As a Patent Owner in an instituted Inter Partes Review (IPR), there are dozens of considerations to bear in mind – from strategically approaching depositions and maximizing expert testimony, to drafting the final say in your...more
On October 13, 2020, the U.S. Supreme Court granted three petitions for writ of certiorari related to Arthrex v. Smith & Nephew addressing two issues that will determine the fate of PTAB judges and decisions. First, did the...more
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 Patent Trial and Appeal Board (“PTAB”) recently sent a warning to alleged infringers not to wait for the one year deadline to file IPR petitions, or risk discretionary denial. On May 13, 2020, the PTAB exercised its...more
In a May 10, 2018 ruling, discussed earlier on this blog, Magistrate Judge Payne affirmed the jury’s willfulness finding largely on the ground that TCL did not proffer any evidence that it held a subjective, good faith belief...more
5/18/2018
/ Ericsson ,
Evidence ,
FRAND ,
Good Faith ,
Inter Partes Review (IPR) Proceeding ,
Jury Awards ,
License Agreements ,
Patent Infringement ,
Patent Litigation ,
Patent-in-Suit ,
Patents ,
Standard Essential Patents ,
Willful Infringement
As we noted in our blog post last week, the USPTO held its “Chat with the Chief on SAS” webinar on April 30, 2018, to advise the public on the implications of the Supreme Court’s opinion in SAS Institute for practice before...more
On Tuesday, the U.S. Supreme Court issued two important patent law opinions that relate to the inter partes review procedure introduced by the America Invents Act: Oil States Energy Servs., LLC v. Greene’s Energy Grp., LLC,...more
4/27/2018
/ Administrative Proceedings ,
America Invents Act ,
Article III ,
Constitutional Challenges ,
Inter Partes Review (IPR) Proceeding ,
Oil States Energy Services v Greene's Energy Group ,
Patent Trial and Appeal Board ,
Patents ,
Post-Grant Review ,
Public Rights Doctrine ,
SAS Institute Inc. v Iancu ,
SCOTUS ,
Seventh Amendment ,
USPTO
We first covered the Supreme Court’s grant of certiorari in Oil States Energy Servs., LLC v. Greene’s Energy Grp., LLC, 137 S. Ct. 2239 (2017), a case with the potential to substantially alter the patent litigation landscape,...more
12/8/2017
/ Administrative Proceedings ,
Article III ,
Constitutional Challenges ,
Inter Partes Review (IPR) Proceeding ,
Oil States Energy Services v Greene's Energy Group ,
Oral Argument ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Private Property ,
Public Property ,
SCOTUS ,
USPTO
The United States Court of Appeals for the Federal Circuit’s recent decision in Aqua Products Inc., v. Matal materially changes the burden of proof associated with the patentability of amended claims during an inter partes...more
The public version of ALJ Shaw’s Initial Determination (ID) in U.S. International Trade Commission (ITC) investigation Certain Magnetic Data Storage Tapes and Cartridges Containing the Same, Inv. No. 337-TA-1012 (1012...more
10/7/2017
/ Administrative Law Judge (ALJ) ,
Breach of Contract ,
Burden of Proof ,
Forum Selection ,
FRAND ,
Injunctive Relief ,
Inter Partes Review (IPR) Proceeding ,
International Trade Commission (ITC) ,
IP License ,
Patent Infringement ,
Patents ,
Sony ,
Standard Essential Patents ,
Standard Setting Organizations ,
Waivers
In a first of its kind decision with important ramifications for patentees, the U.S. International Trade Commission (“ITC”) denied a petition to suspend or temporarily rescind remedial orders issued in Investigation No....more
7/28/2017
/ Appeals ,
Cisco ,
Exclusion Orders ,
Final Written Decisions ,
Intellectual Property Protection ,
Inter Partes Review (IPR) Proceeding ,
International Trade Commission (ITC) ,
Patent Infringement ,
Patent Invalidity ,
Patent Trial and Appeal Board ,
Patents ,
USPTO
In a move that could drastically change the patent law landscape, the United States Supreme Court recently granted certiorari in Oil States Energy Services LLC v. Greene’s Energy Group LLC, No. 16-712, to answer the question...more
6/24/2017
/ Administrative Proceedings ,
America Invents Act ,
Appeals ,
Article III ,
CAFC ,
Constitutional Challenges ,
Covered Business Method Proceedings ,
Inter Partes Review (IPR) Proceeding ,
Oil States Energy Services v Greene's Energy Group ,
Patent Invalidity ,
Patents ,
Post-Grant Review ,
Private Property ,
Public Property ,
Right to a Jury ,
SCOTUS ,
Separation of Powers ,
Seventh Amendment ,
USPTO
When the Patent Trial and Appeal Board issues a final written decision finding against an IPR Petitioner, can that Petitioner necessarily appeal that adverse decision? In a case of first impression, the Federal Circuit...more
Mintz Levin has won extraordinary relief for its client, Straight Path IP Group, Inc., convincing the Federal Circuit to completely reverse and remand an IPR final written decision adverse to a patent owner for the first...more
On December 9, 2015, the Federal Circuit ruled in MCM Portfolio LLC v. Hewlett-Packard Company that vesting the Patent Office with power to take back previously conferred patent rights through inter partes review does not...more
Yesterday the Federal Circuit ruled in MCM Portfolio LLC v. Hewlett-Packard Company (here) that vesting the Patent Office with power to take back previously-conferred patent rights through inter partes review does not violate...more
Mintz Levin has won extraordinary relief for its client, Straight Path IP Group, Inc., convincing the Federal Circuit to completely reverse and remand an IPR final written decision adverse to a patent owner for the first...more