In our penultimate patent owner tip for surviving an instituted IPR, we turn our discussion to defending the deposition of your expert. At this stage of the proceeding, your Patent Owner Response has been filed, and all the...more
Discovery procedures in inter partes review (“IPR”) proceedings, governed by 37 CFR § 42.51, are more limited in scope and timing compared to cases in district court. There are three types of discovery at the Patent Trial...more
5/28/2021
/ Additional Discovery ,
America Invents Act ,
Discovery ,
Garmin Factors ,
Inter Partes Review (IPR) Proceeding ,
Litigation Strategies ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Trial Practice Guidance ,
USPTO
Drafting the expert declaration is another critical task for Patent Owners during the inter partes review (“IPR”) discovery period. As noted in our previous post, IPR expert witnesses provide declarations as affirmative...more
If you are a patent owner facing an inter partes review (“IPR”) or other post-grant review at the Patent Trial and Appeal Board (“PTAB”), your best chance of success is to convince the PTAB not to institute a trial. But that...more
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
On Monday, in Thryv, Inc. v. Click-to-Cal Technologies, the Supreme Court held that § 315(b) time-bar determinations are not subject to judicial review. In this 7-2 decision penned by Justice Ginsburg, with Justices Gorsuch...more
4/22/2020
/ § 314(d) ,
§ 315(b) ,
§314(a) ,
§314(b) ,
America Invents Act ,
Appeals ,
Dissenting Opinions ,
Inter Partes Review (IPR) Proceeding ,
Judicial Review ,
Non-Appealable Decisions ,
Patent Infringement ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
SCOTUS ,
Thryv Inc v Click-To-Call Technologies LP ,
Time-Barred Claims ,
Vacated
The Court of Appeals for the Federal Circuit ruled in February that the Patent Trial and Appeal Board (PTAB) cannot cancel claims for indefiniteness in an inter partes review (IPR) proceeding. The case is Samsung Electronics...more
California jury recently awarded Apple $538.6 million in total damages for patent infringement by Samsung. This is the latest development in the patent battle between smartphone industry titans that began in 2011 and took...more
6/1/2018
/ Apple ,
Apple v Samsung ,
Article of Manufacture ,
Design Patent ,
Patent Infringement ,
Patent Litigation ,
Patents ,
Popular ,
Samsung ,
SCOTUS ,
Smartphones ,
Special Damages
The Court of Appeals for the Federal Circuit ruled in February that it was wrong for a judge to rule that a patent was ineligible under the Alice standard because there were underlying factual disputes that could not be...more
New rules for patent cases in the Northern District of California will significantly affect litigation and settlement of cases in Silicon Valley’s backyard. Lawyers litigating cases in the district after the January 17, 2017...more
On December 17, 2015, Judge Rodney Gilstrap of the Eastern District of Texas (EDTX) ruled that, in light of Alice Corporation Pty. Ltd. v. CLS Bank International, 134 S. Ct. 2347 (2014) (“Alice”), a plaintiff’s position on...more
1/8/2016
/ Attorney's Fees ,
CLS Bank v Alice Corp ,
Covered Business Method Patents ,
Exceptional Case ,
Octane Fitness v. ICON ,
Patent Litigation ,
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Patent-in-Suit ,
Patents ,
Section 101 ,
Software Patents ,
Totality of Circumstances Test
2015 was a busy year for post-grant review appeals at the Federal Circuit and produced notable opinions in the areas of claim construction, IPR procedural issues, and the constitutionality of IPRs in general. In 2015, the...more