Podcast: Don't Just Say It – Show It
Podcast - Expert Witnesses, Special Issues
Podcast - Direct Examination of Expert Witnesses
Chemical Engineering Expert Witness Experience & Discovery – IMS Insights Podcast Episode 48
Podcast: Science in the Courtroom
Bar Exam Toolbox Podcast Episode 159: Listen and Learn -- Evidence: Expert vs. Lay Witness Testimony
Podcast: What Witness Preparation Means
Podcast: Seven Witness Preparation Mistakes Lawyers Make
Podcast: Raise Your Right Hand, Miss Lillian
Jones Day Talks Intellectual Property: Blurrier Lines and Narrow Grounds—Implications of the Ninth Circuit’s Blurred Lines Decision
Episode 015: Confessions of a Business Appraiser: A Conversation with Chris Mercer
Inter Partes Review: Validity Before the PTAB
Supreme Court Raises the Bar for Class Certification in Comcast Corp. v. Behrend
It is relatively uncommon for parties to submit expert declarations in the preliminary-response phase of an IPR proceeding, but recently the Patent Owner in Imperative Care, Inc. v. Inari Medical, Inc. effectively used that...more
2024 brought exciting developments at the Federal Circuit. The court issued its first en banc decision in a patent case in five years in LKQ, which significantly altered the standard for proving obviousness of a design...more
Abuse of Process and/or Sanctions – 37 C.F.R. § 42.12 - Spectrum Solutions LLC v. Longhorn Vaccines & Diagnostics, LLC, IPR2021-00847, IPR2021-00850, IPR2021-00854, IPR2021-00857 & IPR2021-00860 - Decision...more
The U.S. Court of Appeals for the Federal Circuit (“CAFC”) recently issued its opinion in Apple Inc. v. Gesture Technology Partners, LLC, a case that focuses on obviousness under 35 U.S.C. §103, claim breadth and the...more
Kilpatrick partners John Alemanni and Justin Krieger recently presented a CLE addressing “Building a Winning Evidentiary Record at the PTAB (and Surviving Appeal).”...more
“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.” 37 C.F.R. § 42.65(a). With that principle in mind, the PTAB recently denied institution...more
Be an Expert: Precedential PTAB Decision on Conclusory Expert TestimonyStutti TilwaA recent precedential decision from the Patent Trial and Appeal Board (“PTAB”) may serve as a warning for those parties who plan on relying on...more
A recent precedential decision from the Patent Trial and Appeal Board (“PTAB”) may serve as a warning for those parties who plan on relying on expert declarations in their inter partes reviews (“IPR”). On August 24, 2022, the...more
The US Court of Appeals for the Federal Circuit reversed a Patent Trial & Appeal Board obviousness decision, finding that disclosure in the prior art of all recited claim elements across multiple references, without more,...more
Director Vidal recently issued sanctions against OpenSky Industries (“OpenSky”) for attempted extortion during settlement negotiations and abuse of the IPR process for US Patent 7,725,759 and awarded $413,264.15 to VLSI...more
Substantial Evidence in Determining Obviousness - In Schwendimann v. Neenah, Inc, Appeal No. 22-1335, the Federal Circuit held that the PTAB’s finding on obviousness is supported by substantial evidence that a skilled...more
This recurring feature highlights any new PTAB precedential and/or informative decisions, any new substantive Director review decisions, and any new substantive decisions issued by the Precedential Opinion Panel (POP). The...more
The PTAB Strategies and Insights newsletter provides quarterly updates and insights into how best to handle PTAB trial proceedings at the USPTO. It is designed to increase return on investment for all stakeholders looking at...more
Almirall’s patent claims recite: [a]bout 4% w/w of a polymeric viscosity builder comprising acrylamide/sodium acryloyldimethyl taurate copolymer…. The Board instituted an IPR on the patent, where the primary reference...more
As part of the recovery from the global COVID-19 pandemic, the U.S. Court of Appeals for the Federal Circuit took steps to return to normal operations. It began requiring live oral arguments in August 2022 and, by November,...more
In conjunction with the release of the firm's year-in-review report, speakers will offer case summaries and analysis of the significant 2022 appellate rulings discussed in the report. Topics of the featured intellectual...more
In an IPR institution decision issued shortly after the USPTO issued interim guidance on discretionary denials, the PTAB held that the petition presented “compelling evidence of unpatentability,” foreclosing a Fintiv...more
[co-author: Jamie Dohopolski] Love it or hate it, ignore the USPTO Patent Trial and Appeal Board (PTAB) at your peril. The introduction of the PTAB as part of the America Invents Act over ten years ago has forever changed...more
The PTAB Strategies and Insights newsletter provides timely updates and insights into how best to handle proceedings at the USPTO. It is designed to increase return on investment for all stakeholders looking at the entire...more
On July 15, 2019, the USPTO released a second update to Trial Practice Guide for AIA proceedings. The 64-page update reflects some of the recent opinions that the Board has designated as precedential and includes helpful...more
On November 27th, Acting Deputy Chief Administrative Patent Judge Jacqueline Bonilla presented a webinar on the PTAB’s proposed Motion to Amend pilot program. In October 2018, the Patent Office published a request for...more
In This Issue - US Taxation of IP After Tax Reform - U.S. taxation of intellectual property has become astoundingly more complex after the Tax Cuts and Jobs Act. The new rules are so complex that the IRS and Treasury...more