Patent Ownership

News & Analysis as of

The Board and Secondary Considerations

Commercial Success - In Riverbed Technology, Inc. v. Silver Peak Systems, Inc., IPR2014-00245, Paper 19 (August 22, 2014) the Board explained; Commercial success typically is shown with evidence of “significant...more

Plaintiff Lacks Standing to Enforce Patent When Co-Owner Refuses to Participate in Litigation

STC.UNM v. Intel Corp. - Addressing whether standing and joinder are matters dictated by substantive patent law or by Federal Rule of Civil Procedure 19(a), the U.S. Court of Appeals for the Federal Circuit affirmed a...more

Board Cuts Patent Owners Time in Half to Stay on Schedule

In Reloaded Games, Inc. v. Parallel Networks, LLC, IPR2014-00950, Paper 9 (July 8, 2014), Petitioner filed a second petition for inter partes review covering claims for which trial was not instituted in its first petition for...more

The Intersection Between Intellectual Property Law and Employment Law [Video]

Employment law often becomes the centerpiece in intellectual property litigation. Understanding how these two disciplines intertwine can be critical to winning or losing a case. Attorneys Becky Thorson and Christopher Seidl...more

Only an Owner of a Patent Can Appeal Final Decisions from the PTAB

Vaillancourt v. Becton Dickinson & Co. - Addressing a patent owner’s standing under 35 U.S.C. § 141 to appeal decisions from the United States Patent and Trademark Office’s (PTO) Patent Trial and Appeal Board (PTAB) in...more

Issues of Exceeding the Proper Scope Continue to Plague the Board

In Ariosa Diagnostics, Inc. v. The Board of Trustees of the Leland Stanford Junior University, IPR2013-00308, Paper 27 (June 6, 2014) another patent owner was complaining that the Petitioner had exceeded the proper scope in...more

Pre-AIA Statute Did Not Give Patent Owner in an Ex Parte Reexamination the Right to Bring an Action in District Court

In re Teles AG Informationstechnologien - Addressing whether a patent owner involved in a pre-America Invents Act (AIA) ex parte reexamination, could challenge an adverse reexamination decision in a district court...more

Managing Antitrust Risks in Patent Licensing – Post-Expiration Royalties and Package Licensing

Patent owners have considerable freedom to negotiate the subject matter, price, and term in licensing agreements. However, antitrust law has been used to limit this freedom when an arrangement is considered to exceed the...more

Who are the major players in a patent infringement action? Part One

With different technology and different parties involved, no two patent infringement actions are completely alike. But that doesn’t mean there aren’t commonalities between them. For instance, while the parties to every patent...more

Credibility Challenges Posed by the Eccentric Inventor Witness

Eccentric inventors can be their own worst enemies at depositions and on the witness stand at trial. General Electric Co. v. Wilkins (Fed. Cir., May 8, 2014) is a recent case on point. The General Electric case involved a...more

Medical Device Manufacturer’s Association Submits Comments on USPTO’s Proposed Rule to Require Identification of Attributable...

(April 24, 2014) The Medical Device Manufacturer’s Association (MDMA) announced that it submitted comments to the United States Patent and Trademark Office (USPTO) in regard to the USPTO’s Notice of Proposed Rulemaking...more

A Claim of “Authorship” Does Not Raise an Inventorship Dispute

StoneEagle Services, Inc. v. Gillman - Addressing whether an actual controversy exists that is sufficient to confer jurisdiction under the Declaratory Judgment Act, the U.S. Court of Appeals for the Federal Circuit...more

Beginning the Patent Process

The second step in bringing your medical device to market is to understand whether you can protect your invention. This article is part two of a series that presents the three big issues in intellectual property: Do...more

Count Your Pages (the Board Does)

In Shaw Industries Group, Inc. v. Automated Creel Systems, Inc., IPR2013-00584, Paper 34 (April 14, 2014), the patent owner filed observations on cross-examination that exceeded the 15 pages permitted by 37 C.F.R. §...more

The First (and Second) Outright Win for the Patent Owner

In a heartening (to patent owners) reminder that invalidation in an IPR is not automatic, in ABB Inc. v. Roy-G-Biv Corp., IPR2013-00062 and IPR-00282, Paper 84 (April 11, 2014), the Board found that ABB failed to show that...more

What to Do When A Reply Exceeds its Proper Scope

In addition to handing a patent owner the first outright win in an inter partes review, in ABB Inc. v. Roy-G-Biv Corp., IPR2013-00062 and IPR-00282, Paper 84 (April 11, 2014), and ABB Inc. v. Roy-G-Biv Corp., IPR2013-00074...more

Distilling An Agreement

Sometimes, despite the best intentions, a business venture will fail. In such circumstances, agreements relating to the ownership of business property will be duly scrutinised, and perhaps, challenged in court....more

The USPTO Does Not Need the Onerous Proposed Attributable Owner Rules

The Federal Register Notice promulgating the proposed Attributable Owner rules offers some lofty justifications for the rules. Because the rules have been promulgated pursuant to a White House initiative, they are likely to...more

Petioner’s Reply May Only Respond to the Patent Owner’s Arguments

In Amkor Technology, Inc. Tessera, Inc. IPR2013-00242, Paper 106 (March 27, 2014) the Board authorized the patent owner to file a Motion to Strike the petitioner’s reply on the grounds that it contained new matter. ...more

No Relief for Patent Owners

In Riverbed Technology, Inc. v. Silver Peak Systems, Inc., IPR2013-00402, IPR2013-00403 Paper 22, (March 27, 2014), the Patent Owner also requested five additional pages for each of its motions, arguing that its proposed...more

Do you own the intellectual property created by your employees?

With the days of patent and copyrights applying mainly to tangible objects being long gone, data and patent rights are becoming more important than ever. Now, every process, software, procedure, and other intellectual...more

Joint Inventorship in Patents Can Present Problems

Once an invention has been developed and a corresponding patent application is written, determining an inventorship list for the application might just seem like a formality to get the application filed. Particularly in cases...more

Four More IPR Final Written Decisions Go Against Patent Owners

On Monday, March 10th, the PTAB issued four additional Final Written Decisions, each of which resulting in total victory for the Petitioner. The first three were all related - Micron Tech., Inc. v. Board of Trustees of the...more

Trio of Final Written Decisions Go Against Patent Owner

Early results of Inter Partes Review proceedings continue to favor Petitioners as all challenged claims in a threesome of Columbia University patents have been cancelled by the PTAB in Illumina, Inc. v. The Trustees of...more

Eight Concurrent Petitions Does not Win Sympathy or a Delay

Most Conduct of Proceeding Orders issued by the Board are unremarkable, but in Mobotix Corp. v, e-Watch, Inc., [IPR2013-00499], Paper 16 (Feburary 28, 2014), the patent owner sought a six month delay in the proceedings...more

42 Results
|
View per page
Page: of 2