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Burden of Proof Patents

Linda Liu & Partners

The Practice of Producing Evidence for the Prior Use Right Defense in Patent Infringement Disputes

Linda Liu & Partners on

As Chinese enterprises’ technological innovation level and their R&D capabilities has grown by leaps and bounds in recent years, it is not uncommon for them to defend based on prior use right in patent infringement disputes....more

WilmerHale

Federal Circuit Patent Watch: An Expert Need Not Have Acquired the Requisite Skill Level Prior to the Time of the Invention

WilmerHale on

Precedential and Key Federal Circuit Opinions - WISCONSIN ALUMNI RESEARCH FOUNDATION v. APPLE INC. [OPINION] (2022-1884, 8/28/2024) (Prost, Taranto, and Chen) - Prost, J. The Court affirmed two final judgments of the...more

Pillsbury Winthrop Shaw Pittman LLP

Stretching the Limits: Clarifying the Scope of the Domestic Industry Requirement

Complainants should allocate their investments on a patent-by-patent basis, or, at a minimum, ensure that any aggregate investment is allocated by proper product groupings....more

Fish & Richardson

The Top Three Things Foreign Companies Should Keep in Mind When Considering IPR

Fish & Richardson on

Being sued for patent infringement in the U.S. can be confusing, especially for foreign companies with limited litigation experience. Even more confusing are the multiple options and venues available for responding to patent...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

2023 PTAB Year in Review: Analysis & Trends: 2023 PTAB Case Highlights

Precedential Decisions - Penumbra, Inc. v. RapidPulse, Inc., IPR2021-01466, Paper 34 (March 10, 2023) (designated: November 15, 2023) (regarding prior art status under AIA § 102) The Director designated as precedential...more

Sheppard Mullin Richter & Hampton LLP

The Intertwining Nature of Motivation to Combine and Reasonable Expectation of Success

In Elekta Limited v. Zap Surgical Systems, Inc., No. 21-1985 (Fed. Cir. Sept. 21, 2023), the case addresses the interplay between findings related to motivation to combine and reasonable expectation of success in determining...more

Axinn, Veltrop & Harkrider LLP

The Sewage of Expert Report Deadlines

Expert report deadlines are a feature of every patent case's scheduling order, but they nevertheless are the constant source of disputes. For example, battles over whether to have two or three or four rounds of expert reports...more

Haug Partners LLP

The Many Flavors of Inter Partes Review Estoppel: A Review and Update

Haug Partners LLP on

I. Introduction - The Leahy-Smith America Invents Act (“AIA”) was years in the making.  From the first patent reform bill introduced by Representative Lamar Smith in June 20052 until the final House and Senate debates in...more

AEON Law

Patent Poetry: The “Skilled Searcher” and IPR Estoppel

AEON Law on

The Federal Circuit has issued an opinion on the burden of proof for establishing estoppel in a case involving an inter partes review (IPR) petition. The case is Ironburg Inventions Ltd. v. Valve Corp....more

Morgan Lewis

Federal Circuit Clarifies IPR Estoppel Burden

Morgan Lewis on

A recent Federal Circuit opinion clarified that patent owners carry the burden of proving that inter partes review (IPR) estoppel applies to invalidity grounds not included in their IPR petitions. The Federal Circuit also...more

Fitch, Even, Tabin & Flannery LLP

Federal Circuit Addresses Burden of Proof for IPR Estoppel

On April 3, in Ironburg Inventions Ltd. v. Valve Corp., the Federal Circuit articulated a standard for applying inter partes review (IPR) estoppel on grounds a petitioner “reasonably could have raised” under 35 U.S.C. §...more

Linda Liu & Partners

Application of Obstruction of Evidence Production Rule in Patent Infringement Disputes (I)

Linda Liu & Partners on

Forward - In order to strengthen the protection of patent rights and try to solve the problems of "long cycle, difficult evidence production and low compensation", the cases of applying the obstruction of evidence...more

Linda Liu & Partners

Influence of Implementability of Prior Art in Determination of Novelty and Inventiveness

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In patent examination, the examiner will cite a prior art document in order to determine whether or not an invention or utility model is novel and inventive. The applicants challenge the implementability of the cited prior...more

McDermott Will & Emery

Co-Authorship ≠ Co-Inventorship but Can Be Supportive of Inventive Contribution

The US Court of Appeals for the Federal Circuit vacated and remanded a Patent Trial & Appeal Board (Board) decision because it failed to resolve fundamental testimonial conflict relating to inventive contribution and complete...more

Haug Partners LLP

Ethicon’s Surgical Stapler Patent Held Invalid by the Federal Circuit

Haug Partners LLP on

In Ethicon LLC v. Intuitive Surgical, Inc., the Court of Appeals for the Federal Circuit (“CAFC”) upheld a finding from the Patent Trial and Appeal Board (“Board”) the claims of Ethicon’s patent directed to a surgical stapler...more

Knobbe Martens

Notice Letters and Communications May Form a Basis for Personal Jurisdiction

Knobbe Martens on

APPLE INC. v. ZIPIT WIRELESS, INC. [OPINION]- PRECEDENTIAL - Before Hughes, Mayer and Stoll.  Appeal from the United States District Court for the Northern District of California. Summary: Notice letters and related...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

Federal Circuit Appeals from the PTAB and ITC: Summaries of Key 2021 Decisions: Qualcomm Inc. v. Intel Corp., 6 F.4th 1256 (Fed....

Intel Corp. petitioned for six inter partes reviews (IPRs) challenging the validity of U.S. Patent No. 9,608,675, a patent directed to power management in wireless devices. In each proceeding, Intel and patent-owner Qualcomm...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

Federal Circuit Appeals from the PTAB and ITC: Summaries of Key 2021 Decisions

[co-author: Jamie Dohopolski] Last year, the continued global COVID-19 pandemic forced American courts to largely continue the procedures set in place in 2020. The U.S. Court of Appeals for the Federal Circuit was no...more

Troutman Pepper

Secondary Considerations of Non-Obviousness - Patents: Post-Grant Podcast

Troutman Pepper on

Please join Troutman Pepper's Intellectual Property and Health Sciences Practice Group for the sixth installment of the podcast series focused on strategy, trends, and other happenings at the PTAB. In this episode, Maia...more

Fox Rothschild LLP

Judge Noreika Denies Plaintiff’s Motion for Preliminary Injunction in Patent Infringement Action

Fox Rothschild LLP on

By Memorandum Order entered by the Honorable Maryellen Noreika in Vertigo Media, Inc. et al. v. Earbuds Inc., Civil Action No. 21-120-MN (D.Del. October 14, 2021), the Court denied plaintiffs Vertigo Media, Inc. and Remote...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

PTAB Strategies and Insights - July 2021: Can the PTAB Adopt a New Construction of an Agreed-Upon Term?

In Qualcomm Inc. v. Intel Corp., the Federal Circuit ruled that the Patent Trial and Appeal Board violated patent owner Qualcomm’s rights under the Administrative Procedures Act (APA) by not giving it notice and a chance to...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

PTAB Strategies and Insights - July 2021

[co-author: Jay Bober, Summer Associate] The PTAB Strategies and Insights newsletter provides timely updates and insights into how best to handle proceedings at the USPTO. It is designed to increase return on investment for...more

McDermott Will & Emery

Navigating the Interplay Between the ITC, PTAB and District Courts

Recent changes in intellectual property law in the US International Trade Commission (ITC), the Patent Trial and Appeal Board (PTAB) and federal US District Courts have had major impacts on litigation strategy and business...more

Haug Partners LLP

Objective Indicia of Nonobviousness – Considered as Part of a “Totality of the Evidence” Approach or a “Prima Facie Framework”?

Haug Partners LLP on

On February 11, 2021, Amarin Pharma, Inc. (“Amarin”) filed a petition for a writ of certiorari with the Supreme Court seeking reversal of the Federal Circuit’s decision to affirm a finding that Amarin’s patents are invalid as...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

Federal Circuit Appeals from the PTAB and ITC: Summaries of Key 2020 Decisions: Fanduel, Inc. v. Interactive Games LLC, 966 F.3d...

FanDuel petitioned for inter partes review (IPR) of certain claims of Interactive Games’ patent. The Patent Trial and Appeal Board instituted review and found all but dependent claim 6 to be unpatentable as obvious. ...more

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