Jason A. Engel

Jason A. Engel

K&L Gates LLP

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Setting Up the Scope of IPR Estoppel for the Federal Circuit

On January 11, Judge Sue L. Robinson issued her final decision on statutory estoppel in district court post-inter partes review (“IPR”) proceeding, confirming her decision on summary judgement of invalidity and cross motion...more

2/2/2017 - Administrative Proceedings Estoppel Inter Partes Review (IPR) Proceeding Patent Trial and Appeal Board Patents Toshiba

Supreme Court Signals Shift in Approach to Damages in Design Patent Infringement Cases

In its first design patent case in over a century, the Supreme Court on Tuesday, December 6, 2016, reversed a damages award Apple Inc. (“Apple”) had won over Samsung Electronics Co., Ltd. (“Samsung”) in their protracted...more

12/13/2016 - Apple Apple v Samsung Design Patent iPhone Patent Infringement Patent Litigation Patents Samsung Smartphones

Federal Circuit Confirms Cuozzo Does Not Disturb § 314(d) Bar on Appellate Review of PTAB Reconsideration of IPR Institutions

The Federal Circuit’s recent decision in Medtronic, Inc. v. Robert Bosch Healthcare Systems, Inc., addressed the effect of the Supreme Court’s decision in Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131 (2016), on the issue...more

10/25/2016 - Cuozzo Speed Technologies v Lee Inter Partes Review (IPR) Proceeding Medtronic Patent Litigation Patent Trial and Appeal Board Patents

Practical Implications from the Federal Circuit’s Rare en Banc Reversal in Apple v. Samsung

In a precedential opinion issued en banc on Friday, October 7, 2016, the Federal Circuit overturned a panel decision, affirming and reinstating the district court’s judgment and the jury’s verdict. The majority opinion...more

10/13/2016 - Apple Apple v Samsung Claim Construction Corporate Counsel En Banc Review Mobile Devices Motorola Obviousness Patent Infringement Patent Litigation Patents Samsung Smartphones Technology Telecommunications Teva v Sandoz Young Lawyers

What You Need to Know About the Recent Federal Circuit Rule Changes

The U.S. Court of Appeals for the Federal Circuit recently implemented significant amendments to its Rules of Practice (“Rules”). The changes apply to all cases docked on or after April 1, 2016. In large part, the...more

5/2/2016 - Corporate Counsel Intellectual Property Protection Patents Rules of Practice Young Lawyers

PTAB Lays Initial Groundwork for Post-Remand Proceedings

In a key development regarding Inter Partes Review (IPR) procedure, on September 1, 2015, the Patent Trial and Appeal Board (the “Board”) issued an order that lays the groundwork for how the Board may address cases on remand...more

9/4/2015 - Inter Partes Review (IPR) Proceeding Microsoft Patent Infringement Patent Litigation Patent Trial and Appeal Board Patents

USPTO Announces Second Round of AIA Rule Changes

On August 20, 2015, the Patent and Trademark Office published, in the Federal Register, a set of “Amendments to the Rules of Practice for Trials Before the Patent Trial and Appeal Board” that would amend 37 CFR Part 42. Among...more

8/24/2015 - America Invents Act Broadest Reasonable Interpretation Standard Cuozzo Speed Technologies Federal Register Patent Ownership Patent Trial and Appeal Board Patents USPTO

Inter Partes Review Client Alert Series: Amending Claims During Inter Partes Review

The Patent Trial and Appeal Board continues to make clear that amending claims during post-grant inter partes review (“IPR”) challenges is far different from amending claims during original examination or reexamination. The...more

12/20/2013 - Inter Partes Review (IPR) Proceeding Motion to Amend Patents Prior Art

Five Lessons Learned at a PTAB Hearing

Following a recent hearing involving K&L Gates’ lawyers before the Patent Trial and Appeal Board (“PTAB”) on behalf of the patent owner in an inter partes reexamination, several key practice tips emerged that may be useful as...more

12/2/2013 - Inter Partes Review (IPR) Proceeding Patent Litigation Patent Trial and Appeal Board Patents

Major Patent Law Changes First-to-File Provisions - Effective March 16, 2013

On Saturday, March 16, 2013, the “first-inventor-to-file” provisions of the Leahy-Smith America Invents Act (“AIA”) go into effect. These provisions replace the current “first-to-invent” system. In addition to various other...more

12/19/2012 - America Invents Act First-to-File First-to-Invent Patent Applications Patent Reform Patents Prior Art USPTO

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