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Tag Archive: K&L IP News

‘Means’ Or Not ‘Means’, That Is The Question

■ John D. Leighton The presence or absence of the word “means” in a claim has long been accompanied by one of two comp-lementary presumptions. Using the word “means” in a claim element creates a rebuttable presumption that §112, para. 6 applies and means-plus-function claiming occurs. Conversely, failure to use the word ‘means’ also creates a rebuttable presumption — this time that §112, para. 6 does not apply. Since 2004, however, these presumptions have been asymmetric ones. The Federal Circuit first established this asymmetry with the Lighting World, Inc. v. Birchwood Lighting, Inc., 382 F.3d 1354, 1358 (Fed. Cir. 2004)...

K&L Welcomes New Associates

Kinney & Lange P.A. is pleased to welcome John Fandrey, Tony Salmo, Adam Szymanski, and Lea Westman as associates. John Fandrey graduated from University of St. Thomas School of Law. John has an under-graduate degree in Civil Engineering from the University of Missouri – Columbia. Anthony (Tony) Salmo graduated from William Mitchell College of Law. Tony has an under-graduate degree in Mechanical Engineering from the University of Minnesota. Adam Szymanski graduated from William Mitchell College of Law. Adam holds an under-graduate degree in Chemical Engineering from the University of Wisconsin. Lea Westman graduated from the University of St. Thomas School...

The Federal Circuit’s Second En Banc Decision In Akamai Technologies v. Limelight Networks

■ John P. Fandrey In August of 2015, the Federal Circuit Court of Appeals issued its second en banc decision in Akamai Techs., Inc., v. Limelight Networks, Inc., Nos. 2009-1372, 2009-1380, 2009-1416, 2009-1417 (Fed. Cir., August 13, 2015), a case which began in 2006. The underlying issue is whether there is liability for so-called “divided” or “split” infringement involving multiple actors. The Federal Circuit explained that in patent infringement cases the acts of one actor may be attributed to another where the other “conditions participation in an activity or receipt of a benefit upon performance of a step or steps...

AIA Brings Welcome Change to PCT Filing

Thanks to the America Invents Act (AIA), the USPTO may serve as the receiving office for PCT applications by foreign inventors if the “applicant,” including a commercial assignee of the invention, is a U.S. resident. The PCT allows “applicants,” defined as “any natural person or legal entity,” to file PCT applications in the country of which they are a resident or national. Prior to the AIA, the USPTO recognized only inventors as applicants and, therefore, PCT applications with U.S. assignees but without U.S. inventors had to be filed with the country of nationality or residency of the inventor or with...

Recent Patents | Newsletter Vol. 7, Issue 2

Kinney & Lange P.A. files hundreds of new patent applications each year in a wide variety of technology areas. Below are a few recently issued U.S. patents for which the firm is listed as the legal representative.   8,899,872 “Thermoplastic die box with quick height adjustment mechanism” 8,899,916 “Torque frame and asymmetric journal bearing for fan drive gear system” 8.899,910 “Air turbine starter and method for venting without loss of oil” 8,916,075 “Method of making a reinforced resin structure” 8,960,739 “Multi-functional doorstop tool” 8,963,735 “Turbine meter pre-scaling terminal block electronics” 8,960,236 “Bypass piston port and methods of manufacturing a bypass...

SUPREME COURT RULES TRADEMARK TACKING IS A QUESTION FOR THE JURY

■ Andrew R. Swanson In Hana Financial, Inc. v. Hana Bank, 135 S.Ct. 907 (2015), a unanimous Supreme Court held that the determination of whether two trademarks may be “tacked” for the purpose of determining priority is a question for the jury.   Prior to Hana, circuit courts were split as to whether tacking was a question of law for the judge, or a question of fact for the jury. While the Court determined that the jury is in the best position to determine if the tacking doctrine applies, the Court did leave open the judge’s ability to determine the tacking...

B&B HARDWARE: TTAB PROCEEDINGS CAN CREATE ISSUE PRECLUSION

■ Andrew W. Werner On March 24, 2015 the U.S. Supreme Court decided in B&B Hardware, Inc. v. Hargis Industries, Inc., 575 U.S. ___ (2015); holding that when trademark usages adjudicated by the Trademark Trial and Appeal Board (“TTAB”) are materially the same as those before a district court, issue preclusion should apply so long as the other ordinary elements of issue preclusion are met. B&B Hardware stems from a 1996 trademark registration by Hargis Industries, Inc. (“Hargis”) for the SEALTITE mark for “self-piercing and self-drilling metal screws for use in the manufacture of metal and post-frame buildings.” B&B Hardware,...

Recent Patents | Newsletter Vol 7, Issue 1

Kinney & Lange P.A. files hundreds of new patent applications each year in a wide variety of technology areas. Below are a few recently issued U.S. patents for which the firm is listed as the legal representative.   8,856,708 “Multi-tier Field-Programmable Gate Array Hardware Requirements Assessment and Verification for Airborne Electronic Systems” 8,852,233 “Apparatus for the Correction of Skeletal Deformities” 8,812,253 “Fluid Flow Measurement with Phase-based Diagnostics” 8,884,606 “Inverted Magnetic Isolator” 8,843,348 “Engine Noise Monitoring as Engine Health Management Tool” 8,872,522 “Frequency Based Fault Detection”

SEMINAR RECAP | Newsletter Vol 7, Issue 1

Kinney & Lange held its annual Seminar on June 13, 2014 in Minneapolis, entitled “Intellectual Property: Advanced Topics for Businesses in a Changing Legal Landscape”. The Seminar covered a wide range of topics, including various intellectual property law developments at the U.S. Supreme Court, a contemporary discussion of patent trolls, and a guest panel discussion on the topics of post grant proceedings in the U.S. and opposition proceedings in Europe. A special thank you to our in-house counsel panel, pictured above from left to right, Carolyn Eckart, IP Counsel at St. Jude Medical; Andrew DeMaster, IP Counsel at The Valspar Corporation;...

FTC REACHES SETTLEMENT WITH MPHJ

■ Nicholas J. Peterka On November 6, the Federal Trade Commission and MPHJ Technology Investments LLC agreed to settle FTC charges alleging MPHJ used deceptive practices and phony legal threats. The settlement prevents MPHJ and its law firm, Farney Daniels, P.C., from making deceptive representations when asserting its patent rights, with further deceptive conduct bringing with it a penalty of up to $16,000 per misrepresentation. The settlement comes on the heels of a September ruling by the U.S. District Court for the Eastern District of Texas to dismiss a suit filed by MPHJ against the FTC. The suit, which was...