In late August of 2021, the Federal Circuit reversed a jury verdict of $1.2 billion in favor of Juno Therapeutics and Sloan Kettering Institute because the jury’s finding that four of the asserted patent claims did not lack...more
When faced with an instituted IPR, the Patent Owner should include all arguments it wishes to preserve for appeal in its Patent Owner Response (“POR”), including arguments that the Patent Owner believes are unlikely to...more
On Monday, in a highly-anticipated decision, a fractured Supreme Court issued its opinion in United States v. Arthrex, et al., striking a portion of the America Invents Act (AIA) as unconstitutional—but providing an...more
6/25/2021
/ Administrative Patent Judges ,
America Invents Act ,
Appointments Clause ,
Constitutional Challenges ,
Director of the USPTO ,
Inferior Officers ,
Inter Partes Review (IPR) Proceeding ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Principle Officers ,
SCOTUS ,
United States v Arthrex Inc
Expert declarations are an essential component of any patent owner’s effort to survive an instituted inter partes review (“IPR”). The Board relies heavily on expert testimony in order to evaluate and understand the technology...more
As discussed in our previous post, one of the most critical tasks for Patent Owners during the Inter Partes Reviews (“IPR”) discovery period is deposing the Petitioner’s expert. Since IPR depositions are treated differently...more
4/15/2021
/ Cross Examination ,
Depositions ,
Discovery ,
Evidence ,
Expert Testimony ,
Expert Witness ,
Inter Partes Review (IPR) Proceeding ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Witnesses
In Network-1 Techs., Inc. v. Hewlett-Packard, No. 18-2338, the Federal Circuit reversed and vacated multiple aspects of the district court’s final judgment holding that Hewlett-Packard (HP) did not infringe U.S. Patent No....more
On Monday, in Thryv, Inc. v. Click-to-Cal Technologies, the Supreme Court held that § 315(b) time-bar determinations are not subject to judicial review. In this 7-2 decision penned by Justice Ginsburg, with Justices Gorsuch...more
4/22/2020
/ § 314(d) ,
§ 315(b) ,
§314(a) ,
§314(b) ,
America Invents Act ,
Appeals ,
Dissenting Opinions ,
Inter Partes Review (IPR) Proceeding ,
Judicial Review ,
Non-Appealable Decisions ,
Patent Infringement ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
SCOTUS ,
Thryv Inc v Click-To-Call Technologies LP ,
Time-Barred Claims ,
Vacated
The Precedential Opinion Panel (“POP”) of the U.S. Patent Trial and Appeal Board (“Board”) recently rejected a rehearing request from a petitioner where institution was denied because of the likelihood that a district court...more
To amend challenged claims during an Inter Partes Review (IPR), the patent owner must show that the proposed amendment responds to a ground of unpatentability at issue in the IPR trial. But in a recent final written decision...more
Judge Gilliam of the Northern District of California recently answered this question and provided helpful guidance on the interplay of IPRs, reexaminations and district court litigation. In IXI Mobile (R&D) Ltd., et al., v....more
Recently, in Godo Kaisha IP Bridge 1 v. TCL Commc’n Tech. Holdings Ltd., the Delaware District Court awarded the prevailing plaintiff in a patent infringement suit an ongoing royalty that covers not only the products...more
On April 25, 2019, in Int’l Designs Corp., LLC, et. al. v. Hair Art Int’l, Inc., Judge George H. Wu in the Central District of California denied Hair Art’s motion for attorneys’ fees under 35 U.S.C. § 285. Judge Wu concluded...more
5/9/2019
/ Attorney's Fees ,
Claim Construction ,
Exceptional Case ,
Frivolous Lawsuits ,
Octane Fitness v. ICON ,
Patent Infringement ,
Patent Litigation ,
Patents ,
Section 285 ,
Summary Judgment ,
Totality of Circumstances Test
A Discovery Master in Limestone Memory Systems LLC v. Micron Tech., Inc. pending in the Central District of California recently provided additional guidance to practitioners and patent owners on this important question. The...more
A recent order from the District of Delaware in Evolved Wireless, LLC v. Apple Inc., No. 15-00542 (“Evolved Wireless”) provides interesting guidance regarding the use of future sales in calculating lump-sum damages. This...more
4/1/2019
/ Admissibility ,
Calculation of Damages ,
Cross Examination ,
Damages ,
Evidence ,
Jury Instructions ,
Lump Sum Payments ,
Patent Assertion Entities ,
Patent Infringement ,
Patent Royalties ,
Patents
On March 26, 2019, the International Trade Commission issued its Final Determination in Certain Mobile Electronic Devices and Radio Frequency and Process Components Thereof, 337-TA-1065. The 1065 Investigation is one of...more
In its first decision since its inception, the Precedential Opinion Panel (“POP”) for the U.S. Patent Trial and Appeal Board (“Board”), in Proppant Express Investments, LLC v. Oren Technologies, LLC, IPR2018-00914, held that...more
3/21/2019
/ § 315(b) ,
Administrative Proceedings ,
Inter Partes Review (IPR) Proceeding ,
Joinder ,
Judicial Discretion ,
Litigation Strategies ,
Patent Infringement ,
Patent Trial and Appeal Board ,
Patents ,
Precedential Opinion ,
Time-Barred Claims
This year the Supreme Court, United States Court of Appeals for the Federal Circuit, and the Federal District Courts penned a number of opinions impacting patent law. Here are some key takeaways from the past year....more
12/21/2018
/ § 315(b) ,
35 U.S.C. § 271(f)(2) ,
America Invents Act ,
Article III ,
Corporate Counsel ,
Extraterritoriality Rules ,
FRAND ,
Inter Partes Review (IPR) Proceeding ,
Judgment on the Pleadings ,
Lost Profits ,
Oil States Energy Services v Greene's Energy Group ,
On-Sale Bar ,
Patent Trial and Appeal Board ,
Patents ,
Personal Jurisdiction ,
Real Party in Interest ,
SAS Institute Inc. v Iancu ,
SCOTUS ,
Sovereign Immunity ,
USPTO ,
WesternGeco LLC v Ion Geophysical Corporation