In a sua sponte review, USPTO Director Kathy Vidal continued her refinement of the PTAB’s “discretionary denial” practice. Specifically, the Director vacated the Board’s decision to deny institution in Volvo Penta of the...more
In response to the recent concentration of patent cases filed in a single court in Waco, Texas, all new patent cases filed in the Western District of Texas’s Waco Division will be distributed among the district’s various...more
Evaluating whether a patent claim is sufficiently “definite” under 35 U.S.C. § 112 requires looking beyond just the claim language itself. The Federal Circuit reaffirmed this fundamental principle in a recent decision...more
Inter partes review (IPR) proceedings can give rise to statutory and collateral estoppel. But these two bases for estoppel attach at different times, which can lead to asymmetrical outcomes in related district court...more
In the last two years, the Patent Trial and Appeal Board has issued two precedential decisions (in NHK and Fintiv) that set forth the board’s test for determining whether to deny an inter partes review (IPR) petition based on...more
12/23/2020
/ §314(a) ,
Claim Construction ,
Denial of Institution ,
Inter Partes Review (IPR) Proceeding ,
Parallel Proceedings ,
Patent Invalidity ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Precedential Opinion ,
Trial Practice Guidance
In a recent inter partes review (IPR), a patent owner overcame a facially persuasive obviousness challenge by relying on evidence from an earlier litigation to establish objective indicia of nonobviousness.
In RTI...more
The Federal Circuit recently upheld a district court’s decision to tax a patent infringement plaintiff with its opponent’s attorneys’ fees based on an inadequate presuit investigation into infringement, even though the patent...more
The Federal Circuit’s decision in Shaw Indus. Grp., Inc. v. Automated Creel Sys., Inc., 817 F.3d 1293 (Fed. Cir. 2016) raised the possibility that the inter partes review (IPR) estoppel of 35 U.S.C. § 315(e) might not do much...more
During IP license negotiations, prudent negotiators will often avoid sharing privileged information about the IP to avoid waiving the attorney-client privilege. But in a recent District of Massachusetts case, the court upheld...more
SUPREME COURT CASES -
U.S. Supreme Court Will Review PTAB’s Claim Construction Standard -
The U.S. Supreme Court has decided to review the claim construction standard used by the Patent Trial and Appeal Board (PTAB)...more
SUPREME AND FEDERAL COURT CASES -
U.S. Supreme Court Denies Writ to Overturn Application of the Kessler Doctrine -
The U.S. Supreme Court denied software developer’s SpeedTrack writ to overturn the Federal...more
1/18/2016
/ America Invents Act ,
Apple ,
Claim Construction ,
CLS Bank v Alice Corp ,
Inter Partes Review (IPR) Proceeding ,
JMOL ,
Kessler Doctrine ,
Office Depot ,
Patent Infringement ,
Patent Invalidity ,
Prior Art ,
SCOTUS ,
Software ,
VoIP ,
Wal-Mart
DISTRICT COURT CASES -
Judge Grants New Trial, Vacating $533 Million Verdict against Apple -
A Texas federal court vacated a $533 million verdict against Apple in favor of Smartflash because of an improper jury...more
7/13/2015
FEDERAL CIRCUIT CASES -
PTAB’s Broadest Reasonable Interpretation Standard Affirmed by Fed. Circuit in First Ever IPR Appeal -
On Wednesday, February 4, 2015, the Court of Appeals for the Federal Circuit (CAFC)...more
2/9/2015
/ Appeals ,
Broadest Reasonable Interpretation Standard ,
CAFC ,
CLS Bank v Alice Corp ,
Covered Business Method Patents ,
Cuozzo Speed Technologies ,
Inter Partes Review (IPR) Proceeding ,
Patent Trial and Appeal Board ,
Patent-Eligible Subject Matter ,
Patents ,
Trademarks
DISTRICT COURT CASES -
Akin Gump Wins Section 101 Motion to Dismiss, Invalidating 887 Patent Claims -
Following Supreme Court precedent set forth in Alice Corp. Pty. Ltd. v. CLS Bank International, Judge Sleet...more
2/2/2015
/ CLS Bank v Alice Corp ,
Hana Financial v Hana Bank ,
Jury Questions ,
Likelihood of Confusion ,
Motion to Dismiss ,
Patent Infringement ,
Patent Litigation ,
Patent-Eligible Subject Matter ,
Patents ,
SCOTUS ,
Summary Judgment ,
Tacking ,
Trademarks
FEDERAL CIRCUIT CASES -
Akin Gump Wins Summary Judgment of Non-Infringement -
Akin Gump obtained a significant victory on summary judgment for HTC and AT&T in a patent infringement case against Adaptix, Inc., an...more
1/26/2015
/ Apple ,
AT&T ,
Claim Construction ,
HTC ,
Inter Partes Review (IPR) Proceeding ,
Patent Infringement ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Summary Judgment ,
Teva v Sandoz ,
Verizon
DECISIONS ON PATENTABLE SUBJECT MATTER UNDER ALICE CORP. -
Federal Circuit Invalidates Patent Using the Supreme Court’s Alice Corp. § 101 Analysis -
On November 14, 2014, the Federal Circuit held a patent...more
Federal Circuit: Licensor Has No Standing to Sue Where it Has Transferred “All Substantial Rights” to Its Licensee -
The Federal Circuit affirmed a decision by Judge Schneider in the Eastern District of Texas to...more