Last week, the Federal Circuit issued a decision holding that parties can contractually bargain away their rights to file petitions for Inter Partes Review (“IPR”) at the Patent Trial and Appeals Board (“the Board”). This...more
A recent decision by a Patent Trial and Appeal Board (PTAB) panel in Canadian Solar Inc., et al v. The Solaria Corporation may have opened the door for aggrieved parties to seek rehearing for any reason, rather than the...more
In our penultimate patent owner tip for surviving an instituted IPR, we turn our discussion to defending the deposition of your expert. At this stage of the proceeding, your Patent Owner Response has been filed, and all the...more
Last week we looked at what circumstances favor amending claims in an IPR . We now turn our discussion to those circumstances when a patent owner should think twice about amending, including when significant past damages...more
When confronted with instituted IPRs, Patent Owners should identify and exploit issues that the Petition glossed over and bring those to the attention of the Board. This will highlight for the Board important issues that the...more
As a Patent Owner in an instituted Inter Partes Reviews (“IPR”), one of the first and most critical tasks before you is deposing the Petitioner’s witnesses, including its experts. But approaching an IPR deposition like a...more
The Federal Circuit’s recent Uniloc 2017 v. Facebook Inc. decision is a mixed bag of good and bad news for both patent owners and inter partes review petitioners. On the plus side for patent owners (but not for petitioners),...more
On December 11, 2019, the U.S. Supreme Court struck down the U.S. Patent and Trademark Office’s (USPTO) controversial policy of shifting attorneys’ fees in Peter v. NantKwest, Case No. 18-801. The Court ruled that the USPTO...more
12/18/2019
/ 35 U.S.C. § 145 ,
American Rule ,
Attorney's Fees ,
Civil Claims ,
Fee-Shifting ,
Litigation Fees & Costs ,
Patent Act ,
Patent Applicants ,
Patent Trial and Appeal Board ,
Patents ,
Peter v NantKwest Inc ,
Prevailing Party ,
SCOTUS ,
Section 145 ,
USPTO
Since the Supreme Court’s decision in Alice Corp. v. CLS Bank Int’l on patentable subject matter, courts have tried to follow the prescribed framework. Under Alice, patent claims are invalid if directed to “abstract ideas”...more