Our Philosophy

Kwan & Olynick LLP (www.kwanip.com)  is an intellectual property law firm based in Berkeley, CA focusing on patents and trademarks.  The firm was founded to generate value from innovation. We believe that an intellectual property attorney should not merely receive a technical disclosure and prepare and file a patent application. Instead, an intellectual property attorney should be an adept engineer, an astute lawyer, a business partner, and a co-innovator who intricately understands your continually evolving needs, your competitive pressures, technological landscape, and business goals. A great intellectual property attorney should not only enjoy practicing law, but should also love technology, business, and the entrepreneurial spirit.  Our attorneys bring more than a combined 70 years of experience in preparing and prosecuting patent and trademark applications, counseling, intellectual property audits, and due diligence reviews.  Our firm is proud to represent Fortune 500 companies, emerging companies, and entrepreneurs.

Updates

1/23/17 - Federal Circuit suggests in a nonprecedential opinion that technological modification including software modifications to "solve a problem or improve the functioning of a known system generally produce patent-eligible subject matter. ... [I]neligible claims generally lack steps or limitations specific to solution of a problem, or improvement in the functioning of technology." Read more.

12/13/16 - SCOTUS to hear case on whether patent infringement cases can be brought in essentially any district in the country or whether they must be filed in the state where the defendant was incorporated or had a regular and established place of business. Read more.

News Archive

11/1/2015 - KwanIP is proud to celebrate its 4 year anniversary!

10/17/2015 - Once an applicant makes a non-frivolous argument that cited prior art is not enabling, the burden is placed upon the Patent Examiner to address that challenge.  While affidavits or declarations may be proffered, they are not required. Read more. However, admissions in a patent application may support an Examiner's findings that prior art is enabled. Read more.

12/9/2014 - Possible amendments to the Federal Rules of Civil Procedure (FRCP) may make pleading patent cases more difficult, and may deter "fishing expedition" filings by trolls. Read more.

11/20/2014 - Recent cases have indicated a lowered standard for obtaining attorney's fees in patent cases, possibly in order to deter trolls.  The Supreme Court has established that whether attorney's fees should be awarded in an "exceptional case" should be based on a totality of the circumstances in a case-by-case basis. Read more.

6/8/2014 - The U.S. Supreme Court held in Limelight Networks, Inc. v. Akamai Technologies, Inc. on June 2, 2014 that in order to find inducement under 35 U.S.C. §271(b), direct infringement under 35 U.S.C. §271(a) must also be present.  Although the Court limits the scope of its holding to this particular question, the Court reverses and remands the case to the Fed. Circuit, and leaves open the possibility that direct infringement under 35 U.S.C. §271(a) can be revisited and the Fed. Cir. can reconsider its application of Muniauction, which requires that direct infringement "requires a single party to perform every step of the claimed method," such that the single party exercises "control or direction" over the entire process.  Read more.

11/30/2013 - Satellite Patent Office to Open in San Jose Late 2014 -- The Silicon Valley Patent and Trademark Office will move from its temporary location in Menlo Park to a permanent location in the San Jose City Hall. The permanent location is expected to open in late 2014. Read More.

11/30/2013 - A Texas jury awarded TQP Development a $2.3 million judgment -- TQP, widely regarded as a nonpracticing entity, won the judgment against Newegg for Newegg's infringement of a public key encryption patent that TQP acquired in 2006. The Texas jury rejected the argument that a claim from the public key encryption patent was invalid despite testimony from Whitfield Diffie, one of the original inventors of public key encryption.

6/25/2013 - Software Patents May Contain Ineligible Subject Matter Under 35 U.S.C. §101 -- A recent Federal Circuit ruling suggests differing opinions among the judges about whether certain software patents include patentable subject matter under §101. The court issued six different opinions in CLS Bank International v. Alice Corporation, each including varying tests to determine patent-eligible subject matter under §101. The patents at issue related to financial services software and included method claims, computer-readable medium claims, and system claims. Eight of the judges agreed that the claims "should rise or fall together in the § 101 analysis." The main opinion asserts that "the test should be a flexible claim-by-claim analysis that focuses on whether the claims add 'significantly more' to a basic abstract concept." In the case at issue, the main opinion found that the subject matter was not patentable because it included an abstract idea that was a "disembodied concept." A separate opinion written by Chief Judge Rader (concurrence-in-part, dissent-in-part) concludes that the system claims were patentable because they included subject matter that was not abstract or disembodied, but instead was integrated into a system utilizing machines. Although no definitive test as to patentable subject matter under §101 was set forth in the opinion, the opinion does indicate that there is substantial disagreement within the court as to whether particular software/financial services software patents include patentable subject matter. The Intellectual Property Strategist, Vol. 19, No. 9, June 2013. http://www.lawjournalnewsletters.com/issues/ljn_intproperty/19_9/columns/IP-News158259-1.html

6/25/2013 - Obama Attempts to Reduce Patent Trolling -- "[T]he White House is asking Congress to force the USPTO to narrow the scope of patents within the next six months so that whole fields of endeavour cannot be trolled. Obama also wants to prevent patents being asserted against the users of technologies, like coffee shops, rather than manufacturers." This action is aimed at reducing patent trolling (i.e. asserting patents that are either invalid or of questionable validity, often because they are obvious or overbroad). http://www.newscientist.com/article/mg21829215.700-obama-declares-war-on-the-patent-trolls.html#.UcoI2PnVBjg

6/25/2013 - Claim Vitiation Limitation to the Doctrine of Equivalents May Be Diminishing -- The Fed. Circuit recently interpreted claim vitiation to be “an acknowledgement that each element in the claim must be present in the accused device either literally or equivalently.” It is unclear whether claim vitiation is still a separate standard that can be applied as a defense to the doctrine of equivalents. Claim vitiation remains a question of law for a court to decide (i.e., that “no reasonable jury could determine two elements to be equivalents"), whereas the doctrine of equivalents remains a question of fact for a jury to decide. The Intellectual Property Strategist, Vol. 19, No. 8, May 2013 http://www.lawjournalnewsletters.com/issues/ljn_intproperty/19_8/news/The-Diminishing-Claim-Vitiation-Limitation-to-the-Doctrine-of-Equivalents158115-1.html

5/13/2013 - Pursuit of injunctive relief against a willing licensee may constitute abusive conduct. A Statement of Objections (SO) issued by the European Commission after Samsung sought injunctions against Apple indicated that the Samsung's pursuit of injunctive relief against Aplle, a willing licensee, was abusive conduct. Samsung withdrew it's European SEP-based injunctions against Apple a few days before the SO was issued. (FOSS Patents)

5/11/2013 - Patent ownership can be divided during marriage dissolution. A Florida court found that a patent issued to Mr. Taylor during marriage to Mrs. Taylor was a marital asset that was divided during a Divorce Settlement. Because Mrs. Taylor obtained legal title to the patent, Mr. Taylor had no standing to sue for infringement under the patent because Mrs. Taylor refused to participate in the suit (all co-owners must be joined as co-plaintiffs). (PatentlyO)

4/6/2013 - Failure to negotiate a license in good faith under FRAND may preempt patent damages -- The Tokyo District Court ruled that Samsung cannot seek patent damages against Apple because Samsung’s failure to negotiate a license to Apple in good faith under its own FRAND declaration constituted an abuse of patent right. (IPCat, PatentProgress)

3/10/2013 - Public Hearing Related to Harmonization of Substantive Patent Law will be held on March 21, 2013 from 8:30am – 12:00pm EDT. The hearing is intended to gather stakeholder input regarding the topics of grace period, publication of applications, treatment of conflicting applications, and prior user rights. The hearing will be available via webcast.

3/4/2013 - The USPTO has published final guidelines regarding alterations to novelty and obviousness determinations under the First-Inventor-to-File system. First-Inventor-to-File Final Rules and Guidelines.

3/4/2013 - First-Inventor-to-File Final Rules and Guidelines have been published by the USPTO (http://www.uspto.gov/news/pr/2013/13-10.jsp) and a public training session will be available via webcast on Friday, March 15, 2013 (www.uspto.gov/AmericaInventsAct). Guidelines have also been published regarding alterations to novelty and obviousness determinations under the First-Inventor-to-File system. The First-Inventor-to-File provision becomes effective on March 16, 2013.

BERKELEY OFFICE
2000 Hearst Ave, Ste 305
Berkeley, CA 94709

Phone: (510) 900-9501
Fax: (408) 228-3739
Email: info@kwanip.com