Qasim Jami

Qasim Jami

McDermott Will & Emery

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To Be A Real Party-In-Interest Entity Must Control or Fund the Litigation

Sipnet EU S.R.O. v. Straight Path IP Group, Inc. - In a final written decision of an inter partes review (IPR) determining that the petitioner showed by a preponderance of the evidence that challenged claims were...more

12/3/2014 - Inter Partes Review Proceedings Litigation Funding Patent Litigation Patent Trial and Appeal Board Patents Real Party in Interest

Patent Owner Must Prove Patentability of Proposed Amended Claims (Including Prior Art Date)

Neste Oil Oyj v. REG Synthetic Fuels, LLC - In an order addressing a motion for a sur-reply to introduce evidence to antedate a prior art reference in an inter partes review (IPR) proceeding, the U.S. Patent and...more

11/21/2014 - Inter Partes Review Proceedings Patent Trial and Appeal Board Patents Prior Art Sur-Reply

Parties Must “Meet and Confer” Before Requesting Conference Call

Metrics, Inc. v. Senju Pharmaceutical Co., Ltd. - In an order involving two related inter partes reviews (IPRs), the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board (PTAB or the Board) denied a patent...more

11/18/2014 - Inter Partes Review Proceedings Meet and Confer Patent Trial and Appeal Board Patents Pharmaceutical Patents

Expungement of Unauthorized Filings Under 37 CFR § 42.7(a)

MotivePower, Inc. v. Cutsforth, Inc. - In a sua sponte order concerning an inter partes review (IPR) proceeding, the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board (Board) expunged from the record in...more

10/31/2014 - Expungement Inter Partes Review Proceedings Patent Filings Patent Litigation Patents

No Motivation to Combine Where Combination Requires Complete Redesign

Shaw Industries Group, Inc. v. Automated Creel Systems, Inc. - In a final written decision for two consolidated inter partes review (IPR) proceedings, the U.S. Patent and Trademark Office’s Patent Trial and Appeal...more

10/30/2014 - Inter Partes Review Proceedings Manufacturers Obviousness Patent Litigation Patents

High Bar for Discovery Motions in IPR

Permobil Inc. v. Pridemobility Products Corp. - Addressing a patent owner's motion to compel a petitioner to produce documents concerning petitioner’s alleged copying in an inter partes review (IPR), the U.S. Patent...more

9/9/2014 - Discovery Document Productions Inter Partes Review Proceedings Patent Litigation Patent Trial and Appeal Board Patents

Commercial Success But No Nexus

Smith & Nephew, Inc. v. ConvaTec Technologies, Inc. - In the final written decisions of two related inter partes reviews (IPRs), the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board (PTAB) sided with...more

7/10/2014 - Nexus Patent Infringement Patent Litigation Patents USPTO

The Duty to Indemnify Does Not Create Privity

Apple Inc. v. Achates Reference Publishing, Inc. - In the final written decisions of two related inter partes reviews (IPRs) concerning patents in the same family, the U.S. Patent and Trademark Office’s Patent Trial...more

7/10/2014 - Indemnification Indemnity Agreements Inter Partes Review Proceedings Patent Infringement Patent Litigation Patent Trial and Appeal Board Patents Privity of Contract

Claim Term “Adapted to” Means “Configured to” — Not Just “Capable of” - In re Giannelli

The U. S. Court of Appeals for the Federal Circuit reversed an obviousness rejection by the U.S. Patent and Trademark Office (PTO) Patent Trial and Appeal Board’s (the Board) of application claims directed to a row pulling...more

2/28/2014 - Claim Construction Patent Infringement Patent Litigation Patents USPTO

Finding of No Inequitable Conduct Reversed on Appeal -- Ohio Willow Wood Co. v. Alps South LLC

Addressing statements and representations made to the Board of Patent Appeals and Interferences (Board) in the context of reexaminations, the U.S. Court of Appeals for the Federal Circuit reversed a district court’s grant of...more

1/2/2014 - Expert Testimony Inequitable Conduct Patent Litigation Patents

IP Update, Vol. 16, No. 9, September 2013

Patents/Preliminary Injunction: Preliminary Injunction Ordered Based on Appellate Claim Construction Aria Diagnostics, Inc. v. Sequenom, Inc. - Addressing a preliminary injunction filed by a defendant in a...more

10/1/2013 - Claim Construction Copyright Expert Testimony Fair Use Governmental Immunity Governmental Liability Infringement Inter Partes Reexamination ITC Jurisdiction Obviousness Patent Term Adjustment Patents Preliminary Injunctions Registration SCOTUS Sovereign Immunity Theft Trade Secrets Trademarks USPTO Work-For-Hire

IP Update, Vol. 16, No. 6, June 2013

Patents / Patent Eligible Subject Matter - Supreme Court to Myriad: Isolated DNA Sequences Are Not Patent-Eligible Subject Matter -- AMP et al. v. Myriad Genetics, Inc.: In a 9–0 decision the Supreme...more

6/27/2013 - Abuse of Discretion AMP v Myriad Burden of Proof Copyright Damages DNA False Advertising First Amendment Human Genes Infringement Lanham Act Myriad Oprah Winfrey Patent Terms Patent-Eligible Subject Matter Patents Permanent Injunctions SCOTUS Time Warner Trade Secrets Trademarks USPTO Willful Infringement

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