Nathan Smith

Nathan Smith

McDermott Will & Emery

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Latest Publications


Third Party Subpoena Permitted in IPR - Marvell Semiconductor, Inc. v. Intellectual Ventures I LLC

After briefing on the Garmin factors to determine if additional discovery was “necessary in the interest of justice” during an inter partes review (IPR), the Patent Trial and Appeal Board (PTAB or Board) granted the patent...more

4/6/2015 - Additional Discovery Discovery Garmin Factors Inter Partes Review Proceedings Patent Trial and Appeal Board Patents

Threshold Issues: IPR Not Derailed by Unidentified D/B/A Name or Prior ANDA Certification - Metrics, Inc. v. Senju Pharmaceutical...

Addressing threshold jurisdictional issues of a petition for inter partes review (IPR), the U.S. Patent and Trademark Office’s (USPTO) Patent Trial and Appeal Board (PTAB or Board) determined that a d/b/a name does not create...more

4/3/2015 - ANDA Inter Partes Review Proceedings Jurisdiction Patent Trial and Appeal Board Patents Pharmaceutical Industry Pharmaceutical Patents Real Party in Interest

Claims Must Be Limited to Financial Activities to Be Covered Business Methods -, Inc. v. Applications in Internet...

Narrowing the application of covered business method (CBM) patent review, in two recent cases, the Patent Trial and Appeal Board (PTAB or Board) concluded that patents whose claims may apply to industries other than the...more

4/1/2015 - America Invents Act Covered Business Method Patents Covered Business Method Proceedings Data Processors JPMorgan Chase Patent Trial and Appeal Board Patents Salesforce Software Software Developers

Gilead Warns: Examine Patent Portfolios for Double Patenting Pitfalls

Gilead Sciences, Inc. v. Natco Pharma Ltd. - Addressing invalidation of a patent for obviousness-type double patenting, the U.S. Court of Appeals for the Federal Circuit vacated and remanded a district court’s...more

6/2/2014 - Appeals Gilead Sciences Natco Pharma Obviousness Patent Litigation Patents Pharmaceutical Industry Pharmaceutical Patents

When Is a Claimed Drug Formulation Enabled and Adequately Described?

Alcon Research Ltd. v. Barr Labs., Inc. - Addressing the requirements for enablement and written description, the U.S. Court of Appeals for the Federal Circuit reversed a district court’s ruling of patent invalidity,...more

5/5/2014 - ANDA Patent Applications Patent Litigation Patents Pharmaceutical Industry Prescription Drugs Written Descriptions

IP Update, Vol. 16, No. 10, October 2013

No Case or Controversy in DJ Against Patentee Who Sued Manufacturer’s Customers: Cisco Systems, Inc. v. Alberta Telecommunications Research Center - In a non-precedential opinion addressing declaratory judgment...more

11/1/2013 - Cisco Claim Construction Copyright FRAND Offsets Patent Infringement Patent Litigation Patent-Eligible Subject Matter Patents Telecommunications Trademark Policing Trademarks

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