According to a recent district court opinion, a party may waive its right to assert infringement on claims that it voluntarily agrees to give up (e.g., by abandoning the claims). Such a waiver will be enforced as an equitable...more
On January 19, 2021, Petitioner, 10X Genomics, requested via email authorization to file 1) a five page brief addressing the Board’s institution decision in Samsung Electronics Co., Ltd. v. Acorn Semi, LLC, IPR2020-01204,...more
In a recently designated precedential decision, the Patent Trials and Appeals Board (“PTAB”) considered challenges to claims covering autonomous robotic cleaning devices. SharkNinja Operating LLC v. iRobot Corp.,...more
A recent case in the Northern District of Illinois addressed the issue of collateral estoppel in connection with patents that were similar to those previously cancelled by the PTAB: In Think Prods., Inc. v. Acco Brands...more
In Linksmart Wireless Tech., LLC v. Caesars Entm’t Corp., Case No. 2:18-cv-00862-MMD-NJK (D. Nev. May 8, 2020) the Court addressed disputed claim terms in U.S. Reissued Patent No. RE46,459 (the “’459 Patent”), Linksmart had...more
6/19/2020
/ Appeals ,
Claim Construction ,
Computer-Related Inventions ,
Doctrine of Prosecution Disclaimer ,
Evidence ,
Inter Partes Review (IPR) Proceeding ,
Patent Infringement ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Popular
In Think Prod., Inc. v. ACCO Brands Corp., No. 18-CV-07506, 2019 WL 6609427, at *1 (N.D. Ill. Dec. 5, 2019), the District Court addressed whether the plaintiff patent ower was collaterally estopped from arguing validity in...more
The PTAB panel in Focal Therapeutics, Inc. v. SenoRx, Inc., Case IPR2014-00116 (PTAB July 21, 2014) (Paper 19), provided certain clarifications with regard to the ability to confer with witnesses during examination. This...more
Assignor estoppel is a long-established, common-law doctrine of equity, which prevents a party who assigns a patent to another from later challenging the validity of the assigned patent. The doctrine also applies to parties...more
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
3/23/2018
/ Evidence ,
Evidentiary Standards ,
Inter Partes Review (IPR) Proceeding ,
Patent Litigation ,
Patent Owner Preliminary Response ,
Patent Trial and Appeal Board ,
Patents ,
Printed Publications ,
Prior Art ,
Professional Conferences ,
Subject Matter Experts (SMEs)
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
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
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
5/3/2017
/ Automotive Industry ,
Connected Cars ,
Driverless Cars ,
Innovation ,
Intellectual Property Protection ,
Patent Infringement ,
Patent Litigation ,
Patents ,
Popular ,
Software ,
Wireless Technology
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