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Apple Patent Ownership

Jones Day

Federal Circuit Clarifies Scope of Patent Owner Estoppel

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The Federal Circuit recently issued a decision in SoftView LLC v. Apple Inc. clarifying the scope of patent owner estoppel set forth in 37 C.F.R. § 42.73(d)(3)(i). 2024 WL 3543902 (Fed. Cir. July 26, 2024). The regulation...more

Jones Day

Road Mapping Leads to Dead End

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On April 25, 2024, the PTAB denied Masimo Corporation’s (“Petitioner’s”) second petition for inter partes review (“IPR”) against U.S. Patent No. 10,076,257 (the “’257 patent”). Masimo Corp. v. Apple Inc., IPR2024-00071,...more

Jones Day

Patent Appendix That Was Referenced, But Not Incorporated, Is Not Prior Art

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In Apple Inc. v. DoDots Licensing Sols. LLC, IPR2023-00939, Paper 12 (PTAB Jan. 3, 2024) (“Decision”), the PTAB clarified what is and what is not part of the prior art, and as such what can be considered by the PTAB in an IPR...more

Bradley Arant Boult Cummings LLP

Some Touch Up Needed: The Federal Circuit Partially Confirms the PTAB’s View of Analogous Art

In Corephotonics, Ltd. v. Apple Inc., the Federal Circuit partially signed off on Apple’s win before the Patent Trial and Appeal Board (PTAB) invalidating a number of patents owned by Corephotonics relating to dual-aperture...more

Haug Partners LLP

Apple v. Corephotonics: PTAB Decision Focused on Expert’s “Typographical Error” Rather than the Parties’ Arguments Violated...

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On September 11, 2023, the Federal Circuit issued a precedential opinion that vacated and remanded two final written decisions of the Patent Trial and Appeal Board (the “Board”) in Apple, Inc. v. Corephotonics, Ltd.. The...more

Vondran Legal

Understanding the importance of Trade Dress Protection for your distinct and non-functional product designs and packaging

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What is the difference between a traditional trademark and trade dress protection? Traditional Trademarks - According to the USPTO - A trademark can be any word, phrase, symbol, design, or a combination of these things...more

Jones Day

Error In Declaration Insufficient To Sink IPR

Jones Day on

In a precedential opinion, the Court of Appeals for the Federal Circuit vacated a final written decision in which the Patent Trial and Appeal Board (“PTAB”) found that Apple had failed to meet its burden of showing...more

Linda Liu & Partners

Current State and Emerging Challenges of SEP Licensing for Intelligent Connected Vehicles in China (II)

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III. Principles and Methods Adopted by Chinese Courts for Calculating SEP Royalties in Lawsuits in the Field of Communications - 1. Regarding Justiciability of SEP License Disputes in China - Interpretation of the Supreme...more

Mintz - Intellectual Property Viewpoints

Apple’s Hold-out Strategy Nears End & Appears to Backfire in UK

The UK has again demonstrated the ongoing trend against hold-out, approving an order forcing Apple to commit to take a license on FRAND terms, to be determined by the court, or face an injunction. This ruling is the latest in...more

Haug Partners LLP

“Shall Be the Property” Is Insufficient to Automatically Assign Title to an Invention in a Contract

Haug Partners LLP on

On August 2, 2021, in Omni MedSci, Inc. v. Apple Inc., No. 20-1715, slip op. (Fed. Cir. Aug. 2, 2021), a Federal Circuit panel decision, with a dissent, upheld the district court’s denial of Apple Inc.’s (“Apple”) motion to...more

Foley & Lardner LLP

Federal Circuit Finds No Assignment by Employment Agreement

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In Omni MedSci, Inc. v. Apple Inc., the Federal Circuit held that language the inventor agreed to via his employment agreement “did not effectuate a present automatic assignment of [his] patent rights.” The issue arose in the...more

Mintz - Intellectual Property Viewpoints

Have you ever used a one-click ordering process online? Then you indirectly paid Amazon.

If you purchased anything from a website using a one-click purchase button, you indirectly paid Amazon for that ability, at least up until September 11, 2017 when Amazon’s patent to this technology expired. As a result,...more

McDermott Will & Emery

Patent Owner Statements in IPR May Result in Prosecution Disclaimer

Addressing for the first time the issue of whether statements made during America Invents Act post-grant proceedings can trigger a prosecution disclaimer, the US Court of Appeals for the Federal Circuit upheld the district...more

Morgan Lewis

Federal Circuit Extends Prosecution Disclaimer to IPR Proceedings

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The Federal Circuit recently held as a matter of first impression that statements made by a patent owner during an IPR proceeding can be considered for claim construction and relied upon to support a finding of prosecution...more

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