The Central District of California denied a defendant’s motion to dismiss or transfer plaintiff’s first-filed declaratory judgement action based on defendant’s later-filed patent infringement suit in Wisconsin. Though suit...more
In a recent newsflash, we discussed the USPTO’s withdrawal of its 2022 memorandum that detailed how the PTAB would exercise its discretion to deny petitions for inter partes review and post-grant review. New guidance from the...more
On February 28, 2025, the USPTO announced that it was rescinding former Director Vidal’s 2022 memorandum on discretionary denials by the Patent Trial and Appeal Board. The 2022 memorandum effectively narrowed the application...more
The District of Arizona recently held that a plaintiff’s failure to mark patented products during the time period that marking was required barred it from recovering all pre-notice damages, including for a period of time when...more
The Patent Trial and Appeal Board granted institution of inter partes review of a patent directed to delivery of targeted television advertisements. The board rejected patent owner’s argument that a lack of particularity as...more
The Unified Patent Court (UPC) aims to provide expeditious decisions for its litigants. That means that there is a higher bar for obtaining extensions of time. As exemplified in BMW v. ITCiCo, the UPC’s reluctance to grant...more
The Patent Trial and Appeal Board determined that a reference could be used as prior art because patent owner failed to provide sufficient evidence that the prior art’s disclosure was invented by all four named inventors, and...more
The Patent Trial and Appeal Board rejected a patent owner’s assertion that petitioner should have named a third party, which was a defendant in a related district court patent infringement litigation and a party to a joint...more
A district court recently refused to exclude testimony regarding consumer surveys conducted by a design patent expert, holding instead that the consumer surveys may be probative of how an ordinary observer would view the...more
The PTAB denied a petitioner’s motion to compel routine discovery that sought information from a parallel ITC investigation for alleged inconsistent positions taken by patent owner in the IPR. The board found that patent...more
10/30/2024
/ Discovery ,
Evidence ,
Intellectual Property Protection ,
International Trade Commission (ITC) ,
Motion to Compel ,
Parallel Proceedings ,
Patent Infringement ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Semiconductors
The Central District of California ruled that the heightened pleading standard of Federal Rule of Civil Procedure Rule 9(b) applies to all three prongs of a false patent marking claim, including the third prong, competitive...more
Our newsletter reflects the focus of Akin’s cross-practice autonomous systems and advanced mobility team on developments in the regulatory, policy, trade, intellectual property, and cybersecurity and privacy spaces....more
The Director of the USPTO initiated sua sponte review of a PTAB panel’s decision to impose sanctions based on patentee’s conduct during IPR proceedings.The PTAB cancelled all of patentee’s claims, including those not...more
9/24/2024
/ America Invents Act ,
Duty of Candor ,
Ethics ,
Good Faith ,
Inter Partes Review (IPR) Proceeding ,
Patent Trial and Appeal Board ,
Patent Validity ,
Patentability Search ,
Patents ,
Prior Art ,
Sanctions ,
USPTO
The Western District of Texas granted a motion to stay a patent infringement lawsuit pending inter partes review not only because doing so would simplify the issues in the still-early litigation and reduce the burden on the...more
The Patent Trial and Appeal Board exercised its discretion under General Plastic to deny institution of a follow-on petitioner’s request for inter partes review despite determining that the petitioner did not have a...more
The Patent Trial and Appeal Board has denied institution of an inter partes review for a design patent in part because the petitioner failed to show that three asserted references qualified as prior art. Specifically, the...more
The Patent Trial and Appeal Board denied institution of an inter partes review petition because a prior art patent figure did not provide exact dimensions, and therefore could not meet the relevant claim limitation. On...more
The Federal Circuit dismissed an appeal of a final written decision in an IPR based on issue preclusion where a district court had dismissed a complaint finding the patent claims subject-matter ineligible. The patentee had...more
Our newsletter reflects the focus of Akin’s cross-practice autonomous systems and advanced mobility team on developments in the regulatory, policy, trade, intellectual property, and cybersecurity and privacy spaces....more
8/16/2024
/ Artificial Intelligence ,
Climate Change ,
Department of Homeland Security (DHS) ,
Driverless Cars ,
Drones ,
FCC ,
Federal Aviation Administration (FAA) ,
Intellectual Property Protection ,
SCOTUS ,
Technology Sector ,
Unmanned Aircraft Systems ,
Waivers
The Patent Trial and Appeal Board has granted a petitioner’s motion to submit supplemental information, over patent owner’s objections, concerning the public availability of references that were relied upon to support grounds...more
The Patent Trial and Appeal Board instituted an inter partes review over patent owner’s objections that the petition did not timely identify all real parties-in-interest (RPI) and was filed by a phantom legal entity after...more
7/29/2024
/ California ,
Delaware ,
Inter Partes Review (IPR) Proceeding ,
Jurisdiction ,
Limited Liability Company (LLC) ,
Patent Infringement ,
Patent Litigation ,
Patent Ownership ,
Patent Trial and Appeal Board ,
Patents ,
Reorganizations
A court in the Western District of Oklahoma dismissed a complaint as to one of the asserted patents where the patent included a terminal disclaimer stating that the patent would be enforceable only as long as it was co-owned...more
The Patent Trial and Appeal Board has denied institution of an inter partes review, in part because the petitioner failed to show that a key reference qualified as prior art. The PTAB ruled that the petitioner was required to...more
The United States Patent and Trademark Office (USPTO) and the United Kingdom Intellectual Property Office (UKIPO) have signed a memorandum of understanding (MoU) that outlines a new framework for collaboration between the two...more
The Patent Trial and Appeal Board denied institution of a petition for inter partes review under 35 U.S.C. § 315(b) because the petition was filed more than one year after patent owner had served a complaint for patent...more