Almost 15 years ago, in an effort to create greater predictability for patent litigation in the Northern District of Illinois, the District enacted Local Patent Rules (“LPR”).1 This annotated version of the LPRs is released...more
In a precedential opinion, the Court of Appeals for the Federal Circuit vacated a final written decision in which the Patent Trial and Appeal Board (“PTAB”) found that Apple had failed to meet its burden of showing...more
In decisions rare of their kind, the U.S. Patent and Trademark Office (“USPTO”) terminated two ex parte reexaminations in view of inter partes review (“IPR”) proceedings initiated by a different party. The decisions represent...more
Director Vidal recently vacated a decision denying institution of an inter partes review (“IPR”) to allow Google, the Petitioner, to brief whether discretionary denial was warranted under Section 325(d) in view of a European...more
After finding that Apple infringed certain AliveCor patents related to wearable devices capable of monitoring a user’s cardiac activity, the International Trade Commission (“ITC”) entered a limited exclusion order and a cease...more
By Marc Blackman – An IPR petitioner that relies on foreign language prior art must submit an English language translation of the reference along with an affidavit attesting to the accuracy of the translation. In a recent...more
Applying the PTAB’s precedential NHK decision, the PTAB exercised its discretion to deny institution of three timely filed IPR petitions due to the advanced stage of a related district court action. Intel Corporation v. VLSI...more
In three related final written decisions, the PTAB ruled that Bayer Healthcare (“Bayer”) was not a real party in interest (“RPI”) to IPR petitions filed by NOF Corporation, even though Bayer had a business relationship with...more
Ten years ago, in an effort to create greater predictability for patent litigation in the Northern District of Illinois, the District enacted Local Patent Rules ("LPR") This annotated version of the LPRs is released in honor...more
11/5/2019
/ Claim Construction ,
Discovery ,
Electronically Stored Information ,
Federal Rules of Civil Procedure ,
Local Patent Rules ,
Patent Infringement ,
Patent Litigation ,
Patents ,
Pleading Standards ,
State and Local Government ,
State Pilot Programs
In a split decision, the Federal Circuit dismissed three consolidated appeals holding that the PTAB’s decisions to deny institution were not appealable even though the PTAB previously had instituted the IPRs and proceeded...more
The PTAB recently granted a Patent Owner’s motion to take additional discovery of Petitioner’s expert. In particular, the PTAB ordered Petitioner’s expert to produce documents that identify materials he reviewed in preparing...more
The Federal Circuit recently affirmed a preliminary injunction barring PTAB proceedings in view of a forum selection clause. Dodocase VR, Inc. v. MerchSource, LLC, 2018-1724 (Fed. Cir. Apr. 18, 2019).
Dodocase, the owner...more
4/29/2019
/ Appeals ,
Breach of Contract ,
Forum Selection ,
Intellectual Property Protection ,
Inter Partes Review (IPR) Proceeding ,
IP License ,
License Agreements ,
Patent Royalties ,
Patent Trial and Appeal Board ,
Patents ,
Preliminary Injunctions
The Federal Circuit recently affirmed final written decisions in two inter partes reviews by holding that the patent owner was collaterally estopped from relitigating the threshold issue of whether a prior art reference was a...more
Discovery is limited in inter partes review proceedings. As we previously discussed, discovery is available only “in the interest of justice,” and requests for discovery frequently are denied. Yet, a party may be aware of...more
A petition for inter partes review is timely if it is filed within one year of service of a complaint alleging infringement of the challenged patent on the petitioner, real party in interest, or privy of the petitioner. 35...more
The PTAB recently exercised its discretion to deny institution of an IPR proceeding because a potentially dispositive claim construction issue was pending before the Federal Circuit. Comtech Mobile Datacom Corp v. Vehicle IP,...more
This ruling may have eliminated the practice of transferring patents to Native American tribes for immunization from IPR proceedings.
The Federal Circuit, in a matter of first impression, has ruled that tribal sovereign...more
Whether a claim is indefinite under 35 U.S.C. § 112 is analyzed under different standards by District Courts and the PTAB. District Courts apply the standard articulated by the Supreme Court in Nautilus requiring a patent’s...more
In an effort to create greater predictability for patent litigation in the Northern District of Illinois, the District enacted Local Patent Rules ("LPR") effective as of October 1, 2009. This annotated version of the LPRs...more