News & Analysis as of

Patents Forfeiture

McDermott Will & Emery

Unified Front: No Forfeiture by Failing to Raise Argument in Request for Rehearing

Addressing forfeiture of issues on appeal and sufficiency of the asserted prior art, the US Court of Appeals for the Federal Circuit upheld a Patent Trial & Appeal Board obviousness finding, explaining that a party does not...more

McDermott Will & Emery

Say Goodbye: Argument Not Presented in IPR Petition Is Waived

McDermott Will & Emery on

In a split decision, the US Court of Appeals for the Federal Circuit affirmed a Patent Trial & Appeal Board patentability determination, finding that the challenger’s appeal arguments were not raised in its inter partes...more

McDermott Will & Emery

No Smoking Gun Here: Soliciting Input Sufficient to Satisfy Commission’s Statutory Obligation

Addressing a decision by the US International Trade Commission finding a violation of Section 337, the US Court of Appeals for the Federal Circuit agreed with the Commission on a slew of issues, including its determination...more

Fitch, Even, Tabin & Flannery LLP

Failure to Raise Claim Construction Issue at Jury-Instruction Phase Constituted Forfeiture

On May 20, in Michael Philip Kaufman v. Microsoft Corporation, the Federal Circuit issued an opinion illustrating the importance of raising claim construction disputes at trial to avoid forfeiting arguments in post-verdict...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

Federal Circuit Appeals from the PTAB and ITC: Summaries of Key 2020 Decisions: In re Google Tech. Holdings LLC, 980 F.3d 858...

Google applied for a patent on video-on-demand systems. The Patent Trial and Appeal Board affirmed the examiner’s rejection of the claims as obvious, stating that Google’s responses to the examiner’s rejections were...more

Rothwell, Figg, Ernst & Manbeck, P.C.

Claim Construction Arguments in Appeal Forfeited if Not Raised Before the Board

In In re: Google Technology Holdings LLC, No. 2019-1828 (Fed. Cir. Nov. 13, 2020), the Federal Circuit elaborated on the policies underlying waiver and forfeiture of appellate arguments.  Ultimately, the court affirmed the...more

Morgan Lewis

ITC Rescinds Seizure & Forfeiture Order after CIT Determines Redesign Does Not Infringe

Morgan Lewis on

A recent decision by the International Trade Commission (ITC) to temporarily rescind a seizure and forfeiture order after the Court of International Trade (CIT) granted summary judgment of non-infringement for certain...more

McDermott Will & Emery

Federal Circuit Law Governs Waiver or Forfeiture of Patent Venue Rights

McDermott Will & Emery on

The US Court of Appeals for the Federal Circuit concluded venue was improper under the patent venue statute as interpreted by the Supreme Court of the United States, finding that the accused infringer did not waive or forfeit...more

Foley & Lardner LLP

How Can You Safely Discuss Your IP with Others?

Foley & Lardner LLP on

As discussed in our previous posts, startups are about capitalizing on ideas, contacts and experience. In the early stages of a startup or pre-startup, founders often socialize their business plan and details about their idea...more

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