News & Analysis as of

Patent Trial and Appeal Board Section 337

American Conference Institute (ACI)

[Event] 16th Annual Practitioners’ Think Tank on ITC Litigation & Enforcement - May 29th - 30th, Washington, DC

Returning to Washington in May, ACI’s 16th Annual Practitioners’ Think Tank on ITC Litigation & Enforcement is your opportunity to learn from and network with key members of the ITC Bench, senior ITC Attorneys and leading...more

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

2023 Design Patents Year in Review: Analysis & Trends

Not surprisingly, 2023 was another notable year for design rights around the globe. However, nowhere more than the U.S. did we see court decisions that will, in the case of one, and could in the case of another, have...more

Wolf, Greenfield & Sacks, P.C.

[Hybrid Event] Damage Control: Mitigating ITC Remedial Orders with Effective Redesign and Parallel Litigation Strategies -...

Join litigation shareholder Libbie DiMarco as she breaks down the latest developments for mitigating ITC remedial orders with effective litigation strategies ranging from product redesigns (and when to introduce them) to PTAB...more

BakerHostetler

2024 BakerHostetler IP Perspectives - Forecasts, Trends and Accomplishments

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Trends, triumphs and challenges – the first annual BakerHostetler IP Perspectives (BHIPP) provides insights on all three fronts in the complex world of intellectual property (IP). From the potential hazards associated with...more

Dunlap Bennett & Ludwig PLLC

Apple Watch Imports (Possibly) Banned By The ITC: What Patent Owners Need To Know

Regular consumers now enjoy a front-row seat to the long-running intellectual property dispute between Apple, the tech giant based in Cupertino, California, and Masimo, a medical device company based in Irvine, California....more

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

2022 Design Patents Year in Review: Analysis & Trends

Last year, in our inaugural issue of “The Year in Review,” we reported that since the landmark jury verdict in the IP litigation between Apple and Samsung in 2012, which awarded more than $1B to Apple for infringement of...more

Husch Blackwell LLP

International Trade Law: 2022 Year in Review & Outlook for 2023

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We are pleased to announce that our team’s fourth-annual international trade law year-in-review report was published just before the New Year. In it, we take a detailed look at how 2022 played out and explore how 2023 might...more

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

2021 Design Patents Year in Review: Analysis and Trends

This year, we will mark the 10-year anniversary of the first jury verdict in the landmark IP litigation between Apple and Samsung, which resulted in the jury awarding more than $1B to Apple. More than $500M of that award was...more

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

PTAB Strategies and Insights - May 2021: How The Board is Weighing the Fintiv Factors - A Tale of Three Petitions

We have seen that decisions to institute an inter partes review (IPR) when the challenged patent is part of a parallel proceeding have become rare recently in light of the Fintiv factors. Apple Inc. v. Fintiv, Inc.,...more

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

PTAB Strategies and Insights - May 2021

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 all stakeholders looking at the entire...more

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

Federal Circuit Appeals from the PTAB and ITC: Summaries of Key 2020 Decisions

[co-author: Kathleen Wills] Last year, the global COVID-19 pandemic created unprecedented challenges for American courts. By making several changes, however, the U.S. Court of Appeals for the Federal Circuit was able to...more

McGuireWoods LLP

Dilemma of the Unnamed Section 337 Respondent

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One unique aspect of the International Trade Commission’s authority under Section 337 is the power to issue general exclusion orders (GEO). Under such orders, companies never named as a respondent in an ITC complaint can find...more

Alston & Bird

Patent Case Summaries

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A weekly summary of the precedential patent-related opinions issued by the Court of Appeals for the Federal Circuit and the opinions designated precedential or informative by the Patent Trial and Appeal Board....more

McDermott Will & Emery

PTAB Refuses to Deny IPR Petitions Based on Parallel ITC Proceeding

Addressing an inter partes review (IPR) petition filed by respondents to an earlier-filed International Trade Commission (ITC) Section 337 investigation, the Patent Trial and Appeal Board (PTAB) declined to treat the petition...more

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

PTAB Strategies and Insights - November 2018: The Growing Influence of Post-Grant Proceedings in Section 337 Investigations

Since the passage of the Leahy-Smith America Invents Act (AIA), post-grant proceedings at the U.S. Patent and Trademark Office (USPTO) are interacting more with Section 337 investigations at the International Trade Commission...more

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

PTAB Strategies and Insights - November 2018

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 all stakeholders looking at the entire...more

Jones Day

ITC Provides a Way to Work Around IPR Estoppel

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In In re Certain Magnetic Tape Cartridges and Components Thereof, 337-TA-1058 (ITC October 2, 2018, Order), Administrative Law Judge Cheney ruled that even if a respondent is estopped from raising certain invalidity...more

Mintz - Intellectual Property Viewpoints

ALJ Cheney Holds that IPR Estoppel Does Not Apply to ITC Investigative Staff

In an Initial Determination finding that Fujifilm violated Section 337 by infringing two patents held by Sony, ALJ Cheney found another patent invalid after ruling that inter partes review (“IPR”) estoppel does not apply to...more

WilmerHale

Federal Circuit Patent Updates - August 2018

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Ericsson Inc. v. Intellectual Ventures I LLC (No. 2017-1521, 8/27/18) (Reyna, Taranto, Chen) Reyna, J. - Vacating and remanding the PTAB’s IPR decision because the PTAB erred in not considering portions of the petitioner’s...more

WilmerHale

Enforcing IP Rights In China: A Road Map For US Companies

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The United States loses between $225 and $600 billion each year due to misappropriation of intellectual property — an estimated 50-80 percent of which has been attributed to China. While Chinese officials have taken steps to...more

Jones Day

For Substitute Claims, “Possession is Nine-Tenths of the Law”

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On March 20, 2018, the PTAB issued a Final Written Decision in Kapsch TrafficCom IVHS Inc. v. Neology, Inc., Case IPR2016-01763, Paper 60 (PTAB Mar. 20, 2018), finding that Petitioner Kapsch TrafficCom IVHS Inc. (“Kapsch”)...more

Dickinson Wright

Intellectual Property Tailwinds Continue To Favor Section 337 Enforcement Actions Before The International Trade Commission

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Section 337 intellectual property enforcement actions before the International Trade Commission (“ITC”) continue to gain in popularity....more

Jones Day

Commission to Weigh in on IPR Estoppel

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The Commission has determined to review an initial determination finding that Respondent Ford is estopped under 35 U.S.C. § 315(e)(2) from asserting certain invalidity defenses previously adjudicated by the Patent Trial and...more

Jones Day

ITC Remains Unpersuaded by Final PTAB Rulings

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This week the ITC stood firm in its position that final PTAB rulings of unpatentability in IPR proceedings are not grounds to modify, suspend, or rescind remedial orders. In Certain Foam Footwear, Inv. No. 337-TA-567, the ITC...more

Jones Day

Federal Circuit Stay Order Demonstrates Value of Redesign as Defense in ITC Actions

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The Federal Circuit has determined to partially stay an ITC exclusion order as it pertains to products redesigned after the remedial orders issued. We have previously posted about Certain Network Devices, Related Software and...more

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