News & Analysis as of

Intellectual Property Protection Patent Infringement Expert Testimony

McDermott Will & Emery

Judicial Bias and Erroneous Admission of Expert Testimony Prompt Case Reassignment

McDermott Will & Emery on

The US Court of Appeals for the Federal Circuit reversed a district court’s decision to admit expert testimony and remanded the case to a different judge, noting that “from the moment this case fell in his lap, the trial...more

McDermott Will & Emery

Bottling the Truth: Equivalence and Reverse Equivalence

McDermott Will & Emery on

The US Court of Appeals for the Federal Circuit ruled that the “substantially the same way” comparison in connection with a doctrine of equivalents (DOE) analysis involving a means-plus-function claim limitation should focus...more

Jones Day

Expert Testimony That Does Not Disclose Underlying Facts Or Data Entitled To Little Weight

Jones Day on

“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

McDermott Will & Emery

Equivalence Requires Element-by-Element Proof With Linking Argument

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The US Court of Appeals for the Federal Circuit affirmed a district court determination that a patent owner had not provided the “particularized testimony and linking argument” required to demonstrate equivalence under the...more

Baker Botts L.L.P.

Intellectual Property Report - August 2024

Baker Botts L.L.P. on

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

Baker Botts L.L.P.

Be an Expert: Precedential PTAB Decision on Conclusory Expert Testimony

Baker Botts L.L.P. on

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

Jones Day

PTAB Issues Sanctions for Attempted Extortion During “Settlement Negotiations”

Jones Day on

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

Fish & Richardson

Amended FRE 702 on Expert Testimony Effective December 1, 2023

Fish & Richardson on

Experts play a key role in patent litigation as they explain complex technical issues including infringement, validity, and damages to judges and juries. The persuasiveness of their testimony can often mean the difference...more

Knobbe Martens

Federal Circuit Review - October 2023

Knobbe Martens on

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

Sheppard Mullin Richter & Hampton LLP

Cyntec Company, Ltd. v. Chilisin Electronics Corp., Chilisin America Ltd. Nos. 2022-1873, (Fed. Cir. October 16, 2023)

This case is primarily about the Daubert standard as applied to expert testimony on damages. The Federal Circuit reversed the Northern District of California’s admission of expert testimony on damages, which relied on...more

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

Federal Circuit Appeals from the PTAB and ITC: Summaries of Key 2022 Decisions: Kyocera Senco Indus. Tools v. Int’l Trade Comm’n,...

The patent holder, Kyocera, filed a complaint in the International Trade Commission against Koki in Certain Gas Spring Nailer Prods. & Components Thereof, Inv. No. 337-TA-1082, 2020 WL 2093834 (Apr. 28, 2020). Kyocera’s...more

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

Federal Circuit Appeals from the PTAB and ITC: Summaries of Key 2022 Decisions

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

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

[Webinar] Federal Circuit Appeals from the PTAB and ITC: Summaries of Key 2022 Decisions - February 2nd, 1:00 pm - 2:00 pm EST

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

Knobbe Martens

Expert Testimony That Contradicts Patent Specification Fails to Create a Genuine Issue of Fact in a Patent Eligibility Dispute

Knobbe Martens on

CAREDX, INC. V. NATERA, INC. Before Lourie, Bryson, and Hughes - Summary: Expert testimony that steps of challenged patent claims were unconventional failed to preclude summary judgment of ineligibility where...more

Sunstein LLP

It’s Not Complicated: Make Sure the Technical Expert You Retain to Testify About Infringement Has Credentials That Match the Level...

Sunstein LLP on

In infringement suits, the patentee must show that each element of a patent claim is infringed either literally by an accused product or infringed under the doctrine of equivalents. Literal infringement means the accused...more

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

2021 PTAB Year in Review: Analysis & Trends

[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

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

PTAB Strategies and Insights: January 2022 - Federal Circuit Holds that Your Technical Expert Must be a POSA

In Kyocera Senco Industrial Tools Inc. v. International Trade Commission, the Federal Circuit held in a precedential opinion that expert witnesses must at least have ordinary skill in the art. Because Kyocera’s expert did not...more

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

PTAB Strategies and Insights: January 2022 - Does the Limit Exist?: Negative Limitations in Novartis v. Accord

In an appeal, Novartis Pharmaceuticals v. Accord Healthcare, Inc., the issue of whether a patent provides sufficient written description of a negative limitation split the panel at the Federal Circuit. Novartis...more

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

PTAB Strategies and Insights: January 2022

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

Farella Braun + Martel LLP

Insights Into the First Patent Trial in Waco, Texas - MV3 Partners v. Roku

A 7-person jury in Waco, Texas, recently returned its verdict in the first patent trial held before Judge Albright: defense verdict, no finding of infringement. In the MV3 Partners v. Roku dispute, MV3 Partners had sought...more

Goodwin

ITC 337 Quarterly Insider Q2 2020

Goodwin on

Goodwin’s 337 Quarterly Insider remains the premiere publicly available source for keeping up to date on all meaningful decisions coming out of the Commission. Please find below Goodwin’s insights on the months of April, May,...more

Akin Gump Strauss Hauer & Feld LLP

Previous Patent Infringement Contentions and Expert Testimony May Inform the Scope of Subsequent Allegations

The Federal Circuit recently affirmed a district court’s holding that a settlement agreement between a patentee and a defendant manufacturer released additional defendants from liability because their products used components...more

Fenwick & West LLP

Intellectual Property Bulletin - Summer 2018

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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

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