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
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
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
3/1/2023
/ Capital Raising ,
Copyright ,
Early Stage Companies ,
Entrepreneurs ,
Intellectual Property Protection ,
Non-Disclosure Agreement ,
Open Source Software ,
Patents ,
Startups ,
Technology Sector ,
Trademarks ,
USPTO
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
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
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
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
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
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
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
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
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
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
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
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
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
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
11/13/2020
/ Claim Construction ,
Claim Limitations ,
Denial of Institution ,
Final Written Decisions ,
Inter Partes Review (IPR) Proceeding ,
Motivation to Combine ,
Obviousness ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
POSITA ,
Prior Art
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
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
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
8/27/2020
/ ETSI ,
FRAND ,
Germany ,
Huawei ,
Intellectual Property Protection ,
Patent Infringement ,
Patent Litigation ,
Patents ,
Standard Essential Patents ,
Treaty on the Functioning of the European Union (TFEU) ,
UK ,
UK Supreme Court
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
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
7/29/2020
/ Eleventh Amendment ,
En Banc Review ,
Federal Rule 12(b)(1) ,
FRCP 19(a) ,
IP License ,
Joinder ,
License Agreements ,
Patent Infringement ,
Patent Litigation ,
Patents ,
Sovereign Immunity ,
State Universities
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
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 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