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Another Implementer Hold Out Door Closes: The Death of the Anti-Suit Injunction?

Implementers of standard essential patents (SEPs) continue to hold out in patent licensing discussions with SEP owners, including pursuing the cynical strategy of seeking anti-suit injunctions (ASIs). This failed strategy is...more

It Takes Two to Tango: Gilstrap Frames Implementer Holdout as Bad Faith Justifying “Suspension” of SEP Licensing Discussions

Innovators have long insisted that licensing discussions over standard essential patents (SEP) are one sided: implementers often “hold out” in bad faith by delaying discussions for as long as possible. The theory driving this...more

Avoiding Pitfalls: IP “Dos and Don’ts” for High-Tech Start Ups

Starting a high-tech company is a difficult, exhausting, and thrilling endeavor – one in which founders will face seemingly endless challenges, deadlines, and make or break decisions. From a venture’s inception, founders face...more

DOJ Breaking with Big Tech Approach to SEPs

On June 8, 2022, the DOJ, USPTO, and the National Institute of Standards and Technology (NIST) (collectively, the Agencies) issued a new statement on FRAND licensing (2022 Statement) providing no set policy regarding...more

Keep Out: Uniloc Gets Second Chance to Seal Licensing Documents

Patent owners that lack sufficient resources are often required to utilize the services of an outside litigation funding source to vindicate their patent rights. Often times, these patent owners communicate with such...more

Strengthen Software Claims Against Alice Challenges through Coined Terms and Depicting Technical Advantages in Figures

The Federal Circuit recently provided strategic guidance for defending software claims against Alice challenges that claims recite ineligible patent subject matter under 35 U.S.C. § 101. In Mentone Solutions LLC v. Digi...more

Uncertain Seas for SEP Sailing In the US – New Guidance May Cause Stormy SEP Future

The DOJ is requesting public comment on a new draft policy concerning licensing negotiations and remedies for standards-essential patents (SEPs) subject to voluntary F/RAND commitments recently jointly issued by the U.S....more

PTAB “Overlooks” Rehearing Consequences and Swings the Rehearing Door Wide Open

A recent decision by a Patent Trial and Appeal Board (PTAB) panel in Canadian Solar Inc., et al v. The Solaria Corporation may have opened the door for aggrieved parties to seek rehearing for any reason, rather than the...more

US Open for FRAND Business: The Fifth Circuit Vindicates Ericsson, Finding that Ericsson’s Offers were FRAND

The United States FRAND jurisprudence had a recent watershed moment in a decision that is sure to reverberate through the standard essential patent (SEP) world, and specifically SEP litigation in the United States. Earlier...more

Federal Circuit Reminds the PTAB that the APA Process Still Matters

The Federal Circuit recently found that the Patent Trial and Appeal Board (“Board”) violates a patent owner’s procedural rights under the Administrative Procedure Act (“APA”) when construing a disputed claim term by omitting...more

Supreme Court Hammers Final Nail in the IP Bridge v. TCL Coffin

On Monday, the Supreme Court denied TCL Communication’s certiorari petition, without comment, appealing the Federal Circuit’s ruling that the essentiality of a patent claim is a question for the jury rather than judges to...more

Patent Owner Tip #10 for Surviving an Instituted IPR: Address Claim Construction and Public Availability

When confronted with instituted IPRs, Patent Owners should identify and exploit issues that the Petition glossed over and bring those to the attention of the Board. This will highlight for the Board important issues that the...more

ITC’s New Pilot Program to Speed Investigations Merely Another Bite of the 100-Day Pilot Program Apple?

Over the last decade, patent litigation has exploded at the International Trade Commission (“ITC”), which has caused the ITC to seek out ways to increase efficiency. Several years ago, the ITC introduced an early 100-Day...more

Patent Owner Tip #5 for Surviving An Instituted IPR: The Right Expert Can Save Your Patent

The right expert can be the critical piece that saves the validity of your patent. Finding the right expert for a patent owner requires careful selection and due diligence. We previously detailed how your expert’s testimony...more

PTAB Reinforces Uneven Evidentiary Playing Field in IPRs

The U.S. Patent and Trademark Office’s Patent Trial and Appeal Board (PTAB) recently grappled with the admission into evidence of expert deposition testimony that was presumably harmful to the petitioner in an inter partes...more

Tip #6 for Avoiding IPR Institution: Advocate Claim Constructions the Petition Ignored

Arguing against material constructions proffered by an IPR petition is a basic building block of the patent owner’s preliminary response. Obviously, patent owners must investigate and advocate for claim constructions for...more

Tip #5 for Avoiding IPR Institution: Policing KSR’s motivation requirement for the ‘how’ and ‘why’.

Building on Tip #4, one effective way to avoid institution and not address facts is to point out shortcomings in the petition's application of KSR when asserting motivation to combine for an obviousness analysis. The Patent...more

Tip #1 for Avoiding IPR Institution: Litigation Venue Selection

Venue selection is a critical component to any patent enforcement strategy, even before the inception of the PTAB as we know it today. Venue now has even greater importance, as the speed of your patent case (i.e. time to...more

DOJ to IEEE: Yes, Injunctive Relief Should Be Available for SEPs, and Stop Saying Otherwise

Last Thursday, September 10, 2020, the U.S. Department of Justice’s Antitrust Division (“DOJ”) issued an updated Business Review Letter (“2020 Letter”) to the Institute of Electrical Electronics Engineers, Incorporated...more

THE SEP WORLD IN BALANCE: UK Harmonizes with Germany’s Rejection of Implementer Hold Out

Implementer Hold Out - Another major development in global standard essential patent litigation was handed down today, as the UK Supreme Court upheld lower court rulings that forced an efficient infringer of essential...more

The Standard Does Rule Them All: Federal Circuit Panel Finds Standard Sufficient to Prove Infringement for SEP Compliant Products

The Federal Circuit yesterday, in a decision likely to be celebrated by holders of standard essential patents (“SEPs”), found that it is appropriate for the jury to decide essentiality of a patent, rather than the judge...more

Fractured Federal Circuit Panel Finds That Sovereign Immunity Does Not Prevent Exclusive Licensee from Pursuing Unlicensed...

Entities with patent-related relationships with state universities scored a victory under the rarely implicated (at least for patent practitioners) doctrine of sovereign immunity. For patent holders, sovereign immunity comes...more

IPR and Fast-Moving District Court Litigation: PTAB Formalizes the Analysis for Balancing Efficiency and Fairness

The Patent Trial and Appeal Board (“PTAB”) has designated two key institution decisions as “Informative.” With these informative decisions, the PTAB has provided guidance on how the PTAB will apply efficiency and fairness...more

The Standard May Rule Them All: Federal Circuit Panel Appears Prepared to Find Standard Is Sufficient to Prove Infringement for...

Recent oral arguments at the Fed Circuit suggest that the U.S. may be taking steps which would enhance its attractiveness for SEP patent holders looking to resolve licensing disputes. The Federal Circuit heard oral argument...more

Judge Albright to Apple: Yes, You Can Be Sued Outside Northern California

Judge Albright of the Western District of Texas (“WDTX”) recently rejected yet another attempt by Apple to transfer a patent case to the Northern District of California (“NDCA”). Judge Albright’s June 19, 2020 order describes...more

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