News & Analysis as of

No Surprises At Hearing; Demonstratives Must Only Contain Evidence of Record

In TriVascular, Inc. v. Shaun Samuels, IPR2013-00493, Paper 39 (September 2, 2014) the Board sustained a number of objections to the patent owner’s demonstrative exhibits....more

You have to Object to Exclude

In K40 Electronics, LLC v. Escort Inc., IPR2013-00203, Paper 46 (August 27, 2014), the Board denied the patent owner’s motion to exclude. The Board first review the proper procedure for objecting to, and moving to exclude,...more

Expert Testimony Must Be Supported by Evidence

Corning Inc. v. DSMIP Assets B.V. - The Patent Trial and Appeal Board (PTAB) issued final written decisions in 10 inter partes review (IPR) challenges. Although early IPR decisions generally have sustained...more

Harman v. Honeywell International

The Supreme Court of Virginia’s recent opinion in Harman v. Honeywell International, Inc., Case No. 130627 (June 5, 2014) contains a wealth of analysis on a number of evidentiary rules that every trial lawyer will likely...more

Invalidity Expert Excluded Where Expert Failed to Conduct a Proper Written Description Analysis

Plaintiff Trading Technologies International, Inc. ("TT") moved to strike the invalidity expert report of the defendant, CQG. TT made two arguments its motion: " that Dr. Mellor failed to conduct a proper written description...more

IP Newsflash - May 2014

Supplemental Information Containing Petitioner’s Statements Allowed in IPR - A PTAB panel has granted a patent owner’s (owner) motion to submit supplemental information in an inter partes review (IPR). A motion to...more

IP Newsflash - May 2014

Improper Submission of New Evidence Undermines Patent Challenge - In its final written decision, a PTAB panel granted a patent owner’s (owner) motion to exclude evidence submitted by a petitioner in support of its...more

On Remand, Federal Circuit Comes Around to Supreme Court’s Way of Thinking

Medtronic Inc. v. Boston Scientific Corp. - On a remand from the Supreme Court, the U.S. Court of Appeals for the Federal Circuit, addressing the issue of the sufficiency of infringement evidence, affirmed a district...more

Patentee Blindsided By Partially Uncorroborated Evidence

Evidence of what occurred over 15 years ago was ultimately accepted despite being only partially corroborated. As a result, many of the claims from Damorgold’s patent have been held invalid for lack of novelty based on that...more

Evidence in Support of Petition for Venue Transfer Must Be Sufficiently Specific - In re Apple Inc.; In re Barnes & Noble

In two decisions from identical panels, the U.S. Court of Appeals for the Federal Circuit denied mandamus petitions seeking to direct two district courts to vacate their denials of petitioners’ motions to transfer their...more

Medtronic v. Mirowski Family Ventures: The Burden Of Proof Of Infringement In A Declaratory Judgment Action

On January 22, 2014, the Supreme Court issued its opinion in Medtronic, Inc. v. Mirowski Family Ventures, LLC.1 The Court held that the burden of persuasion for proving patent infringement remains with the patentee in a...more

PersonalWeb v. Google: Duty to Preserve Emails Began When Patent Was Acquired

PersonalWeb Technologies, LLC ("PersonalWeb") filed a patent infringement action against Google for infringement of its "Truenames" patents. Google filed a motion for sanctions based on a contention that PersonalWeb...more

Board Explains Process for Correcting Exhibits to a Petition

In an Order for the Conduct of Proceedings in GSI Technology, Inc. v. Cypress Semiconductor Corporation, [IPR2014-00202], Paper 8 (February 27, 2014), the Board explained the process for correcting an Exhibit under 37 C.F.R....more

Supreme Court’s Opinion Reiterates Principle that Patent Holders Bear Burden of Proof in Infringement Actions

The Supreme Court, in a unanimous decision issued on January 22, 2014, held that the burden of proof in patent infringement actions falls upon the patentee, regardless of whether the patentee is the moving party in the...more

District Court Refuses to Vacate Sanctions Ruling for Spoliation after Settlement

Digital-Vending Services International, LLC ("Digital-Vending") filed a patent infringement action against The University of Phoenix, Inc. and Apollo Group, Inc. ("Defendants"). During the course of the litigation, the...more

Playing Fast and Loose With Corroborating Evidence: Patent Advocacy Inequitable Conduct

Patent litigation often involves the assertion of prior art anticipation and obviousness defenses. U.S. patents are presumed valid, so a defendant seeking to overcome this presumption must persuade the fact-finder of a...more

Board Will Not Fill In Evidentiary Gaps in Inter Partes Review Petition

In a victory for Patent Owner, Zerto was unable to get any of 13 challenged claims of an EMC Israel Development Center patent into a trial for inter partes review, in Zerto, Inc. v. EMC Israel Development Center, Ltd.,...more

Supreme Court Rules That Patent Owner Always Bears the Burden of Proof on Patent Infringement

In a nine to zero decision authored by Justice Breyer, the United States Supreme Court reversed a decision of the Federal Circuit and held that when a licensee seeks a declaratory judgment against a patentee that the...more

“Inherency Requires More Than Probabilities” - Motorola Mobility, LLC v. Int’l Trade Comm’n

Addressing whether an essential claim limitation is inherently present in a prior art reference for purposes of an anticipation analysis, the U.S. Court of Appeals for the Federal Circuit affirmed a ruling out of the U.S....more

Unanimous Supreme Court to Federal Circuit: Burden of Proof on Infringement on Patentee, Even in Declaratory Judgment - Medtronic,...

A unanimous Supreme Court of the United States, in a decision authored by Justice Breyer, reversed the U.S. Court of Appeals for the Federal Circuit, holding that the patentee bears the burden of persuasion on the issue of...more

Supreme Court Rules Patentee Always Bears Burden of Proving Infringement

In its first intellectual property ruling of the current term, the Supreme Court unanimously held on January 22, 2014 in Medtronic, Inc. v. Mirowski Family Ventures LLC that a patentee always bears the burden of proving...more

U.S. Supreme Court Holds That Patentees Bear the Burden of Proof of Infringement in DJ Actions Brought by Licensee

A patentee bears the burden of proving infringement when a licensee seeks a declaratory judgment of non-infringement, the U.S. Supreme Court has held. The ruling reversed the Federal Circuit and clarified declaratory...more

Supreme Court Unanimously Holds Burden of Proving Infringement Does Not Shift to Licensees in Declaratory Judgment Actions

The Supreme Court's decision last week in Medtronic v. Mirowski Family Ventures, LLC clarifies once again that patent holders bear the burden of proving patent infringement—even in declaratory judgment actions brought by...more

Courts Remain Divided Over Pleading Requirements for Inducement

Recent cases have revealed a division of opinion over whether a patentee is required to plead that an accused indirect infringer had knowledge of the patent before being sued, or whether the filing of a patent infringement...more

Attorney Argument in Preliminary Response Continues to be Trumped by Expert Evidence from Petition

Challenging two patents with a common parent application, Butamax Advanced Biofuels was able to get 28 challenged claims of one Gevo patent and 18 challenged claims of a second into separate trials for inter partes review, in...more

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