Zachary Getzelman

Zachary Getzelman

McDermott Will & Emery

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Inter Partes Review Is Not for Pending Claims - Ford Motor Co. v. Signal IP, Inc.

Addressing the issue of the utility of consolidating an inter partes review (IPR) with an ex parte reexamination proceeding, the U.S. Patent and Trademark Office’s (PTO) Patent Trial and Appeal Board (PTAB or Board) denied a...more

1/5/2016 - Case Consolidation Ex Partes Reexamination Ford Motor Inter Partes Review Proceedings Patent Trial and Appeal Board Patents

Non-Litigant, You Are Not Needed in This IPR - Unified Patents Inc. v. C-Cation Techs., Inc.

Addressing joinder issues, the Patent Trial and Appeal Board (PTAB or Board) denied a request to institute an inter partes review (IPR) and a request for joinder, finding joinder would complicate the instituted IPR and that...more

12/11/2015 - Inter Partes Review Proceedings Joinder Patent Litigation Patent Owner Preliminary Response Patent Trial and Appeal Board Real Party in Interest

Standing for CBM Proceeding Only Necessary at Time of the Petition - Westlake Servs., LLC v. Credit Acceptance Corp.

Addressing the issue of whether standing must be maintained throughout a covered business method (CBM) proceeding under the America Invents Act (AIA), the U.S. Patent and Trademark Office’s (PTO’s) Patent Trial Appeal Board...more

11/6/2015 - America Invents Act Covered Business Method Proceedings Patent Infringement Patent Trial and Appeal Board Patents Standing

Claim Amendments Are Not Always What They Seem - R+L Carriers, Inc. v. Qualcomm, Inc.

Addressing whether language added to a claim during ex parte re-examination resulted in substantive changes, the U.S. Court of Appeals for the Federal Circuit affirmed the lower court’s dismissal of the infringement claims,...more

11/5/2015 - Damages Ex Partes Reexamination Patent Infringement Patent Litigation Patent-in-Suit Patents Prior Art Qualcomm USPTO

Enablement: Multiple Measurement Methods Can Lead to the Same Result - Ethicon Endo-Surgery, Inc. v. Covidien, Inc.

Addressing the issues of indefiniteness and non-infringement for both utility and design patents, the U.S. Court of Appeals for the Federal Circuit reversed and vacated in part the district court’s grant of summary judgment...more

10/6/2015 - Appeals Claim Construction Design Patent Discovery Enablement Inquiries Genuine Issue of Material Fact Indefiniteness Markman Hearing Noninfringement Patent Infringement Patent Litigation Patents Reversal Summary Judgment Utility Patents Vacated

Keep the Petitions Concise - Apple, Inc. v. Contentguard Holdings, Inc.

Addressing the issues of voluminous petitions and obviousness, the U.S. Patent and Trademark Office’s (PTO) Patent Trial and Appeal Board (PTAB or Board) denied a request to institute an inter partes review (IPR), finding the...more

8/7/2015 - Apple Inter Partes Review Proceedings Obviousness Patent Infringement Patent Litigation Patent Trial and Appeal Board Patents USPTO Young Lawyers

Backup Anticipation with Obviousness - Dell Inc. v. Elecs. & Telecomms. Research Inst.

Addressing the issue of estoppel and joinder, the U.S. Patent and Trademark Office Patent Trial and Appeal Board (PTAB) denied a petitioner’s challenge, finding the petitioner was estopped from requesting the additional...more

6/4/2015 - Dell Estoppel Inter Partes Review Proceedings Patent Trial and Appeal Board Patents USPTO

Payment Information Does Not Necessarily Make a CBM - SEGA of Am., Inc. v. Uniloc USA, Inc

Addressing the issue of what qualifies as a covered business method (CBM) under the America Invents Act (AIA), the U.S. Patent and Trademark Office’s (PTO’s) Patent Trial and Appeal Board (PTAB or Board) denied institution of...more

5/18/2015 - America Invents Act Covered Business Method Patents Patent Trial and Appeal Board Patents Sega Software USPTO

Use Belt and Suspenders; Backup Anticipation with Obviousness - Dell Inc. v. Elecs. & Telecomms. Research Inst.

Addressing the issue of anticipation in the context of an inter partes review (IPR), the U.S. Patent and Trademark Office’s (USPTO’s) Patent Trial and Appeal Board (Board) rejected a petitioner’s anticipation challenge,...more

4/6/2015 - Dell Inter Partes Review Proceedings Patents Prior Art

PTAB Designates Recent Ruling as Information: Proposed Complaints Do Not Trigger the Time-Bar Under § 315(b) - TRW Automotive US...

In a ruling recently designated as informative, the U.S. Patent and Trademark Office’s (PTO’s) Patent Trial and Appeal Board (PTAB or Board) rejected a patent owner’s argument that the petitions were time-barred, finding the...more

3/10/2015 - Amended Complaints Motion for Leave Patent Trial and Appeal Board Patents

Assignment Consideration Can Be Representation, Support and Opportunity - Memorylink Corp. v. Motorola Solutions, Inc.

Addressing whether a patent was properly assigned and whether claims of inventorship fraud were properly barred by the statute of limitations, the U.S. Court of Appeals for the Federal Circuit affirmed a lower court’s summary...more

2/13/2015 - Assignment of Inventions Assignments Fraud Infringement Intellectual Property Litigation Inventions Inventors Motorola Patent Infringement Patent Litigation Patents Statute of Limitations

Cost of Combination Doesn’t Obviate Obviousness

Polaris Wireless, Inc. v. TruePosition, Inc. - Addressing the issues of patent priority dates (where the asserted priority document did not share an inventor with the challenged patent) and motivation to combine, the...more

1/9/2015

Fabricating Evidence and Losing Arbitration

Seagate Tech., LLC v. W. Digital Corp - Addressing an issue of whether an arbitrator inappropriately sanctioned a party that had been found to have fabricated evidence and whether the arbitrator refused to consider...more

12/17/2014 - Arbitration Evidence Falsified Documents Sanctions Software Developers

Know the Patent Specification Before Filing a Motion to Amend

Veeam Software Corp. v. Symantec Corp. - Addressing issues of claim construction and the requirements for a motion to amend, the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board (Board) ruled that the...more

10/23/2014 - Motion to Amend Patent Litigation Patent Trial and Appeal Board Patents Software Symantec

The Heavy Burden of a Motion to Amend

LaRose Indus., LLC v. Capriola Corp. - Addressing issues of claim construction and the requirements of a motion to amend, the Patent Trial and Appeal Board (the Board) ordered the claims at issue were unpatentable and...more

9/8/2014 - False Claims Act (FCA) Motion to Amend Patent Litigation Patent Trial and Appeal Board Patents

Lie Still: Claim Construction on Hospital Bed Unduly Limited

Hill-Rom Services, Inc. v. Stryker Corp. - Addressing whether there were any reasons to depart from the plain and ordinary meaning of terms in claim construction, the U.S. Court of Appeals for the Federal Circuit...more

8/5/2014 - Appeals Claim Construction Patent Infringement Patent Litigation Patents Technology Wireless Technology

Claim Construction: When Figures Do Not Match Their Description

GE Lighting Solutions, LLC v. Agilight, Inc. - Addressing the issue of claim construction in light of an appeal of summary judgment, the U.S. Court of Appeals for the Federal Circuit reversed and remanded a district...more

7/7/2014 - Claim Construction General Electric Patent Infringement Patent Litigation Patents

Design Patents Go to the Dogs: District Court Not Required to Provide an Express Verbal Description of the Claimed Design

MRC Innovations, Inc. v. Hunter Mfg., LLP - Addressing the nature of analyzing primary and secondary references for purposes of determining whether a design patent is obvious, the U.S. Court of Appeals for the Federal...more

6/4/2014 - Appeals Design Patent Patent Infringement Patent Litigation Patents

Properly Analyzing Breach of a NDA - Loftness Specialized Farm Equip., Inc. v. Twiestmeyer

The U.S. Court of Appeals for the Eighth Circuit has explained that under Minnesota law it is inappropriate to apply the test for the tort of misappropriation of trade secrets and confidential information when the issue is...more

4/9/2014 - Confidential Information Employer Liability Issues Non-Disclosure Agreement Restrictive Covenants Trade Secrets

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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