News & Analysis as of

Inter Partes Review (IPR) Proceeding Patent Infringement Federal Rules of Civil Procedure

Proskauer Rose LLP

Ventures in Venue: Selecting the Proper Patent Venue

Proskauer Rose LLP on

Amongst the many decisions an attorney makes throughout litigation, there is one choice that can shape the outcome of a case way before filing a motion, setting discovery and trial strategy, or even calling a witness: venue,...more

Fish & Richardson

Five Tactics for Cybersecurity Companies to Defeat Patent Infringement Claims

Fish & Richardson on

Navigating patent infringement claims requires a deep understanding of both the legal landscape and the specifics of the technology at stake, especially in the fast-evolving cybersecurity sector. Creative litigation...more

Akin Gump Strauss Hauer & Feld LLP

Service of Complaint Without Exhibits Does Not Trigger the One-Year Time Bar to File IPR

The Patent Trial and Appeal Board held that service of a bare complaint without exhibits did not trigger the one-year time bar under 35 U.S.C. § 315(b), which requires the filing of a petition for inter partes review within...more

Fox Rothschild LLP

Chief Judge Stark Denies Defendants’ Motions To Dismiss Plaintiff’s Complaints Asserting Patent Infringement Due To The Use Of...

Fox Rothschild LLP on

By Memorandum Opinion entered by The Honorable Leonard P. Stark in Stragent, LLC v. BMW of North America, LLC et al., Civil Action No. 20-510-LPS (D.Del. March 25, 2021) (consolidated), the Court denied Defendants’ motions to...more

Morrison & Foerster LLP - Federal Circuitry

Last Week in the Federal Circuit (December 7-11): Standing and Invalidating the Court’s Own Local Rule

This week we talk about the most important standing decision decided by any court last week.  Ok, perhaps, it was the second most important standing decision.  Last week’s case addresses who may sue, and when they must sue...more

Akin Gump Strauss Hauer & Feld LLP

PTAB’s Denial of IPR Petition Forecloses Defendant’s Inequitable Conduct Claim in District Court

Relying heavily on the Patent Trial and Appeal Board’s denial of an inter partes review (IPR) petition involving the patent-in-suit, a court in the Eastern District of Virginia recently refused to let the defendant amend its...more

Sheppard Mullin Richter & Hampton LLP

Intellectual Property Outlook: Cases and Trends to Follow in 2020 — Part 3

In this four-part series, we take a look forward at the cases, legislation, and other trends that are likely to have a significant impact on intellectual property law and practice in 2020. In the first two parts of the...more

McDermott Will & Emery

Got Served? The PTAB Must Figure It Out

McDermott Will & Emery on

The US Court of Appeals for the Federal Circuit addressed the Patent Trial and Appeal Board’s (PTAB’s) role in determining proper service under 35 U.S.C. §315(b), and found that the PTAB correctly determined that the...more

Akin Gump Strauss Hauer & Feld LLP

Federal Circuit: Time-Bar Challenge to IPR Doomed by Patent Owner’s Conclusory and Newly Raised Arguments

The Federal Circuit rejected a patent owner’s time-bar challenge to an inter partes review (IPR) proceeding, holding that the patent owner failed to provide sufficient details to establish proper service of a complaint for...more

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

PTAB Strategies and Insights - September 2019: PTAB Further Clarifies DJ Action Time Bar and Statutory Disclaimers

The PTAB designated at least three more decisions as precedential. Of note, two of the cases rely on the Federal Circuit’s en banc decision in Click to Call, which is scheduled for argument at the Supreme Court on December 9,...more

Jones Day

A Truism that Once Again Bears Repeating: Don’t Wait Until the Last Minute

Jones Day on

A recent decision by the Patent Trial and Appeal Board (“PTAB”) denying a petition for inter partes review serves as a stark reminder of the oft-repeated truism, “don’t wait until the last minute.” See VIZIO, Inc. v. ATI...more

Schwabe, Williamson & Wyatt PC

Fresh From the Bench: Latest Federal Circuit Court Cases

Nalco Co. v. Chem-Mod, LLC, Appeal No. 17-1036 (Fed. Cir. Feb. 27, 2018) In Nalco Company v. Chem-Mod, LLC, the Federal Circuit reviewed the district court’s decision to dismiss Nalco Company’s complaint for failure to...more

Morrison & Foerster LLP - MoFo@ITC

UV Curable Coatings: No Exergen, but PTAB Decision Leads to Stricken Inequitable Conduct Defense

In a recent decision in UV Curable Coatings for Optical Fibers, Inv. No. 337-TA-1031, Judge MaryJoan McNamara struck a respondent’s inequitable conduct defense, which the respondent based on the complainants’ conduct during...more

McDermott Will & Emery

Declarant Must Be Made Available for Deposition in the United States - Square, Inc. v. REM Holdings 3, LLC

McDermott Will & Emery on

Addressing the location of a deposition of patent owner’s declarant, the U.S. Patent and Trademark Office’s (PTO) Patent Trial and Appeal Board (PTAB or Board) concluded that, absent an agreement between the parties to...more

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