juneteenth
• Flagging a Potential Trademark Issue
• Flag Day 2021
• Intrinsic Evidence > Dictionary Definitions, Analogies, and Purported Plain Meaning
• Picture This: An Improved Camera is an Abstract Idea
• The Specification may be Eligible, But the Claims Were Not
• Antitrust Law is Not Appealing to the Federal Circuit
• The Disclaimer Doctrine Prevents Patent Owners from Construing the Claims Differently in Court than in the USPTO
• Complying with All Rules and Paying $7 Million in Fees Can Still Constitute Prosecution Laches
• Don’t Forget to Claim What the Device Is, Not Just What the Device Does
• The References are not the Only Sources a Person of Ordinary Skill Would Consider
• Applying Vitiation to “Annular Cover” was Circular Reasoning
• Federal Circuit Ignores Forum Selection Clause that Could Have Prevented IPR
• Federal Circuit Ignores Forum Selection Clause, Allowing IPR to Proceed
• Being Able to Practice the Invention is not the Same as Being Able to Practice the Full Scope of the Invention
• A Cease and Desist Letter Can Confer Personal Jurisdiction
• Trademark Protects Something From “Nothing”
• Copying for Compatibility, Rather than Creativity, is Fair
• A Basket of Easter Patents: Egghead Edition
• A Basket of Easter Patents
• Shamrock-shaped Patents
• St. Patrick’s Day in Patent History
• Can you Patent Something that Doesn’t Work?
• A Uniform Policy on Trademarks
• Marking Your Trademark: ® or TM
• Hindsight May be 20-20, but it has no Place in Evaluating Obviousness
• It’s OK to Give Less Weight to Suggestive and Descriptive Terms when Comparing Marks as a Whole
• Even If Phrase Was In the Preamble, it is a Claim Limitation that was Not Met
• Judgment of Non-Infringement Moots Appeal of PTAB Decision Sustaining Validity
• Late Request For Leave to Amend Complaint to try to Save Patent on Ineligible Subject Matter Denied
• A Preference for Something Else is not Teaching Away
• Patent FAQ: Patent Renewals, Expirations, Coverage, Tax Benefits, and More
• Breach of Confidentiality Agreement Required Transfer for Resulting Patents
• Petitioner Can Substantiate Prior Art When Challenged by Patent Owner
• Apparatus Claims Sometimes Incorporate Process Limitations, but Not this Time
• Descriptive Use of a Registered Trademark is not Infringement
• Finding Claims Non-obvious Was Not Error, It Was the Application of the Proper Evidentiary Standard
• IPR Estoppel: It’s Not A Second Bite at the Apple if You Didn’t Get a First Bite
• §315(c) Does Not Allow Board to Join IPRs or to Add Issues to an IPR via Joinder
• Goodwill Hunting
• Inventorship, Unlike a Claim, is a “Nose of Wax”
• Pointed Tip is Not a Substantially Flat Surface
• Clear Claim Language Trumped Written Description in Construction
• Upper and Lower Claim Limitations Leave Patent Owner Feeling Down
• Constitutional Rights: Use Them or Lose Them
• Local Rules, unlike the Pirate Rules, Are More than Mere Guidelines and Ignoring Them Can Cause a Loss of Rights
• Standard-Essentiality is a Question for the Factfinder
• Reason for Claim Amendment Was Tangential to Equivalent, Doctrine of Equivalents Applies
• Federal Circuit to PTAB: Show Your Work
• Improved Method of Operating a Flow Cytometry Apparatus Is Not Abstract
• "Half-Liquid" is Wholly Indefinite
• Lack of Likelihood of Success and Irreparable Harm Doomed Preliminary Injunction
• Institution Decision Not Carved in Stone; Final Written Decision Can Differ
• Apparent Agreement Did Not Protect Condom Company from Attack
• PTAB is not Limited to § 102 and § 103 when Reviewing Amended Claims in IPR
• Licensee’s Failure to Mark Ruined Patent Owner’s Claim for $3.5 Million in Pre-Suit Damages
• Collaboration and Concerted Effort are What Result in Joint Inventorship
• Board Should Fix Obvious Claim Errors in Order to Make a Decision on the Merits
• Over-designation of Confidential Information Costs Plaintiff Protection
• 42 U.S.C. § 262(l)(8) Simply Requires 180 Day Notice before Sale of a Biosimilar Product
• Past History is as Relevant as Current Conduct in Attorneys’ Fee Award
• Common Sense Dooms Airplane Bathroom Patents
• Federal Circuit Explains When You Can Ignore the Words Before the Colon in a Patent Preamble
• A Brief History of Patents & Slavery In Honor of Juneteenth
• The Federal Circuit extends the Kessler Doctrine to Dismissals with Prejudice
• Rogers Defense in Fight over Trademark Use in Teen Movie: Blockbuster or Flop?
• Employee Agreement Review
• A Clear Explanation of Reasons Needed for a Fee Award
• Joint Ownership of Patents: It Is Not Always Nice to Share
• IPR Attorneys’ Fees are not Awardable under Section 285
• Reducing Costs: Patent Maintenance Fees
• While PTO Action was Frustrating, Applicants Can Only Appeal Final Agency Actions
• Claim Terms Construed in the Context of the Entire Patent, including the Specification
• More Mischief from Exempting Agency Action from Review: Real Party in Interest in IPR not Reviewable
• Federal Circuit to PTAB: Try Harder to Construe Patent Claims in IPR
• Federal Circuit Erases Protection for Chalk Pencil
• Petitioner Can’t Complaint About Improperly Appointed PTAB
• Claims to System that Reduced Transmission Delays Are Patent Eligible and Not Merely Data Manipulation
• Board Misconstrued Scope of Prior Art By Relying on Reference Numerals in its Claims
• 19 Things In-House Counsel Can Do During the Lockdown To Improve Their IP Portfolio
• Ha Ha, Our New Robot Overlords Can’t Get Patents
• Losing the Right to Challenge a Patent is not Enough to Confer Standing to Appeal IPR Decision
• Pro Se Applicant Gets the Same Result as the Pros: Method of Fishing is Abstract
• Assignor Estoppel Cannot Resurrect Patent Invalidated in an IPR, but it Can Save Patent from Challenge in District Court
• Getting the Infringement Case Dismissed as Moot Still Counts as a Win
• The Scope of Patent Term Extension under 35 USC §156 Only Includes the Active Ingredient of an Approved Product
• Wrong or Purposefully Evasive Decisions on IPR Time Bar Are Not Reviewable
• Selection of Primary Reference in Design Patent Case is a Question of Fact that Should Not be Resolved on Summary Judgment
• Patent Claims Focusing on Improving Cardiac Monitoring Technology are Eligible Subject Matter
• Who Knew? Banks are People and Can Petition for Post-issuance Review, Too
• Good Friday 2020 and a History of Easter Eggs According to a Patent
• A Patent Claim is not Indefinite Merely Because Infringement Can’t be Determined in Advance
• The Board Can Identify New Issues of the Patentability of Amended Claims; But Must give the Parties Notice
• Color the TTAB Embarrassed; Packaging Colors can be Inherently Distinctive
• Similar Compounds at Overlapping pH’s Created Prima Facie Case of Obviousness
• Licensing of Process, and Sale of the Business using Process, did not put Invention on Sale
• Erroneous Patent Claim Interpretation and Misunderstanding of Case Law Results in Reversal of No Anticipation
• Allegations of Infringement Should not have been Enjoined without Evidence of Bad Faith
• Removal Improper Because Trade Secret Claim did not Necessarily Raise Inventorship Issues
• Descriptive Use or Trademark Infringement?
• Trademark Litigation Over "You're Never Done" Shows Sometimes You Are
• Endless Litigation
• Celebrating Spring 2020 with Patents
• § 315(c) Does Not Authorize Joinder of Two Proceedings, or Joining a Person to a Proceeding in Which that Person is Already a Party
• An Improved Step in a Diagnostic Method is Patentable Subject Matter
• Design Patent Infringement Affirmed Where Defendant Did Not Proffer Jury Instructions or Introduce Prior Art
• Prosecution History Doesn’t Have to Rise to the Level of Disclaimer to Inform the meaning of the Disputed Claim Term
• Patent’s Prosecution History Informs the Meaning of the Claim Language, Saving them from Invalidity
• First-Filed Declaratory Judgment Dismissed in Favor of Later-Filed Infringement Action
• International Women’s Day: Recognizing Mary Dixon Kies, First Woman to Obtain a U.S. Patent
• Software Can Make Non-Abstract Improvements to Computer Technology Just as Hardware Can (But Didn’t Here)
• Federal Circuit Finds Lawyers Chose Advocacy over Candor
• Leap Patents
• Motivation to Combine Prior Art Can Come from Knowledge of those Skilled in the art, the Art Itself, or the Nature of the Problem
• Licensee’s Failure to Mark Licensed Products Limits Patent Owner’s Recovery
• Hilton Sued for $4.6 Million for Infringing Restaurant Name, Trademark for Six Months
• Presidents’ Day 2020: Presidential Patents Beyond Lincoln
• Happy Valentines Day (Patents) 2020
• A Binding Settlement Agreement Generally Moots the Action Even if it Requires Future Performance
• Hot Sauce v. Pot Sauce
• Petitioner in an IPR is Entitled to Respond to Arguments Made by Patent Owner
• You Mess With Me, You Mess With My Whole (Patent) Family
• Recognizing the History-Makers in Black History Month
• Only an Expert Can Testify about What Would Be Obvious to a Non-Expert
• Federal Circuit Asks PTAB to Give it a Go and Decide Whether Indefinite Claims Were Otherwise Patentable
• File When Ready! Criteria for Determining if an Invention Should Be Patented
• General Knowledge is Available in Obviousness Inquiry Even Though IPRs are Limited to Documentary Prior Art
• Affirmed: Patent Owner’s Claim Construction that Excluded Preferred Embodiments Was Not Correct
• Lack of Showing of Criticality Dooms Claims
• IPR Decision Wipes Out Patent Owner’s Earlier Victory in District Court
• Markush Groups Open to Additional Elements
• Happy New Year! Celebrating a New Year with Patents
• Inherency Supplied Missing Claim Limitation in Obviousness Analysis
• Points of Difference from Prior Art Did Not Make it to the Claims; Claims were Anticipated
• Patents for a Merry Christmas!
• Award of Attorneys’ Fees Hinges on a Finding of an Exceptional Case, Not an Exceptional Part of a Case
• Patent Owner’s Praise for Other Inventions Destroyed Presumption of Nexus between Commercial Product and Claims
• It is Importation that Infringes under 35 USC § 271(g), Not Manufacture
• Plaintiff Who Dismissed Patent Infringement Case Still Must Pay Defendant’s Attorneys’ Fees
• Substantial Evidence Supported Jury Verdict that not all Infringing Uses were Reasonably Related to Developing and Submitting Information to the FDA
• Yabba Dabba Don’t — “Bedrock Principle” Prevents USPTO from Recouping Attorneys Fees
• Thank You, Veterans
• Board Erred in Finding Reference Was Not Reasonably Pertinent to the Problem Facing the Inventor
• Petitioner Allowed to Supplement Evidence that Reference was Available
• OK, Campers, Here’s How to Make Your Claim Preamble a Limitation
• Federal Circuit Loosens the Iron Grip on Evidence of Copying
• Federal Circuit Gives the PTAB an Inferiority Complex
• Synthesizing and Screening Thousands of Candidate Compounds Constitutes Undue Experimentation
• Marking Your Territory: When Patent Claims Include Trademarks, Part 2
• Setting the Standard for Claim Drafting
• Oral Arguments in Peter v. NantKwest Suggest History and SCOTUS Favor Applicant’s Position that Attorneys’ Fees Are Not “Expenses”
• Design Patent Infringement is a Matter of Appearance and Appearances
• Hope is not Enough to Create a Reasonable Expectation of Success
• When They Came for My Software and Medicine, I did Nothing; “Monstrous” Law Now Targets Mechanical Arts
• A Lesson in History, and in Particular Who Owns it
• Federal Circuit Reminds PTAB That it Doesn’t Decide Petitions for Certificate of Correction
• Social Media is Still Media: Why Smarter IP Management Includes Social Media Management
• Campbell’s Primary Reference in Design Patent Challenge was Mmm Mmm Good
• Board Misreads Features of the Claims, Fails to Appreciate a Technical Solution to a Technical Problem
• Federal Circuit Holds that a Basket is Not a Chair
• Objective Indicia of Non-obviousness Supported PTAB’s Finding of Non-obviousness
• Celebrating Labor Day in Patents
• Trick Question: How Many Utility Patents has the USPTO Issued?
• Protect Your Intellectual Property or You’ll Lose Your Shirt
• Patent Eligibility Can be Determined on the Pleadings, Provided Claim Construction is Not at Issue
• Liberal Application of Relation Back Doctrine Saved Infringement Claims from Being Time Barred
• Any Compound May Look Obvious Once Someone Has Made it, But Federal Circuit Rejects Convoluted Obviousness Argument
• Board Erred in Failing to Apply § 112, Paragraph 6 to Mechanical Control Assembly
• Arguments Regarding Enablement Confirm Narrow Scope of Claims
• Merely Tangential Exception to Prosecution History Estoppel Saved Inartful Amendment from Barring Infringement by Equivalents
• One Applicant Gets his Registration, but all Trademark Owners may be F-U-C-T
• Form-seekers and Non-disclosure Agreements
• Does Your Trademark Have a 401(k)?
• Infringement was a Matter of Degree
• Lack of All Substantial Rights Deprived Plaintiff of Statutory Standing, But Not Article III Standing
• We Shall fight in the Fields and in the Streets, We Shall Fight in the Hills; We Shall Never Surrender.
• Detailed Explanation and Corroboration Made “Sham Affidavit” Doctrine Inapplicable
• Trademark Licensees Keep Their Rights When Their Bankrupt Licensors Reject the Licenses
• The Written Description Must Provide More than A Mere Wish or Hope that the Invention Would Work
• Patent’s Description Was Inconsistent with Patentee’s Claim Construction
• Another IPR Petitioner Had No Standing to Appeal; Does Estoppel Apply to Such Petitioners?
• Lack of Reasonable Expectation of Success Meant Claims Weren’t Obvious
• Wake up and Smell the Coffee: Competing Rights in selling “Compatible” Products
• Prior User Defense Protects Trade Secret Owners Whose Secret is Patented by Another
• FDA Skepticism Supported Non-obviousness
• Use in Commerce for Trademark Infringement is Different than Use in Commerce for Registration
• 3 CBMs Hit Their Targets
• Federal Circuit Gives a Master Class in Claim Construction
• Federal Circuit holds PTO to “Reasonably Continuous” Diligence rather than “Continuously Reasonable” Diligence Standard
• A Fine Specimen of a Mark
• When There is a Dispute Regarding the Proper Scope of the Claims, the Court must Resolve that Dispute
• Great Expectations: An Expectation of Success is Needed to Make Invention Obvious
• Supreme Court Clarifies Two Small but Significant Copyright Issues
• Invention that Can “Result in Life Altering Consequences” is Laudable but Still Abstract
• Complaint Established Sufficient Facts to Support Claim for Inventorship
• Presidents Day Patents 2019
• Valen-tech: Patents for Valentine's Day
• Trademark Color Test: What Do You See?
• Abandoning Infringing Conduct Caused Loss of Standing to Appeal IPR
• Wipe that Smile Off Your Face, Cookie
• Groundhog Tech
• Brrr! Patents for Cold Weather
• USPTO Cannot Reduce PTA for Time Where Applicant Could Not Act
• Anticipation is the Epitome of Obviousness
• Working Backwards with the Benefit of Hindsight Does not Render Compound Obvious
• Everything Old is New Again
• If a Sale Occurs in a Forest and No One is There to See it, is it Still a Sale? Yes.
• Our Own Patent Law Oddities
• Advertising Doesn’t Cost, It Pays (Unless You’re Not Careful)
• Federal Circuit Remands WesternGeco’s Damaged Damages Case
• PTAB Reconsideration Did Not Violate Due Process
• Employee Agreements Revisited
• Eight Simple Rules for Developing Your Mobile App
• New Year’s Resolutions for Your Intellectual Property
• Happy New Year!
• Patent of the Day: December 31
• A Patent on Games? No Dice.
• The “State” of Embodiments in Design Patents
• Window into the Past
• Exceptional Does Not Mean “Wrong” — Otherwise Every Case Would be Exceptional
• Collateral Estoppel Exposes the Failure to have Legitimate Plan B
• Petitioner is Entitled to Remedy Against Defaulting ITC Respondents
• C&D Letters Sufficient to Establish Personal Jurisdiction
• Normal Double Patenting Rules Don’t Apply When the Patents Straddle the URAA
• Judicially Created Double Patenting Does Not Limit Statutory Patent Term Extension
• Personal Jurisdiction in a DJ Action Must be based on Intentional Conduct Directed at the Forum
• Reasonable Royalty Cannot Include Non-Infringing Activities
• Software Can Make Non-Abstract Improvements to Computer Technology
• TC Heartland/Micron Free Oath from the Eastern District of New York
• Lustron Houses: The Home of the Future, Patented in 1947
• Will Netflix have a Devil of a Time Defending Suit Brought by Satanic Temple?
• Fractional Patents
• The Village (Patent) People
• Game of Groans: HBO Files Trademark Opposition Against Game of Thorns
• Beauty is in the Eye of the Beholder, not the Fee Holder
• The Board May Consider Non-Prior Art Evidence in Considering the Knowledge, Motivations, and Expectations of a PHOSITA Regarding the Prior Art
• District Court Did Not Rely on Flawed Obvious to Try Rational
• Injunction Vacated; Defendants Free as a Bird to Distribute Film about Lynyrd Skynyrd Plane Crash
• Details Save Claims from Invalidity Under Section 101
• Primers and the Use of Naturally Occurring Position-Specific Signature Nucleotides are Patent Ineligible
• Federal Circuit Agrees that CORN THINS and RICE THINS are Least Merely Descriptive
• Beyoncé v. Feyonce — If Enough Consumers Get the Joke, There May not be a Likelihood of Confusion
• (Prior) Art Masterpieces
• The Real World is Irrelevant in Judging the Similarity Between DETROIT ATHLETIC CO. and DETROIT ATHLETIC CLUB
• Do Over — Different Evidence and Different Evidentiary Standard Allow IPR to Reach Different Conclusion of Validity than ITC
• Expert Testimony Critical to Determining Meaning of Prior Art to a PHOSITA
• Clearly Defining A Term Without Providing Any Way to Determine When it has Been “Optimized” as Claimed Dooms Claims Under 112
• Petitioner Bears the Ultimate Burden of Persuasion With Respect to Real Party in Interest
• Blocking Patent Can Explain Long-Felt But Unmet Need, Reducing Importance of Objective Indicia of Nonobviousness
• Just Because Seldom was Heard a Discouraging Word Did Not Mean The Invention Was Obvious
• “Capable of” Construction (Rather than “Configured to” Construction) Dooms Apparatus, but Not Method Claims
• Federal Circuit Remands After Patentee Failed to Disclose Priority Application to Standards Organization
• Don’t Try This at Home Boys and Girls — The TTAB is no Place for Amateurs
• Doing New and Useful Things Still Isn’t Enough to Meet 35 USC §101
• You Can’t Sidestep Nonappealability of Institution Decisions with Mandamus
• Federal Circuit Vacates Another IPR as Time-Barred
• What Has Been Served Cannot Be Unserved: §315(b) Time Bar Applies Even if the Suit is Subsequently Withdrawn
• If the Drawing is Sufficient to Determine Infringement, it Complies with 35 USC §112
• Change In Construction of Claims from Petition Required Board to Allow Petitioner to Respond
• Trademark Registration – A Vehicle to Protection
• Undue Process: You Can Ask the USPTO to Review a Patent, but if They Blow it, You may be Powerless to Appeal
• District Court Improperly Imported Limitations into the Claims
• Displaying Data is an Even More Abstract Idea Than Patent Eligibility
• Tribal Immunity Does Not Save Allergan’s Patents from IPR
• Be Careful What You Wish For: Broad Claim Construction Sought by Patent Owner Results in Invalidity for Lack of Enablement
• What’s Zup? Water Board Patent Obvious; Secondary Considerations Too Weak to Show Otherwise
• Distribution of Catalogs at a Tradeshow Was Accessible with Reasonable Diligence, and was a Printed Publication Under 102(b)
• Materials Available Online, Identified in Federal Register Before the Critical Date Were Printed Publications
• Bad Vibes in Kim Kardashian West Trademark Row
• Unreasonably Broad Construction Unlimited by the Specification, Resulted in Incorrect Finding of Anticipation
• Federal Circuit Finds No Error in District Court Determination the Claimed Invention was not Obvious
• A Chicken in Every Pot, A Patent in Every Portfolio
• No-Harm, No-Foul: Board Denies Sanctions Where Patent Owner Suffered No Harm from Alleged Cross Examination Overreach
• Third Time’s The Charm: Federal Circuit Remands for Third Damages Trial Because Patent Owner Did Not Prove Use of Entire Market Value was Appropriate
• Concrete Allegations that Claim Elements are Not Well-Understood, Routine, or Conventional Prevents Dismissal under Rule 12(b)(6)
• TTAB Scores a ZERO in Evaluating Genericness and Acquired Distinctiveness
• Have a Happy and Safe Fourth of July
• Adidas and Nike Race Back to PTAB to Address Non-Instituted Grounds
• Board’s Decision Did Not Change Theories Simply Because it Used Different Language Than the Petition
• One of Ordinary Skill Would not Blindly Incorporate One Reference’s Exact Methodology into the Other
• Board Failed to Properly Consider Circumstances of Disclosure When It Determined They Were Not Printed Publications
• Federal Circuit Affirms Non-obvious Holding in “Close” Case, Declining to Disturb Factual Findings on Motivation
• No Littoral Infringement; Plaintiff Still Waiting for its Ship to Come In
• 10**7 — Reaching U.S. Patent No. 10,000,000
• June 14, 2018 is Flag Day
• Buc-ee's Beaver Logo Infringed by Competitor’s Alligator Logo
• The Novelty of an Optical Isomer is not Negated by the Prior Art Disclosure of its Racemate
• Printed Matter Cannot Be a Patentable Limitation Unless it is Functionally Related to the Claim Elements
• Ice Cream Brain Freeze
• Plaintiff Pleads Plaid Pattern Plagiarized
• The Old “Practicing the Prior Art” Defense
• Wash Your Hands Before Going to Court; Unclean Hands Wipe out Recovery for Valid and Infringed Patents
• Inter Partes Review: If We’re Going to Have Them Then It’s All or Nothing
• What the PTO Giveth, the PTO Can Taketh Away. Inter Partes Reviews are Constitutional. Get Back to Work.
• Counting Votes is an Abstract Idea, and Simply Automating the Process Doesn’t Make it Patentable
• Neither Express Agreement, nor Implied Agreement, Clearly Deprived a Putative Inventor of Standing to Challenge Inventorship of a Patent Under 35 USC 256
• Lack of Corroboration Caused Claim of Prior Invention to Fail
• Hold the Mayo: Specific Method of Treatment for Specific Patients using a Specific Compound at Specific Doses to Achieve a Specific Outcome Is Patent-Eligible Subject Matter
• Claim Covered at least the Depicted Enantiomer
• PTAB is Not Bound by Prior Litigation-Based Claim Constructions Provided They are Appropriately Considered
• “Ordinary Creativity” is no Different Than “Common Sense” and Requires Explanation
• Presenting IPR Arguments Too Late is, Well, Too Late
• “BRI.” You Keep Using That Word. We Do Not Think it Means What You Think it Means.
• Written Description is Met by What the Disclosure Reasonably Conveys to Those Skilled in the Art
• Collateral Estoppel Applies in IPRs Where the Issues are the Same
• Stare Decisis: Previous Claim Constriction Prevented Finding of Infringement
• The Purpose of a Motion to Dismiss is to Test the Sufficiency of the Complaint, not to Decide the Merits
• Even Under a Narrower Construction Because of Disclaimer, The Board was Correct that the Claims were Obvious
• Happy 209th Birthday, President Lincoln
• Board's Construction of the Claims was Unreasonably Broad and Inconsistent with the Specification
• Board’s Obvious Analysis Improperly Relied Upon Hindsight
• Walker Process Monopolization Claim Does not Depend upon Resolution of a Substantial Question of Federal Patent Law
• Anda Your Patent is Not Infringed
• Process Limitations are Presumed to Impart Structural Limitations, Even Where it is not Clear What those Limitations Are
• Trademark Law Offers Scant Protection When Bad Things “Happen” to Good Marks
• Incorporation by Reference (May Have) Saved the Day
• Second and Third Bites at the Apple; Subsequent IPR Losses undo IPR Win
• Computer Interface Was Not an Abstract Idea
• Drag Things Out? Disclaimer Creates Estoppel.
• The Ultimate Reasonable Royalty Award Must be Based on the Incremental Value that the Patented Invention Adds
• Software Innovations Make Non-Abstract Improvements to Computer Technology
• Patent Prosecution Word of the Day: "Infundibuliform"
• Director’s Time-Bar Determinations under § 315(b) are not Exempt from Judicial Review
• The Board Says that IPRs are Adjudicatory Proceedings — What will the Supreme Court Say?
• About “About”: “Less Than About 3%” Includes 4%
• No Regulations for Love and Vice Versa
• Anticipation Analysis Indisputably Allows for Some Flexibility; Substantial Evidence Still Supports Finding of No Anticipation
• If You Try to Hide Prosecution Conduct, Then the Court will Presume You Had Something to Hide
• You Have Goat to be Kidding Me
• Aqua Holds Water; Board’s Denial of Motion to Amend Vacated Because Board Improperly Put Burden on Patent Owner
• Whether Third Party Acts are Attributable to Infringer in a Divided Infringement Situation is Question of Fact
• Dear Santa ... A Patent Law Wish List for 2018
• Federal Circuit Affirms Board on Claim Construction, No Anticipation, and Nonobviousness
• Immoral and Scandalous Matter are as Registrable as Disparaging Matter; The Principal Register is FUCT
• No Need to be your Own Lexicographer
• The Marking Requirement is Alive and Well; Don’t Forget about Virtual Marking
• Patent Owner Has Burden to Prove Marking Once Infringer Identifies Unmarked Products
• Copyright Claim from Out of the Blue
• Copyright Does Not Protect Ideas, Only Expression
• Obviousness v. Anticipation: That Which Doesn’t Disclose Still Could Teach
• Intervening Rights Apply When There Is a Product that Infringes the Original Claim that Does Not Infringe the Amended Claim
• Breadth is not Indefiniteness; If the Relevant Skilled Artisan has Reasonable Certainty as to What is Covered the Claim is Not Indefinite
• Perhaps Out of Guilt, the Federal Circuit Grants Mandamus to Permit Venue Challenge
• Not All Pirates are in the Caribbean
• Amendment of Claims in Parent Application Do Not Apply to Continuation Claims that do not have the Amended Language
• Is the Reproduction of a Branded Product in a Depiction of Real Life an Infringement?
• He Who Lives by the Suit, Dies by the Suit
• Federal Circuit Endorses the Use of a Claim Preamble (Which Isn’t Even a Limitation, Right?) to Find the Claim Was Directed to an Abstract Idea
• Expert Testimony on Lack of Motivation Won the Battle, but Lost the War
• Functional Language in an Apparatus Claim does not Always Make Claim Indefinite
• Objective Indicia Not Enough to Overcome Weight of Evidence of Obviousness
• Judge Linn in Dissent Reveals that Alice has No Clothes
• Return to Sender: Secure Mail Patents Claim Abstract Idea
• The Board Misses the BRI with a Construction that was too Narrow
• Ungrammatical Language Not Ambiguous in View of Specification as a Whole
• Antigens Don’t Describe Antibodies, and the Value of Post-Priority Date Activity on Written Description and Enablement
• It May Have Just Gotten a Little Easier to Amend Claims in an IPR
• Hypothetical Claim in Doctrine of Equivalents Analysis Cannot Narrow Claim Scope
• Broadest Reasonable Construction is Not One Not Precluded by the Specification, but is One Consistent with the Specification
• Employee Residence is Not the Defendant’s Regular and Established Place of Business
• Corroboration of the Inventor is Necessary, but Evaluated Under a Rule of Reason, Considering the Totality of the Circumstances
• Response Arguments Do Not Have to Be Preemptively Addressed in the Petition or Institution Decision
• Accused Trade Secret Thief Failed to Make Uber Showing Required for Writ of Mandamus
• Subject of Internal Investigation Could not Block Disclosure of Report to Third Party
• Claims Can’t Be Construed Contrary to Specification, and then Invalidated for Being Contrary to Specification
• Foreign Suits Involving Foreign Patents Do Not Create a Case or Controversy in the U.S.
• When Your Background Dooms The Invention
• Objective Indicia Were Properly Considered and Did Not Save Cookie Package Patent from Summary Judgment of Obviousness
• Mere Quantification of the Results of a Known Process is Not Patentable
• Dance Like No One is Watching; Email Like it’s Being Read Aloud at your Deposition
• Knowledge of Ex-Employees Working for Accused Infringer Makes Inducement Claim Plausible
• At The Bench: 2017 Mid-Year Case Review
• Follow-on IPR Petitions are Unfair to Patent Owners and an Inefficient Use of the Process
• Out-of-CTRL C
• Federal Circuit’s Amicus Brief in Oil States
• Not Every Instance of an Agency Reaching Inconsistent Outcomes in Similar, Related Cases will Necessarily be Erroneous
• “A Reasonable Adjudicator Would have Wanted to Review this Evidence.”
• Preemption is “Part and Parcel” of the §101; But Lack of Preemption Does Not Necessarily Establish Patentability
• Routine Optimization Cannot Make Invention Obvious Without A Reasonable Expectation for Success
• Branding Life
• A Foolish Consistency may be the Hobgoblin of Little Minds, but it is the Hallmark of a Successful Applicant/Patent Owner
• You Can Ignore Claim Language As Long As it is Before the Colon
• Clarity in §101: Half of the Judges Considering the Question Find Plaintiff’s Computer Memory System to be Patentable Subject Matter
• Check Each Link in the Chain of Title; The Time to Find Out Your Assignor Does Not Exist is Before you Sue
• When is July 4 this year? When is North Carolina’s FIRST TUESDAY Lottery? and Descriptiveness
• Federal Circuit: The Second Circuit Would Agree with the Third, Fourth, Fifth, Sixth, and Ninth Circuits that Octane Fitness Applies to Lanham Act Claims
• Wait Your Turn: No Exception to Final Judgment Rule for Appeal of Denial of Motions to Compel
• The Sport of Kings: Federal Circuit Affirms $3.9 Million Fee Award for Two Week Trial on Patent Ownership
• will.i.am: registered.u.r.not
• Where in the World ...
• Board Was Mixed Up Over Blender Patent
• Celebrity Endorsement Provokes Patent Infringement Claim
• Can Unexpected Results Make the Obvious Non-Obvious?
• Karma’s a ^$#*! – Sanction for Litigation Misconduct Results in Finding of Intent to Deceive the USPTO
• Hutchinson Revisited Surname + Merely Descriptive Term May or May Not Be Registrable
• Unexpected Results of an Obvious Process are Non-obvious
• Hey Boo-Boo, Defining Terms in the Specification is a Pic-i-nic
• BRI-Proof Your Claims
• Patents Don’t Sue People, People Sue People
• Lack of Clarity for Reason for Denying Permanent Injunction Results in Remand
• Gotta Wanna Needa Getta Hava Injunction
• PTO Erred by Not Identifying Algorithm Corresponding to §112, ¶ 6 Element Before Invalidating Claims
• Make Patents Great Again (or at least Make them STRONGER)
• Weak Infringement Position Makes Troll-like Behavior Exceptional
• Independence Day Patents
• Reasonable Expectation of Success, Not Absolute Predictability, is All that is Required for Obviousness
• Written Description Must Support Claims; Not Exclude Alternatives
• Gnireenigne
• Give a Man Cupcake Sushi, and He’ll Have Dessert for a Day; Teach a Man to Make Cupcake Sushi, and He’ll Rip You Off
• Lack of Enablement in Provisional Application Results in Loss of Priority
• Oh, No, Toto, An Interactive Website Won’t Get Us to Kansas
• An Implied Contract Can Turn You “Inside Out” — Remember the Non-Confidential Disclosure Agreement
• Providing a Service Alone is not Contributory Infringement
• The Board can Rely on a Party’s Arguments in an IPR, as Long as it Explains Why
• General Statements in Petition and Institution Decision Did Not Give Patent Owner Fair Notice of the Grounds of Invalidity in the Final Written Decision
• Estoppel in CBMR is Both Reviewable and Determined on a Claim by Claim Basis
• Ownership of a Trademark Follows Use
• A Cease and Desist Letter Alone Does not Establish Personal Jurisdiction
• “Means” Does Not Always Mean “Means Plus Function”
• Promise to Arbitrate Claims “Arising Under” is Narrower than Promise to Arbitrate Claims “Relating to” Agreement
• Denial of Attorneys’ Fees Reversed because District Court Conflated Rule and 35 USC 285
• What Would the Perfect Employee Agreement Look Like?
• Patent Rights are So Anemic, They’re Exhausted on First Sale
• The Right to Seclusion of Personal Facts vs. Public Opinion
• There are Few Absolutes In Likelihood of Confusion; Apparently Fame isn’t one of Them
• Drafting Broad Claims to Cover a Competitor is for Naught if the Specification Doesn’t Support Them
• Supreme Court Reaffirms Fourco and Limits Where Corporations Can Be Sued for Patent Infringement
• AIPLA Proposes New 101 to Save the Patent System
• Lawsuit Attempts to Finish the Job that the Iceberg Started
• Function/Way/Result Test Causes Headaches in Chemical Cases; Substitute Insubstantial Differences Test
• One Year of the Defend Trade Secrets Act
• Failure to Provide an Unconditional Covenant Not to Sue Kept Case and Controversy Alive
• In Determining Whether a Case “Stands Out,” It was Not Improper to Consider Patent Cases Generally
• Patent Owner Statements During an IPR Disclaimed Claim Scope
• Not Necessarily Unfair to Reply on Patent Owner’s Submissions in Obviousness Finding, but Board Failed to Provide Adequate Explanation
• Written Description Lacking Where Nothing in the Specification Suggests Inventor Contemplated Claimed Invention
• Merely Because Petitioner Changes its Mind is not Enough to Stop Inter Partes Reexamination
• Semicolons Strongly Indicate Each Step is Separate and Distinct; Confuse Most Non-Patent Lawyers
• Estoppel Under 317(b) Always Applies on a Claim by Claim Basis, Just Like the Statute Says
• What’s the Flap Over the Unicorn Frappe?
• Studios Fire Back: Fictional Publication Depicted in a Movie is Privileged Expressive Use
• Visual Artists Rights Act Review
• Lack of Proof That Infringement was "But For" Cause of Lost Sales or Price Erosion Defeats Permanent Injunction
• Just Because You Own a Copy Doesn’t Mean You Own the Copyright
• Fair Use is Not Always Fair
• A Claim to an Abstract Idea does not Automatically Become Eligible Merely by Adding a Mathematical Formula
• Two Heads May Be Better Than One, But Six Heads Won’t Help You Market Your Bar
• Transformative Use or Infringement
• §317(b) Resurrects Claims Invalidated in Reexamination, That Were Found Not Invalid in Litigation
• Non-Trademark Use is a Non-Infringing Use
• IPR Estoppel: Ripe for Gamesmanship?
• Little Words That Can Make a Big Difference: i.e. Versus e.g.
• Issue Preclusion: Patent Owner Does Not Get a Do Over to Assert the Claims Against Similar Products
• Failure of Licensee to Mark May Upend $15.7 Million Damage Award
• An Omitted Inventor Can’t Correct Inventorship of a Patent Owned by a Government Agency
• Just Because the Board Didn’t Say It, Doesn’t Mean that the Board Didn’t Think It
• Don’t Exalt Slogans over Real Meaning; Find the Claim Construction that Naturally Aligns with the Specification and Prosecution History
• “Begun, the Clone War Has”
• Dependent Claims Were Anticipated While Independent Claims Were Not
• Soft Kitty, Warm Kitty, Little Furry Plaintiff ...
• Prior Art that Must be Distorted from its Obvious Design Does Not Anticipate
• You Can’t Fake Confusion: “STEAK” is different from “FRESH”
• Variations on a Theme
• Inventorship Claims That Took $8 Million to Defeat Were Not “Exceptional”
• Two Bits, Four Bits, Six Bits, a Dollar, Cheer Uniforms are Copyrightable, Stand Up and Holler!
• Patent Owner Cannot Create New Claim Construction Issues After the Jury Verdict
• Three Stripes and You’re Out
• An Objectively Reasonable Case Can Still be Exceptional
• Among Other Things, the Federal Circuit Affirms Viability of Assignor Estoppel
• To The Relief of Sergeants Everywhere, Forever 21 Challenges Adidas’ Three Stripe Marks
• IPR – The Odds Still Favor Petitioners, and Greatly Favor Smart Petitioners
• Oh Diehr Me, Another Case With Patent Eligible Subject Matter
• Trademark Scammers Abound
• Don’t Take Your Eye Off the Ball or Your Patent Assignment Will End Up in the Dirt
• It Was Over Before the Fat Lady Sang; Collateral Estoppel Applies to Partial Summary Judgment under §101
• Prior Art Preference for an Alternative is Not Enough to Teach Away
• Complaints About Claim Construction Irrelevant Without a Showing of How it Would Make a Difference
• Fictional Magazine Accused of Real Infringement
• Disavowal is Not Limited to What is Necessary; A Patentee May Give Up More than Necessary
• All Trade Secrets Must Be Secret; But Not All Secrets are Trade Secrets
• The Song says 2 out of 3 Ain’t Bad; The Supreme Court says 1 is not “Substantial”
• Covered Business Method Patent: You Keep Using Those Words ... We do not Think They Mean What You Think They Means
• Presidents Day Patents
• Hindsight Cannot be the Thread that Stitches the Prior Art Patches into the Claimed Invention
• Someone Forgot to Tell the PTAB That There is No IPR Estoppel
• Just Because One Could Doesn’t Mean One Would
• I ♥ Patents
• The Removal of Matter from the Provisional Application is Significant to the Interpretation of the Claims in the Non-Provisional Application
• Strong Presumption that Markush Claim Elements are Closed to Additional Elements
• It’s a Grand Old Flag, but Should it Be in Your Ad?
• Demand Letters Protected by the Noerr-Pennington Doctrine
• Getting a Copyright Registration in Advance Not Only Speeds Enforcement, but it Improves Your Remedies
• Selecting a Mark
• Communication of an Idea that Makes the Claimed Invention Obvious is Not Enough to Show Derivation
• It’s a Good Idea to Actually Own the Patents you Sue on
• Are All Troll Cases Exceptional?
• Instructions Induced Prescribing Physicians to Infringe
• An IPR Does Not Necessarily Have Standing to Appeal if it Loses
• When it’s Over, it’s Over
• Scams, The Biggest Threat to Patent and Trademark Owners
• Broadest Reasonable Interpretation Does Not Include Legally Incorrect Interpretation
• Louis Vuitton Left Holding the Bag
• Biting the Bulleit
• When Imitation Goes Beyond Flattery
• Invention Must Inevitably Result to be Anticipated by Inherency
• “Unfamiliarity” with Federal Court Practice Not Enough to Avoid Default
• Vitiation has not be Vitiated
• “A Finding of Induced Infringement Requires Actual Inducement”
• If the PTAB Doesn’t Say Why the Invention is Obvious, the Federal Circuit Has Nothing to Affirm
• Injunction Against Dismissed Party Remanded to Make Sure it Had its Day in Court
• Supreme Court Vacates $399M Design Patent Damage Award, Finding an Article of Manufacture for Damage Purposes is Not Necessarily the Entire Product Sold
• Double-Checking the PTAB
• Clothes Make the Man; They Sometimes Make the Trademark
• The Difficulty in Implementing an Idea Does Not Mean the Idea is Not Abstract
• When Trademark Registration is a Nice Gesture
• Employers Don’t Own Your Brain; They Merely Rent it
• A Patent Does Not Become a CBM Patent Because its Practice Could Involve a Potential Sale of a Product or Service
• Make IP Great Again
• Federal Circuit to PTAB: “Play Fair.”
• Federal Circuit Gives the Board a Lesson on Hearsay
• Undersecretary Nelotsky is Alive and Well!
• The Search for an Abstract Idea Test Continues to Elude; Federal Circuit Goes Old School with Common Law Analysis of Precedent
• Losing Control of CTRL V
• Congress Made a Rock So Heavy that the Courts Can’t Pick it Up
• qech wej QaD trademark nIH (Trademarks Don’t Protect Ideas)
• Substantial Evidence Supports Determination of Reasonable Expectation of Success
• Claims for a New Abstract Idea are Still Claims to an Abstract Idea, Invalid under §101
• Disavowal By Description, Disparagement, and Argument Limit Claims
• No Disclaimer Found When Statements are Viewed in Context of Claims Pending at the Time They were Made
• System and Method Claims Directed to Abstract Idea Properly Bounced on 12(b)(6) Motion
• New TTAB Rules Coming in January 2017
• Internal Fight Over Role of Appellate Court Reveals Substantial Difference of Opinion over Substantial Evidence at Federal Circuit
• Anything You Say Can and Will be Used Against You in a Court of Law
• I ♥ TTAB
• If You Can’t Say Anything Nice About the Prior Art, Don’t Say Anything at All
• When Does Meat Tenderizer Stop Working?
• Friday Musings: Newton’s Laws of Claim Construction
• Judge Mayer Finds that Section 101 Bars Patents on Software
• Even Prior to Abrogation Form 18, Joint Infringement Pleadings Had to Meet Iqbal and Twombly
• Gerundtology
• Let the Punishment Fit the Crime
• Function Claim Language Shows That Claims are Directed to Abstract Idea, Not a Concrete Technical Innovation
• Stripped of Excess Verbiage, Claim Directed to Streaming Out-of-Region Media to Cell Phones in an Abstract Idea
• Structural Element Does Not Make Method Claims Indefinite
• It was Error Not to Consider Secondary Considerations, But They Wouldn’t Have Made a Difference
• Federal Circuit Remands Issue of Enhanced Damages for Determination Whether this was an Egregious Case of Misconduct Beyond Typical Infringement
• Inherent Disclosure is Sufficient to Support a Priority Claim
• Backgrounds — The Less Said the Better
• Substantial Evidence Supported Infringement of Limitations That Did Not Need Construction
• PTAB Decision to Institute Despite Alleged § 315 Time Bar is Not Reviewable
• Read Our Lips: Not Everything is Abstract
• The Intellectual Property Owner’s Manual
• Claim Narrowed by Specification is Saved from Indefiniteness but too Narrow to be Infringed
• Compliance with PTAB’s Requirements for Motion to Amend Arbitrary and Capricious?
• Broad Original Claims Prevent Invalidity for Lack of Adequate Written Description
• PTAB Misapplied Common Sense in Finding Claims Obvious
• District Court Correctly Added Inventors Who Contributed to at least one Claim Element
• BRI Does Not Apply if Patent Expires Any Time During Reexamination Proceeding
• Federal Circuit Vacates and Remands PTAB Obviousness Determination Not Supported by Adequate Reasoned Explanation
• Sale and Offer for Sale Determined by Where “Substantial Activities of the Sales Transactions” Occur
• Markush Group Closed to Unlisted Elements, but Open to Blends of Listed Elements
• Information is Intangible, so Methods of Manipulating it are Abstract
• Repeated and Consistent Usage, including in Rule 131 Declaration, Defines Term
• Detailed Analysis of Specification and Prosecution History Revealed Meaning of Claims
• Patent Drafters: Leaving Coining to the Mint
• PTO Cannot Raise & Decide Unpatentability Theories Never Presented by the Petitioner
• Where’s My %$^&# Dollar?
• I Win? No Fair!
• Sale of Manufacturing Services Does Not Trigger On Sale Bar Under Pre-AIA §102
• It Ain’t Over ‘Till It’s Over
• And in the Alternative . . .
• The Commercial Marketing Provisions of the Biologics Act are Mandatory
• Not All Processes That Employ Only Independently Known Steps are Unpatentable
• Plausibility vs. Enablement
• Inventive Concept Can be Found in Non-conventional and Non-generic Arrangement of Known, Conventional Pieces
• A Mark Should be Considered a Whole, and not Dissected
• Brexit Stage Right
• A Combination of References Can be Obvious Even it Requires a Bit of Work
• Board Not Limited to Prior Art in the Grounds, as Long as Patent Owner Had Notice
• Halo Recognizes that Not All Infringers are Angels
• Is the Inevitable Disclosure Doctrine Inevitable?
• The Board Cannot Adopt a Surprise Claim Construction
• And That’s Final . . .
• Patent Applicants: Anything You Say Can and Will Be Used Against You in a Court of Law
• Incorrect Position on Infringement is not a Defense to Inducement
• Entitled to Narrow Claim Construction
• Canons of Claim Construction to the Rescue
• Applicant Cannot Bypass the PTAB to get to Federal Circuit
• Consistent Usage and Disclaimer in Intrinsic Record Trump Anything in Extrinsic Record
• “Mountable” Given Meaning Consistent with Specification, and Not Broad Dictionary Definition
• Patent Owner Must Show Patentability Over Art of Record to Amend Claims in IPR
• Jurisdiction Cannot Be Cured Retroactively If Plaintiff Lacked Substantial Rights to Patent When Suit Was Filed
• Federal Circuit Skewers Trademark Applicant
• Reflecting on Design Patents
• Federal Circuit Affirms Exclusion of IPR Reply that Raised New Grounds of Invalidity
• Venue for Patent Infringement Cases is Well Established; a Corporate Defendant can be Sued Wherever it Can be Found
• An Illuminating Discussion About Design Patents
• Principles of Equity: Denying Inventors their Constitutionally Promised Exclusivity
• An Infringement, Divided, May Stand After All
• It is Error to Ignore Functional Structures Entirely in a Design Patent Construction
• It’s Not the Broadest Reasonable Interpretation, but the Broadest Reasonable Interpretation in Light of the Specification
• Where to Protect Trademarks Abroad
• Discoveries Are Not Patentable.
• An Animated Review of Design Patents
• Iconography
• We’ll Say it Again: Redundancy is not Reviewable
• Invalidity Determination Would Not Apply to Reexamination Claims That Did not Exist at Time of Judgment
• Equitable Estoppel Stops NPE From Asserting Patents that its Assignor Failed to Assert
• BRI Should Not Depart from What the Claim Language and Specification so Clearly Mean
• A Plea for a Charitable and Common-Sensical Claim Construction
• Protecting Websites
• If You Want to Contest Jurisdiction, Don’t File a Counterclaim
• PGR, IPR, and CBMPR Rules Amended Effective May 2, 2016
• Preference for Giving Each Claim Term Effect Does Not Overcome Meaning Apparent from the Specification
• Assignor Estoppel is Still A Thing
• Estoppel Does Not Apply to Uninstituted Grounds
• Sometimes the Application of a New Technology is Obvious from the New Technology itself
• ANDA Filings Create Personal Jurisdiction Everywhere
• PTAB Can’t Rely on Anticipation Argument first Made during the Oral Hearing
• While a Nice Place, Canada is not the Best Place to Litigate U.S. IP
• Know When to Fold ‘Em — Games are Unpatentable Abstract Ideas
• Look at the Context, Sometimes “A” means “A”
• If You Can’t Say Something Nice . . .
• The Privileged Few
• The Specification (Including the Title) Narrowed the Scope of the Claims
• Questions About Patent Validity Snuff Preliminary Injunction in Artificial Candle Case
• Broadest Reasonable Interpretation is Must be Consistent with the Specification and the Claims
• Actual Knowledge of a Published Application Can Trigger Pre-Issuance Damage (Quick Put Your Head in the Sand)
• Timing is Everything
• Patent Challenger Loses with Unreasonably Broad Claim Construction
• Regarding Beauregarding
• Share and Share Alike? Not so fast.
• Provisional Applications Narrow Construction of Four Patents, Broaden Construction of Two
• But, Why?
• Know your patent documents
• Cruciform – the Right Word for the Right Shape
• Should You or Any of Your C&D Team be Caught or Killed the Client will Disavow and Knowledge
• Supreme Court to Review Important IPR Questions
• Just Because You Can, Doesn’t Mean You Should
• Fenestrated- the Right Word for the Right Shape
• Court Can’t Change the Claim Construction After a Verdict
• It is Obvious to Vary Result-Effective Variables
• Moniliform – the Right Word for the Right Shape
• On Being a Lexicographer
• Claimed to a “T”
• New Year’s Resolution for a BRAND New Year
• That’s the Way the Cookie Crumbles
• Rugous – the Right Word for the Right Shape
• Method to Screen Equipment Operator for Impairment Not Patent Eligible
• Belief in Invalidity Does Not Prevent Liability for Inducement, Lack of Infringement Does
• Frustoconical: The Right Word for the Right Shape
• Better Protection By Design
• PTAB Incorrectly Determined that Claimed Element was Printed Matter where that Matter was not Claimed for its Communicative Content
• Teaching Away Must Be Apparent from the Art as a Whole, and not Just Isolated Examples
• Companulate – the Right Word for the Right Shape
• Supreme Court Holds Trademark Tacking is a Question, like any Inquiry from the Perspective of an Ordinary Purchaser or Consumer, Should be Decided by the Jury
• Supreme Court Endorses De Novo Review of Claim Construction, But Holds that Subsidiary Facts Underlying Claim Construction are Reviewed for Clear Error
• A Special Brand of Claim Drafting: When Patent Claims Include Trademarks
• USPTO Proposes Amending Rule 1.56 To Define Materiality In Accordance With Therasense

BOOKS

• “Evaluating and Addressing the Complexities of Various Intellectual Property Cases,” Co-authored by Geoffrey Aurini and Bryan Wheelock, Litigation Strategies for Intellectual Property Cases, 2015 Edition

In addition to his practice at Harness IP, Bryan is an Adjunct Professor at Washington University School of Law and Washington University School of Engineering.

Awards & Distinctions

• Best Lawyers, Litigation – Patent “Lawyer of the Year” in St. Louis, 2021
• Best Lawyers, Trademark “Lawyer of the Year” in St. Louis, 2015
• Best Lawyers, Patent Law and Trademark Law, 2011-2024
• Best Lawyers, Copyright Law, 2018-2024
• Best Lawyers, Litigation – Intellectual Property and Litigation – Patent, 2019-2024
• JD Supra, Reader’s Choice Award, 2017-2018, 2022
• Intellectual Asset Management (IAM), “Patent 1000,” 2021-2023
• Managing Intellectual Property, “IP Stars,” 2014-2022
• Missouri Super Lawyers, 2011-2021
• World Trademark Review, “WTR 1000,” 2021-2022
• Lexology, Legal Influencer for IP – US, Q1, Q2 2020
• St. Louis Magazine, “Best Lawyers,” 2012

Memberships

• American Intellectual Property Law Association
• Bar Association of Metropolitan St. Louis
• International Trademark Association, Trademark Reporter Committee