News & Analysis as of

Burden of Proof International Trade Commission (ITC) Patents

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

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

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

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

Jones Day

PTAB Institutes Despite ITC Investigation

Jones Day on

In 3Shape A/S v. Align Tech., Inc., IPR2020-00223, Paper 12 (May 26, 2020), the PTAB declined to deny institution of an inter partes review involving a patent challenged in a pending ITC investigation. Despite the advanced...more

WilmerHale

Federal Circuit Patent Updates - September 2018

WilmerHale on

Hyatt v. Pato (No. 2017-1722, 9/24/18) (Reyna, Wallach, Hughes) - Hughes, J. Reversing dismissal for lack of subject matter description stating, “the exclusive jurisdiction of this court and the Eastern Virginia district...more

Mintz - Intellectual Property Viewpoints

Federal Circuit Upholds Trade Show Catalog As Prior Art in Nobel Biocare Servs. AG v. Instradent USA, Inc.

Recently in Nobel Biocare Services AG v. Instradent USA, Inc., the Federal Circuit affirmed a decision of the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board (“the Board”) in an inter partes review (“IPR”)...more

Mintz - Intellectual Property Viewpoints

ALJ Shaw: ITC is a Viable Forum for Enforcement of SEPs

The public version of ALJ Shaw’s Initial Determination (ID) in U.S. International Trade Commission (ITC) investigation Certain Magnetic Data Storage Tapes and Cartridges Containing the Same, Inv. No. 337-TA-1012 (1012...more

Jones Day

Senate’s STRONGER Patents Act Aims to Address Key PTAB Patent Owner Woes

Jones Day on

On June 21, Senators Chris Coons (D-Del), Tom Cotton (R-Ark), Dick Durbin (D-Ill), and Mazie Hironoa (D-Hawaii) introduced the “Support Technology & Research for Our Nation’s Growth and Economic Resilience Patents Act of...more

Jones Day

ITC Declassifies Portions of Final Determination

Jones Day on

In re Certain Network Devices, Related Software and Components Thereof (I), Inv. No. 337-TA-944 (ITC Comm’n Apr. 19, 2017), is a surprisingly rare opinion addressing a common issue: When should the ITC redact a portion of an...more

Fish & Richardson

The ITC Punts on Whether the Presumption of Validity Applies to § 101 Challenges

Fish & Richardson on

On April 4, 2016, the U.S. International Trade Commission issued a notice stating that it would not review an Initial Determination by Judge Dee Lord finding the asserted claims of U.S. Patent Nos. 8,398,546 and 8,446,275...more

Kelley Drye & Warren LLP

ITC Finds Nokia Does Not Infringe Interdigital Patents, So Does Not Address FRAND Issues (337-TA-613)

On Friday, the U.S. International Trade Commission issued a Notice on its review of Judge Essex’s decision in the InterDigital v. Nokia investigation and found that Nokia did not infringe InterDigital’s 3GPP patents (see our...more

Mintz

Writing on Her Own Behalf, Chairwoman Ramirez Takes a Position on FRAND

Mintz on

Federal Trade Commission (FTC) Chairwoman Edith Ramirez took the unusual step on July 13, 2015, of filing a written submission on her own behalf — and expressly not on behalf of her agency — in Investigation No. 337-TA-613,...more

Mintz

ALJ Essex Elaborates an Evidence-Based Framework for Adjudicating the FRAND Defense

Mintz on

Administrative Law Judge Essex recently issued the public version of his Initial Determination on Remand in International Trade Commission investigation No. 337-TA-613, In the Matter of Certain 3G Mobile Handsets and...more

McDermott Will & Emery

“Inherency Requires More Than Probabilities” - Motorola Mobility, LLC v. Int’l Trade Comm’n

McDermott Will & Emery on

Addressing whether an essential claim limitation is inherently present in a prior art reference for purposes of an anticipation analysis, the U.S. Court of Appeals for the Federal Circuit affirmed a ruling out of the U.S....more

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