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Patent Litigation Federal Rules of Evidence

Manatt, Phelps & Phillips, LLP

Will the Federal Circuit Bring the Hammer Down on Big Damages Claims?

On September 25, 2024, for only the second time since 2018, the U.S. Court of Appeals for the Federal Circuit granted a request for en banc review of a panel decision in a patent case. The case, EcoFactor Inc. v. Google LLC,...more

Farella Braun + Martel LLP

What Have We Learned From the First Six Months Under the New Federal Rule of Evidence 702?

As patent practitioners know, Daubert motions can be some of the most hotly contested and pivotal motions in the life of a patent case. These motions are used to exclude testimony from an opponent's expert witness, usually on...more

Akin Gump Strauss Hauer & Feld LLP

EDTX: Bad Faith FRAND Negotiations Warrant Suspension but Not Revocation of Parties’ Obligations Under French Law

The Eastern District of Texas recently addressed two significant issues related to fair, reasonable and non-discriminatory (FRAND) negotiations under French law; namely, whether: (1) an implementer is entitled to damages...more

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases - October 2022

Provisur Technologies, Inc. v. Weber, Inc., Appeal Nos. 2021-1942, -1975 (Fed. Cir. Sept. 27, 2022) - In this week’s Case of the Week, the Federal Circuit reviewed an IPR decision and addressed the Patent Trial and Appeal...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

Jones Day

Discovery Request Seeking Deposition Preparation Materials Denied

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The Patent Trial and Appeal Board (“PTAB”) recently denied a Motion for Additional Discovery because the movant could not prove beyond mere speculation that the requested documents would be useful to show witness scripting....more

Goodwin

Issue 36: PTAB Trial Tracker

Goodwin on

FORUM SELECTION CLAUSES MAY OR MAY NOT PRECLUDE PTAB REVIEW - In Kannuu Pty Ltd. v. Samsung Electronics Co., Ltd. & Samsung Electronics America, Inc., No. 21-1638 (Fed. Cir. Oct. 7, 2021), the Federal Circuit considered...more

McDonnell Boehnen Hulbert & Berghoff LLP

ToolGen Files Motion to Exclude Evidence, Broad Opposes, and ToolGen Replies in Interference No. 106,126

On October 1st, Senior Party ToolGen Inc. filed its Motion to Exclude certain evidence presented by Junior Party the Broad Institute, Harvard University, and MIT (collectively, "Broad") in Interference No. 106,126.  Broad...more

Goodwin

Issue 35: PTAB Trial Tracker

Goodwin on

TIMING OF REQUEST KEY FOR BOARD DECISIONS ON MOTIONS TO TERMINATE - In Ocado Group PLC v. AutoStore Technology AS, PGR2021-00038 (July 30, 2021), Petitioner moved to withdraw its petition, arguing that efficiency favored...more

McDermott Will & Emery

The Application of “Authentication by Comparison” at the PTAB

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Directly addressing the application and operation of the Federal Rules of Evidence in proceedings before the Patent Trial & Appeal Board (Board), the US Court of Appeals for the Federal Circuit affirmed-in-part and...more

McDermott Will & Emery

When it Comes to Method of Use Claims, Preamble Language Regarding Intended Use is Limiting

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Directly addressing the application and operation of the Federal Rules of Evidence in proceedings before the Patent Trial & Appeal Board (Board), the US Court of Appeals for the Federal Circuit affirmed-in-part and...more

McDonnell Boehnen Hulbert & Berghoff LLP

Broad Opposes CVC's Motion to Exclude Evidence and CVC Files Reply

Late last month, Junior Party University of California/Berkeley, the University of Vienna, and Emmanuelle Charpentier (hereinafter, "CVC") and Senior Party The Broad Institute, Massachusetts Institute of Technology, and...more

McDonnell Boehnen Hulbert & Berghoff LLP

CRISPR Interference Parties File Motions to Exclude Evidence and for Oral Hearing

Junior Party University of California/Berkeley, the University of Vienna, and Emmanuelle Charpentier (hereinafter, "CVC") and Senior Party The Broad Institute, Massachusetts Institute of Technology, and Harvard University...more

McDermott Will & Emery

If it’s Not Legit, You Can’t Admit

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The US Court of Appeals for the Federal Circuit affirmed a district court ruling of non-infringement based on the inadmissibility of unauthenticated printouts of source code as evidence. Wi-LAN Inc. v. Sharp Elecs. Corp.,...more

Fitch, Even, Tabin & Flannery LLP

Federal Circuit Affirms Refusal to Admit Source Code Printouts Obtained from Third Parties

The Federal Circuit’s recent decision in Wi-LAN Inc. v. Sharp Electronics Corp. demonstrates potential difficulties for plaintiffs in proving infringement where third-party information is necessary to establish that...more

McDonnell Boehnen Hulbert & Berghoff LLP

HVLPO2, LLC v. Oxygen Frog, LLC (Fed. Cir. 2020)

Expert witness testimony is a frequent (almost ubiquitous) feature of patent litigation, if only because questions of the state of the art or the understanding of one having ordinary skill in the art are almost always at...more

BakerHostetler

Settlement Offers Can Be Used Against You (in a Patent Case)

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Rule 408 of the Federal Rules of Evidence protects settlement communications. The language of the rule is clear. Such communications are “not admissible . . . to prove or disprove the validity . . . of a disputed claim.” ...more

Vedder Price

The Seventh Circuit Addresses the Use of Utility Patents as Evidence of Functionality of Trade Dress

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On June 12, 2019, the U.S. Court of Appeals for the Seventh Circuit decided Bodum USA, Inc. v. A Top New Casting Inc., No. 18-3030, 2019 U.S. App. LEXIS 17555 (7th Cir. June 12, 2019). The case, led by Vedder Price...more

Jones Day

PTAB Webinar Addresses Hearsay and Authentication Issues

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On December 6, 2018, the PTAB hosted a Boardside Chat webinar on hearsay and authentication. The Administrative Patent Judges presenting the webinar were Michael Zecher, Tom Giannetti, and Grace Obermann. The webinar began...more

Akin Gump Strauss Hauer & Feld LLP

Evidence of Failed IPR Precluded When Validity No Longer at Issue

The Southern District of New York has granted a motion in limine precluding evidence of Defendant’s failed inter partes review (IPR) petition. The parties to the lawsuit are in the business of manufacturing and selling...more

Jones Day

Failure to Refute Challenges to Real Parties-in-Interest Terminates 3 IPR Proceedings

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In prior blog posts, we have commented on PTAB decisions terminating IPR proceedings due to the Petitioner’s failure to identify all real parties-in-interest. See blog posts on Sanction For Failing to Update Real Party In...more

Akin Gump Strauss Hauer & Feld LLP

The PTAB Holds That Testimony Concerning Customer Statements and Their State of Mind Constitutes Hearsay

On September 22, 2017, the United States Patent Trial and Appeal Board (PTAB) issued a final written decision regarding claims directed to a switching regulator comprising a power switch and a control circuit. The PTAB found...more

BakerHostetler

Divided Federal Circuit Panel Creates Patent Agent Privilege

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[W]e find that the unique roles of patent agents, the congressional recognition of their authority to act, the Supreme Court’s characterization of their activities as the practice of law, and the current realities of patent...more

Mintz - Intellectual Property Viewpoints

The Federal Circuit Newly Recognizes Patent-Agent Privilege

On March 7, 2016, the Court of Appeals for the Federal Circuit recognized “a patent-agent privilege extending to communications with non-attorney patent agents when those agents are acting within the agent’s authorized...more

Fenwick & West LLP

Overview of Comments on the USPTO's July 2015 Update to the Interim Examination Guidance

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In late July, the USPTO issued its July 2015 Update to the 2014 Interim Section 101 Patent Eligibility Guidance (IEG). The July 2015 Update addresses a number of the issues and concerns raised in the public comments to the...more

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