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In re Antor Media Corp.

Antor Media Corporation (“Antor”) appeals from the decision of the Board of Patent Appeals and Interferences of the United States Patent and Trademark Office (“PTO”) rejecting on reexamination the claims of its U.S. Patent 5,734,961 (the “’961 patent”) as anticipated and obvious over four references. See Ex Parte Antor Media Corp., No. 2010-007531, 2010 WL 4149232 (B.P.A.I. Oct. 20, 2010) (“Board Opinion”), reh’g denied, 2011 WL 1100047 (B.P.A.I. Mar. 23, 2011) (“Rehearing Opinion”). Because the Board did not err in rejecting the claims as anticipated and obvious, we affirm.

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Bancorp Serv., L.L.C. v. Sun Life Assurance Co. of Canada

Bancorp Services, L.L.C. (“Bancorp”) appeals from the final decision of the U.S. District Court for the Eastern District of Missouri, which entered summary judgment that the asserted claims of U.S. Patents 5,926,792 and 7,249,037 (the “’792 patent” and “’037 patent”) are invalid under 35 U.S.C. § 101. See Bancorp Servs., L.L.C. v. Sun Life Assurance Co., No. 4:00-cv-1073 (E.D. Mo. May 25, 2011) (Final Judgment), ECF No. 411. We affirm.

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Rates Tech. Inc. v. Mediatrix Telecom, Inc.

This appeal arises from the imposition of discovery sanctions against James B. Hicks. Mr. Hicks was the lead attorney for Rates Technology, Inc. (“RTI”), the plaintiff in a patent infringement action. The two patents in suit relate to systems for minimizing the cost of placing long-distance telephone calls. The defendants, Mediatrix Telecom, Inc., and Media5 Corporation (collectively, “Mediatrix”), manufacture and sell equipment that modifies existing telephone systems to convert them to voiceover- Internet-protocol (“VoIP”) systems. Over the course of the litigation, RTI was ordered on four separate occasions to respond to a specific contention interrogatory propounded by Mediatrix. A magistrate judge determined that RTI never adequately responded to the interrogatory, despite the court’s repeated orders to do so, and that the failure to comply with the court’s orders was willful. Accordingly, the magistrate judge recommended dismissing the case and imposing monetary sanctions against Mr. Hicks and RTI in the amount of $86,965.81, to be split evenly between them. The district court adopted the recommendation. Mr. Hicks now appeals the monetary sanctions imposed against him. RTI did not appeal the order dismissing the action or the award of monetary sanctions against it. We affirm.

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USPTO announces publication of proposed rules and proposed examination guidelines for the first-inventor-to-file provision of the AIA

On Thursday, July 26, 2012, the USPTO announces publication in the Federal Register of proposed rules and proposed examination guidelines for the first-inventor-to-file provision of the AIA. The first-inventor-to-file provision converts the United States from a "first-to-invent" to a "first-inventor-to-file" system. The proposed rules and proposed examination guidelines amend the rules of practice to implement the conversion and set forth the Office's interpretation of how the conversion impacts sections of the Manual of Patent Examining Procedure related to novelty and obviousness. The proposed rules and proposed examination guidelines are accessible here:

Publication in the Federal Register of the first-inventor-to-file proposed rules and proposed examination guidelines opens a public comment period running until October 5, 2012. Your feedback about the agency's proposals is welcome and encouraged. Information about submitting feedback to the agency is available in each of the proposals.

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Apple v. Samsung: The Patent Trial of the Century

Tech Giants Near a Landmark Jury Trial Over iPhone and Android; Is it Innovation or Litigation?

By ASHBY JONES And JESSICA E. VASCELLARO Samsung Electronics Co. recently leapfrogged Apple Inc. AAPL as the world's largest seller of smartphones.

But whether Samsung got to the top legally or, as Apple claims, cheated its way there by ripping off the designs behind Apple's iPhone and iPad, is a question that jurors will decide in the kind of roll-the-dice trial that even the fiercest rivals typically try to avoid.

Full story.

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In Re K-Dur Antitrust Litigation

In this appeal, we consider the antitrust implications of an agreement by a manufacturer of a generic drug that, in return for a payment by the patent holder, agrees to drop its challenge to the patent and refrain from entering the market for a specified period of time.

A secondary issue concerns the certification by the District Court of a class of antitrust plaintiffs. Specifically, we must determine whether the antitrust injury allegedly suffered by class members can be shown through common proof, i.e. proof applicable to all plaintiffs, and whether there are insurmountable conflicts preventing named plaintiffs from adequately representing the members of the class.

These appeals arise out of the settlement of two patent cases involving the drug K-Dur 20 (“K-Dur”), which is manufactured by Schering-Plough Corporation (“Schering”). Plaintiffs are Louisiana Wholesale Drug Company, Inc., on behalf of a class of wholesalers and retailers who purchased K-Dur directly from Schering and nine individual plaintiffs, including CVS Pharmacy, Inc., Rite Aid Corporation, and other pharmacies. Defendants are Schering and Upsher-Smith Laboratories (“Upsher Smith”).

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USPTO Set to Publish Proposed First to File Administrative Rules on July 23, 2012

The USPTO is expected to publish a set of proposed administrative rules on Monday (July 23, 2012) in order to implement the first-to-file system enacted by the America Invents Act (AIA). Once final, the rules are scheduled to become effective on March 16, 2013. Public comments are invited until October 5, 2012.

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Wi-LAN, Inc. v. LG Electronics, Inc.

The law firm of Kilpatrick Townsend & Stockton LLP (“Kilpatrick Townsend”) appeals contempt sanctions entered in connection with a subpoena served on it in the Northern District of California. Wi-LAN, Inc. v. LG Elecs., Inc., No. 10-mc-80254 [hereinafter Wi-LAN], 2011 WL 3648531 (N.D. Cal. Aug. 18, 2011). Kilpatrick Townsend acknowledges that it did not comply with the court’s order to produce certain communications between Kilpatrick Townsend and its client, Wi-LAN, Inc. (“Wi-LAN”). Kilpatrick Townsend contends that the order to produce these communications was based on legal error by the district court and failed to properly apply Wi-LAN’s attorney-client privilege against production. Kilpatrick Townsend urges that its failure to comply was its only ethical course of action.

Because the district court did not apply the proper analysis to the privilege question, we vacate its production order and remand. We also vacate the contempt sanctions; on remand the district court may revisit whether Kilpatrick Townsend’s failure to comply was contempt.

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Preston v. Marathon Oil Co.

This case presents the question of whether Plaintiff-Appellant Yale Preston (“Preston”) owns United States Patent Nos. 6,959,764 (“the ’764 patent”) and 7,207,385 (“the ’385 patent”), or whether he assigned rights in those patents to Defendant-Cross-Appellant Marathon Oil Company (“Marathon”) pursuant to an employment agreement entered into shortly after he began work as an at-will employee. In the alternative, Marathon asserts that it has a common law shop right to use the invention or otherwise owns the invention because Marathon Engi-neer Thomas Smith, one of the defendants in this action, is a co-inventor.

Following several summary judgment motions and a bench trial, the district court entered the following judg-ments relevant to this appeal: (1) declaring that Preston is the sole inventor of the ’385 patent and that Smith was misjoined as an inventor; (2) ordering the PTO to issue a new certificate reflecting that Preston is the sole inventor of that patent; (3) declaring Marathon the owner of the ’764 and ’385 patents pursuant to Preston’s employment agreement and that Preston is in breach of the agreement for failing to assign his rights, as he promised to do. The district court also entered summary judgment in favor of Marathon on its shop right claim, finding that, even if Marathon did not own the rights to the patents—by assignment or otherwise, it had a shop right to practice the inventions reflected therein.

On appeal, Preston challenges the district court’s summary judgment ruling regarding Marathon’s asserted shop right and the post-trial judgment regarding the assignment of his ownership interest in the relevant technology to Marathon. We affirm-in-part and vacate-in-part. We affirm the district court’s judgment that Preston assigned his rights in the ’385 and ’764 inventions to Marathon pursuant to his employment agreement with Marathon. Because that assignment was automatic, however, we vacate the district court’s judgment that Preston is in breach of that agreement. For the reasons explained below, we do not reach the lower court’s other judgments.

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