News & Analysis as of

Breach of Contract Patent Trial and Appeal Board

WilmerHale

Federal Circuit Patent Watch: A comparative statement in a patent specification can be “definitional” for purposes of claim...

WilmerHale on

Precedential and Key Federal Circuit Opinions - 1.  PARKERVISION, INC. v. VIDAL [OPINION] (2022-1548, 12/15/2023) (Prost, Wallach, and Chen)* - Chen, J. The Court affirmed the PTAB’s determination that the patent...more

Sheppard Mullin Richter & Hampton LLP

Forum Selection Clause Can Preclude PTO Validity Challenges

In Nippon Shinyaku v. Sarepta Therapeutics, the Federal Circuit held that a forum selection clause specifying that patent infringement or invalidity actions shall be filed in federal district court in Delaware made clear that...more

Fitch, Even, Tabin & Flannery LLP

Federal Circuit Enforces Forum Selection Clause to Prevent IPR Petitions

The Federal Circuit recently reversed the district court and remanded for entry of a preliminary injunction enjoining defendant Sarepta Therapeutics, Inc. from proceeding with inter partes review (IPR) petitions at the Patent...more

Knobbe Martens

IPR Proceedings Were Not Prohibited by a Forum Selection Clause in a Non-disclosure Agreement

Knobbe Martens on

KANNUU PTY LTD. v. SAMSUNG ELECTRONICS CO., LTD. Before Newman, Prost, and Chen. Appeal from the United States District Court for the Southern District of New York. Summary: The forum selection clause in the parties'...more

Rothwell, Figg, Ernst & Manbeck, P.C.

Kannuu v. Samsung: Forum Selection Clause Did Not Prohibit IPR Challenges

In Kannuu Pty Ltd. v. Samsung Electronics Co., Ltd., No 19-civ-4297 (S.D.N.Y Jan. 19, 2021), the parties’ forum selection clause in their non-disclosure agreement did not prevent Samsung Electronics Co., Ltd. (“Samsung”) from...more

Akin Gump Strauss Hauer & Feld LLP

PTAB Remains Unwilling to Deny Inter Partes Review Based on a Contractual Forum-Selection Clause

In a recent decision granting institution of an inter partes review (IPR), the Patent Trial and Appeal Board reconfirmed that it will not deny an IPR petition just because the parties previously agreed to resolve their...more

Bradley Arant Boult Cummings LLP

Is Evidence of Copying Enough to Support a Finding of Nonobviousness? - Intellectual Property News

In a precedential decision that was unsealed last week by the Federal Circuit, the Patent Trial and Appeals Board (PTAB) was told that it erred in not considering evidence of copying when rendering its decision on obviousness...more

Knobbe Martens

Federal Circuit Review - September 2019

Knobbe Martens on

State Sovereignty Principles Do Not Allow a State to Bring a Patent Infringement Suit in an Improper Venue - In Board of Regents v. Boston Scientific Corp., Appeal No. 2018-1700, the Federal Circuit ruled that the patent...more

Sunstein LLP

Beware: Run-of-the-Mill Forum Selection Clause Could Thwart Patent Challenges

Sunstein LLP on

A patent infringement and breach of contract lawsuit in San Francisco may result in a sea change in the ability of licensees to challenge the validity of patents covered by their license. At stake is whether patent owners can...more

McDermott Will & Emery

Forum Selection Clause Prohibits Filing IPR and PGR Petitions

McDermott Will & Emery on

In a non-precedential opinion, the US Court of Appeals for the Federal Circuit affirmed a district court’s grant of preliminary injunction requiring a licensee to withdraw its inter partes review (IPR) and post grant review...more

Jones Day

Forum Selection Clause May Preclude PTAB Proceedings

Jones Day on

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

Patterson Belknap Webb & Tyler LLP

PTAB Petitions Do Not “Arise Out Of” Licensing Agreement

On October 16, 2018 Magistrate Judge Gold, of the Eastern District of New York, issued a report recommending that Plaintiff Alexsam, Inc. (“Alexsam”) be denied leave to file a supplemental complaint against Defendant...more

Snell & Wilmer

Supreme Court to Decide Multiple IP Issues This Term

Snell & Wilmer on

On October 26, 2018, the Supreme Court of the United States (“SCOTUS”) granted certiorari in two IP cases. In Mission Product Holdings, Inc. v. Tempnology, LLC, SCOTUS will address a circuit split on the effect bankruptcy...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

PTAB Strategies and Insights - May 2018

The PTAB Strategies and Insights newsletter is designed to increase return on investment for all stakeholders looking at the entire patent life cycle in a global portfolio. This month, we are please to introduce our new...more

Knobbe Martens

Altaire Pharmaceuticals, Inc. v. Paragon Bioteck, Inc.

Knobbe Martens on

Federal Circuit Summary - Before Wallach, O’Malley, and Schall. Appeal from the Patent Trial and Appeal Board. Summary: PGR petitioner has standing to appeal PTAB decision, where petitioner intended to file an ANDA for...more

Schwabe, Williamson & Wyatt PC

Fresh From the Bench: Latest Federal Circuit Court Cases

Texas Advanced Optoelectronic Solutions, Inc. v. Renesas Electronics America, Inc., Appeal Nos. 2016-2121, -2208, -2235 (Fed. Cir. 2018)?- In an appeal from a jury trial, the Federal Circuit addressed numerous issues...more

Akin Gump Strauss Hauer & Feld LLP

Northern District of California Enforces Forum Selection Clause in License Agreement and Orders Licensee to Withdraw IPR Petitions

On March 23, 2018, a district court judge issued a preliminary injunction requiring the defendants to withdraw their petitions for inter partes review (IPR) before the Patent Trial and Appeal Board (PTAB). The court granted...more

Proskauer Rose LLP

Three Point Shot - August 2017

Proskauer Rose LLP on

Eastern District Heavyweight Bout Ends in Stunning Trademark Technical Knockout - Floyd Mayweather and Connor McGregor's late-August 2017 matchup may be the most highly anticipated boxing event in decades. But while "The...more

McDermott Will & Emery

Sovereign Immunity Can Shield State University Research Foundations in PTAB Proceedings

McDermott Will & Emery on

Addressing the application of the sovereign immunity defense under the 11th Amendment in the inter partes review (IPR) context, the Patent Trial and Appeal Board (PTAB) dismissed three IPR petitions, finding that the...more

Winstead PC

PTAB Finds Sovereign Immunity Applies to IPRs for State Universities

Winstead PC on

The Patent Trial and Appeal Board (PTAB) dismissed three inter partes review (IPR) proceedings involving the University of Florida based on sovereign immunity. As background, the University of Florida Research Foundation...more

Womble Bond Dickinson

State Universities Gain Immunity from IPRs

Womble Bond Dickinson on

State Universities Gain Immunity from IPRs - Today, many universities own extensive patent portfolios that are managed by sophisticated tech transfer offices. Universities obtain these patents for many reasons, not the...more

Knobbe Martens

PTAB Denies IPR Petition Against the State of Florida Due to 11th Amendment Sovereign Immunity

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In Covidien LP v. University of Florida Research Foundation Incorporated, IPR2016-01274, -01275, -01276 (January 2017), the Patent Trial and Appeal Board held that Eleventh Amendment sovereign immunity applies to inter partes...more

Mintz - Intellectual Property Viewpoints

Patent-Agent Privilege and the USPTO’s Proposed New Rule

Several recent court decisions have shed light on the patent agent privilege, and now the U.S. Patent and Trademark Office (USPTO) is seeking to weigh-in on the issue....more

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