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Extension of the PTAB Motion To Amend Pilot Program

The United States Patent and Trademark Office (USPTO) announced on Oct. 4, 2022, that it is extending the Motion to Amend (MTA) Pilot Program through September 16, 2024. The MTA Pilot Program was initiated on March 15, 2019....more

6 Key Takeaways | Patent Opinions – New Developments and Pitfalls [Video]

Kilpatrick Townsend Partner Paul Haughey recently presented "Patent Opinions - New Developments and Pitfalls." These are the 6 key takeaways from his presentation....more

6 Key Takeaways - Patent Opinions – New Developments and Pitfalls

Kilpatrick Townsend partner Paul Haughey recently presented to the IP section of the Utah Bar Association about “Patent Opinions – New Developments and Pitfalls.” The presentation was a review of patent opinion basics,...more

Update on IPR Estoppel

No estoppel if IPR not instituted. A recent district court case confirms that IPR estoppel does not apply to IPR petitions that are not instituted. See inMusic Brands, Inc. v. Roland Corporation, 1-17-cv-00010 (DRI Jun. 14,...more

The Latest on Petitioner Estoppel

CalTech v. Broadcom. You may have read multiple articles about how the Feb. 4, 2022 precedential opinion of the CAFC in California Institute of Technology v. Broadcom Limited, et al., 20-2222 (“CalTech v. Broadcom”) widened...more

Developments re Fintiv Discretionary Denials of IPR Petitions

As we’ve noted in earlier blog posts, following the Fintiv decision, the PTAB has been denying petitions where a federal court is likely to decide validity before a final would be reached by the PTAB. A study by Unified...more

Recent Rulings on IPR Estoppel

First, a bit of background. Inter-Partes Review (IPR) estoppel applies to “any ground that the petitioner raised or reasonably could have raised during that inter partes review.” 35 U.S.C. § 315(e). In 2018, The Shaw decision...more

Intel’s $2.18 Billion Patent Infringement Verdict – How to Avoid it Happening to Your Company

In view of the $2.18 billion jury verdict against Intel for patent infringement, in-house counsel may wonder how to keep that from happening to them (see VLSI Technology LLC v. Intel Corp., 21-57, U.S. District Court for the...more

Partial Waiver of District Court Invalidity Challenges not Sufficient to Prevent Denial of IPR Institution

The PTAB’s precedential Fintiv decision (Apple v. Fintiv, Inc, IPR2020-00019) held that the PTAB could deny institution of an IPR, even within the one year statutory bar, if (1) district court litigation has progressed...more

3 KEY TAKEAWAYS: Making IP Due Diligence more Tailored, Useful and Efficient

San Francisco Partners Paul Haughey and Siegmar Pohl recently gave a presentation to the IP Chapter of the Association for Corporate Counsel (ACC), entitled “Making IP Due Diligence more Tailored, Useful and Efficient.” ...more

4 TAKEAWAYS: Patent Quality, Ranking and Valuation

Kilpatrick Townsend attorneys Sujit Kotwal, Paul Haughey and Tom Franklin recently presented at the Kilpatrick Townsend Intellectual Property Seminars (KTIPS) on “Patent Quality, Ranking and Valuation.” KTIPS is an intensive,...more

Patent Freedom to Operate for Technology Follower Companies

Often a technology follower company is trying to make a similar product to one in the market, but may not have the budget for a full Freedom to Operate review. However, potential IP litigation risk could be significant to the...more

When to Obtain Opinions of Counsel to Avoid Willful Infringement Guidance for In-House Counsel

Recent decisions illustrate situations where courts find “egregious” conduct under the Supreme Court’s Halo standard, and an opinion should be obtained to mitigate the risk of enhanced damages/ willful patent infringement....more

Patentability Searches Bust or Save In-House Counsel Budgets

In my technical areas of electronics and software, I’ve often heard in-house counsel say it isn’t worth the cost of doing patentability searches. They are trying for a large volume of patents, and it isn’t worth a lot of...more

Willful Blindness Guidance for In-House Patent Policies

Ironically, a “no patent review” policy many in-house counsel have adopted to avoid willful infringement risk can itself cause willful infringement risk. Two cases from 2019 give some context. In October, 2019 Judge...more

IPR Strategy Changes for In-House Counsel

Based on recent court and PTAB (Patent Trial and Appeal Board) decisions, here are some basics in-house counsel should know in managing outside IPR counsel. Preemptive IPRs may not be appealable. An IPR must be filed within...more

Patent Valuations – Does Yours Have These Seven Key Elements?

Paul Haughey, partner at Kilpatrick Townsend, with seven steps to meaningful patent valuation....more

No State Sovereign Immunity in IPRs

The Federal Circuit held, in a precedential opinion on June 14, 2019, that sovereign immunity does not apply to IPRs challenging state-owned patents (Regents of the Univ. of Minnesota v. LSI Corp., No. 2018-1559, --- F.3d...more

First of Its Kind: Lessons Learned from the PTAB’s First Derivation Decision

Summary - The PTAB recently published its first-ever final written decision in a derivation proceeding, which allows a patent to be challenged as being derived from the true inventor. The decision found no derivation, and...more

Federal Circuit Approves Post-SAS procedures of Instituting all Claims and all Grounds for IPR Decisions.

In SAS Institute Inc. v. Iancu, Director, United States Patent and Trademark Office. 138 S.Ct. 1348 (2018) (“SAS”) the Supreme Court held that an inter partes review (“IPR”) must rule on each claim and each ground challenged...more

Federal Circuit Approves Post-SAS procedures of Instituting all Claims and all Grounds for IPR Decisions

In SAS Institute Inc. v. Iancu, Director, United States Patent and Trademark Office. 138 S.Ct. 1348 (2018) (“SAS”) the Supreme Court held that an inter partes review (“IPR”) must rule on each claim and each ground challenged...more

No Assignor Estoppel for IPR Challenges

The Federal Circuit on Nov. 9, 2018 held that assignor estoppel does not apply to IPRs: Arista Networks, Inc. v. Cisco Sys., Inc., No 17-1725, slip. Op. at 17-23 (Fed. Cir. Nov. 9, 2018.) - The Court held: - “We...more

5 KEY TAKEAWAYS: IP Due Diligence in the Age of Blockchain & Artificial Intelligence

Kilpatrick Townsend Partner Paul Haughey recently presented at the Kilpatrick Townsend Intellectual Property Seminars (KTIPS) Summer Series about “IP Due Diligence in the Age of Blockchain & Artificial Intelligence.” KTIPS is...more

4 KEY TAKEAWAYS: Blockchain and Open Source

Kilpatrick Townsend attorneys Paul Haughey, Mike Pavento and Brian Olion, recently presented at the Kilpatrick Townsend Intellectual Property Seminars (KTIPS) Summer Series about “Blockchain and Open Source.” KTIPS is an...more

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