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Submissions of Supplemental Information in IPRs Subject to Extra Requirements

A party to an inter partes review may submit supplemental information within one month of institution if the party can show that the supplemental information is “relevant to a claim for which the trial has been instituted.”...more

Major Patent Offices Meet to Discuss Adoption of AI Tools

Last week, the United States Patent and Trademark Office (USPTO) hosted the annual meeting of the heads of the world’s five largest intellectual property offices, commonly referred to as the IP5 (see a related press release)....more

USPTO Director’s Alleged Conflict Not Imputed to PTAB Administrative Patent Judges

The Patent Trial and Appeals Board (PTAB) recently denied a Motion to Dismiss asserting the presence of a conflict of interest of USPTO Director Andrei Iancu. In St. Jude Medical, LLC. v. Snyders Heart Valve LLC, the Patent...more

Protecting Artificial Intelligence and Big Data Innovations Through Patents: Functional Claiming

The Situation: Artificial intelligence ("AI") and big data ("BD") innovations are driving forces of the current technological revolution, dramatically changing the way we search for information, communicate, operate devices,...more

When is a Conference Paper Publicly Accessible: Lessons Learned

In Power Integrations, Inc. v. Semiconductor Components Industries, LLC, the PTAB provided new guidance to practitioners regarding the eligibility of conference papers as printed publications for use as prior art references...more

Protecting Artificial Intelligence and Big Data Innovations Through Patents: Subject Matter Eligibility

The Situation: Artificial intelligence ("AI") and big data ("BD") innovations are a driving force of the current technological revolution, dramatically changing the way we search for information, communicate, operate devices,...more

Court Grants Rehearing In Light Of Wi-Fi One

Eleven days after the Federal Circuit’s en banc opinion in Wi-Fi Onc, LLC v. Broadcom Corp., Nos. 15-1944, -1945 & -1946 (Fed. Cir. Jan. 8, 2018), a three-judge panel granted a petition by patent owner Click-to-Call...more

PTAB Denies CBM Institution Based on Technological Invention Exception

On December 1, 2017, the PTAB denied institution of a covered business method (“CBM”) petition because the challenged patent is directed to a “technological invention” and therefore is ineligible for CBM review under section...more

District Courts Split on Admissibility of Patent Owner IPR Victories

In an opinion dated October 12, 2017, the U.S. District Court for the Eastern District of Wisconsin granted a motion in limine to exclude evidence that a challenged patent had survived twenty post-issuance proceedings,...more

Five-Judge PTAB Panel Interprets “Module” As Non Means-Plus Function

On September 13, 2017, the PTAB, a five-judge panel, granted a petition to institute an inter partes review brought by HTC America, Inc. (“Petitioner”) against Virginia Innovation Sciences, Inc. (“Patent Owner”) regarding...more

Federal Circuit Rules in Favor of Public Interest Group Standing at PTAB

In Personal Audio, LLC. v. Electronic Frontier Foundation, No. 2016-1123 (Fed. Cir. Aug. 7, 2017), the Federal Circuit reviewed a Patent Trial and Appeal Board (“PTAB”) decision invalidating claims of U.S. Patent No....more

PTAB Denies Motion to Withdraw as IPR Counsel

In an order entered June 30, 2017, the PTAB denied a motion by counsel for patent owner Purple Leaf, LLC (“Counsel”) to withdraw from representation in a trio of IPRs (IPR2016-01720, IPR2016-01721, and IPR2016-01722). Counsel...more

Federal Circuit Upholds Claim Construction – No Due Process Violations

On May 8, 2017, in Intellectual Ventures II LLC v. Ericsson Inc., 15-1739, the Federal Circuit affirmed the Patent Trial and Appeal Board’s (PTAB) inter partes review (IPR) claim constructions in a non-precedential decision....more

PTAB Interprets “By Another” in 35 § 102(e)

In connection with a dispute over parking meters, the PTAB, on March 27, 2017, issued a decision in IPR2016-00067 that Duncan Parking Technologies, Inc. (DPT) had not met its burden of showing, by a preponderance of evidence,...more

New Intellectual Property Considerations and Risks for Autonomous Vehicles

In recent years, carmakers and suppliers have significantly increased the number of patent applications they file in the United States and abroad, but patent protection may not always be the right tool. Trade secret...more

IPRs Are Not Time Barred by an Earlier ITC Complaint

Since their introduction as part of the America Invents Act, Inter Partes Reviews (IPRs) have proven to be a powerful tool for parties accused on patent infringement. One important constraint on their deployment is a one year...more

Internet Advertising Claims Deemed Not Eligible for Covered Business Method Patent Review

In a decision dated February 27, 2017, the Board denied institution of Google Inc.’s petition for Covered Business Method Patent Review of claims 20, 21, 23–26, 28, and 29 of U.S. Patent No. 6,128,651 (“the ’651 patent”)...more

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