2019: Published influential article opposing aspect of proposed reform of Patent Act because it would make “functional” patent claims too hard to protect: “Congress’ Section 101 Fix Would Create a 112(f) Problem.”
2019: Published article explaining amicus brief submitted to Supreme Court on behalf of inventor organization and numerous independent inventors: “The Supreme Court Should Grant Cert in Zup to Correct Obviousness Doctrine.”
2017: Published article to assist next USPTO director in implementing changes to restore fairness to agency patent challenges: “Seven PTAB Policy Changes for the Next USPTO Director,” many of which ended up being implemented.
2016: The firm won an agency appeal for our client in the Court of Appeals for the Federal Circuit (App. No. 2016-1592), resulting in a precedential opinion vacating a Patent Trial and Appeal Board decision that had invalidated his patent.
Throughout 2016: Robert Greenspoon continues to post significant articles on patent policy as a contributing author to the IPWatchdog blog (author’s page here).
August 2016: Robert Greenspoon joins a panel of other experts in a Federalist Society podcast to discuss constitutional infirmities in the process of Inter Partes Review at the United States Patent and Trademark Office.
January 28, 2015: The firm filed a Brief of Amicus Curiae in MCM Portfolio LLC v. Hewlett-Packard Company (No. 15-1091), a matter pending before the Court of Appeals for the Federal Circuit involving the unconstitutionality of inter partes review proceedings.
Robert P. Greenspoon presented oral argument in the Court of Appeals for the Eighth Circuit in Zayed v. Associated Bank
, after briefing prepared by the firm and co-counsel. On March 2, 2015, Eighth Circuit issued a decision reversing the district court’s dismissal of the lawsuit, reviving a suit by a Ponzi scheme federal receivership against Associated Bank. The suit alleges that the bank aided and abetted various wrongful acts of the Ponzi schemers.
October 31, 2014:
After filing a preliminary response in the Patent Trial & Appeal Board, we obtained dismissal of a petition for inter partes review
directed against a cryptography invention.
September 15, 2014: In Conair Corp. & Babyliss FACO SPRL v. Le Angelique, Inc., we obtained a temporary restraining order for our client against an importer of substantially similar hair care products.
September 4, 2014: In Conair Corp. & Babyliss FACO SPRL v. K&A Beauty, LLC, we obtained a permanent injunction for our client after entry of a final default judgment against another importer of substantially similar hair care products.
August 20, 2014: In Marvellous Day Electric v. Holiday Bright Lights, we obtained summary judgment of invalidity for our client against an international electric light manufacturer’s claim of patent infringement. Earlier in the proceedings we also obtained dismissal of all claims under state and federal unfair competition laws. None of the decisions were appealed.
June 5, 2014: We filed a civil rights action against the United States Patent and Trademark Office seeking a declaration that inter partes review proceedings are unconstitutional.
May 8, 2014: In Yowie North America, Inc. v. Candy Treasure, LLC, we obtained denial of a preliminary injunction motion in a patent and unfair competition case against our client in the confectionary industry. The case was later dismissed by settlement.
December 6, 2013: Acting as appointed counsel for a civil rights plaintiff, we obtained a jury verdict against the defendant for violating our client’s Eighth Amendment rights. The jury awarded both compensatory and punitive damages.
September 13, 2012: The firm won a patent appeal for our client 1st Media, LLC against Electronic Arts, Viacom, and Sony Computer Entertainment America in the Court of Appeals for the Federal Circuit (App. No. 2010-1435) (reversing a judgment of inequitable conduct in full), resulting in a published opinion reinstating an infringement case regarding the Rock Band video game.
February 7, 2012: The United States Patent and Trademark Office granted the request for ex parte reexamination filed by the firm against a design patent being asserted against its client.
September 19, 2011: Patent Pilot Judges announced for the Northern District of Illinois. The program applies to all cases filed starting Sept. 19, 2011.
July 22, 2011: Federal Judiciary in Chicago gearing up for the recently announced Patent “Pilot” Program.
June 9, 2011:
Supreme Court ruling in Microsoft, Inc. v. i4i Limited Partnership, et. al. confirms the clear and convincing standard for the defense of invalidity.
June 4, 2011: Robert Greenspoon and co-author Catherine Cottle published their article, “Don’t Assume a Can Opener: Confronting Patent Economic Theory with Licensing Reality,” in the Spring/Summer 2011 issue of the Columbia Journal of Law, Science and Technology.
May 31, 2011: Supreme Court ruling in Global-Tech Appliances, Inc. v. SEB S.A. on the level of intent required to find inducement of infringement makes it easier to prevail in an inducement case before a jury.
April 28, 2011: William Flachsbart appeared on the podcast “Three Moves Ahead” to discuss intellectual property aspects of strategy games, and to lend his expertise to understanding a dispute between two game companies with competing offerings.
April 7, 2011: At the DePaul University College of Law Center for Intellectual Property Law & Information Technology, Robert Greenspoon spoke on a two-person panel about the upcoming Supreme Court argument in Microsoft v. i4i. The Intellectual Property Law Association of Chicago co-sponsored the event.
March 23, 2011: At the Chicago-Kent Intellectual Property Law Society, Robert Greenspoon spoke on the differences in patent licensing and enforcement for different types of actors in the patent market. The Chicago-Kent Law & Economics Society co-sponsored the event.
February 10, 2011: In Lear Corp. v. Johnson Controls, Inc., the firm and co-counsel won a jury verdict for patentee Lear Corporation, after proving indirect infringement (inducement) of dependent claims under the doctrine of equivalents, where the jury awarded substantial damages for the firm’s client.
January 28, 2011: Through petition practice, the firm won dismissal of an inter partes reexamination proceeding filed against our client to cancel one of their major revenue-generating patents.
November 2010: In Intellectual Asset Management Magazine‘s November/December 2010 issue, “The Intangible Investor” columnist Bruce Berman favorably reviewed Robert Greenspoon’s article “Is the United States Finally Ready for a Patent Small Claims Court?”, published in the Spring 2009 issue of the Minnesota Journal of Law, Science and Technology.
October 19, 2010: At the Chicago Bar Association, Robert Greenspoon spoke on a three-person panel sponsored by the Intellectual Property Law Committee about the Supreme Court’s recent decision on patent-eligible subject matter in Bilski v. Doll.
July 1, 2010: At the DePaul University College of Law Center for Intellectual Property Law & Information Technology, Robert Greenspoon spoke on a four-person panel about the Supreme Court’s recent decision on patent-eligible subject matter in Bilski v. Doll. The Federal Circuit Bar Association co-sponsored the event.
June 2010: Legal publisher Thomson-West selected Robert Greenspoon’s article “Is the United States Finally Ready for a Patent Small Claims Court?” as one of the best patent law review articles of 2009, and included it in the 2010 edition of Patent Law Review.
July 2009: Robert Greenspoon published his article “Is the United States Finally Ready for a Patent Small Claims Court?” in the Spring 2009 issue of the Minnesota Journal of Law, Science and Technology.
June 23, 2009: In Newegg v. Telecommunication Systems, Inc., the firm and co-counsel won transfer from a California to a Maryland court, to bring a declaratory judgment case into the client’s home district.
October 3, 2008: In 1st Technology v. Bodog Entertainment Group, the firm and co-counsel won a preliminary injunction against the client’s opponent, precluding the opponent from transfers of numerous intellectual property assets.
January 7, 2008: In Revenue Science, Inc. v. Valueclick, Inc., the firm won dismissal on the pleadings of a complaint that accused the client of patent infringement.
August 2007: William Flachsbart and Robert Greenspoon published their article, “Obviousness after KSR v. Teleflex, a Private Practice Perspective,” in Intellectual Asset Management Magazine‘s August/September 2007 issue.