Elizabeth Holmes, Ghislaine Maxwell, and the Federal Sentencing Guidelines [More with McGlinchey, Ep. 34]
Jones Day Talks®: Patent Litigation, PTAB, Iancu's Legacy, and Institution Discretion
Jones Day Talks: Women in IP: The Supreme Court's "Copyright Day"
The split among district courts as to whether the filing of a patent infringement complaint provides notice to a defendant of its infringing conduct sufficient to support a claim of willful infringement was the subject of a...more
Partners Matt Johnson and Sarah Geers talk about former USPTO Director Andrei Iancu's impact on the PTAB, and what we might expect from a new director under the Biden Administration. They also comment on why patent litigation...more
In December 2020, the Patent Trial and Appeal Board’s (“PTAB” or “Board”) designated an opinion as precedential (Sotera Wireless, Inc. v. Masimo Corporation), where the Board instituted trial, i.e., did not exercise its...more
In Halo Electronics, Inc. v. Pulse Electronics, Inc.,1 the Supreme Court held that 35 U.S.C. Section 284 provides for enhanced damages in egregious cases...more
Infringement under the doctrine of equivalents (as a basis of a successful cause of action having renewed vigor before the Federal Circuit recently (see, e.g., "Galderma Laboratories, L.P. v. Amneal Pharmaceuticals LLC") is...more
Addressing the scope of the Patent Trial and Appeal Board’s (“Board”) discretion under 35 U.S.C. § 325(d) to deny institution, the Board designated three opinions as precedential or informative. Precedential Opinions: In...more
The Patent Trial and Appeal Board (PTAB) recently designated two more opinions as “precedential” dealing with its discretion to reject petitions for inter partes review (IPR) or similar post-grant reviews. Under 35 U.S.C. §...more
PATENT CASE OF THE WEEK - Communication Test Design, Inc. v. Contec, LLC, Appeal No. 2019-1672 (Fed. Cir. March 13, 2020) - This week’s Case of the Week explores two important procedural issues: a court’s discretion to...more
In August 2018, the Patent Office foreshadowed that the Board would be expanding the use of its discretion under 35 U.S.C. §§ 314(a)/324(a) and 325(d) to deny petitions. The Office explained that “[t]here may be other reasons...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
In Davis v. Comerford, 483 Mass. 164 (2019), the Massachusetts Supreme Judicial Court considered whether a judge has authority to issue orders for interim use and occupancy payments during the pendency of a summary process...more
Following the Supreme Court’s decision in SAS v. Iancu, which held that an IPR institution is an “all-or-nothing” proposition, the PTAB lost its ability to rely on “partial institutions” as a case management tool (e.g., by...more
Following the United States Patent and Trademark Office’s (USPTO) recent wave of decisions designated precedential or informative, the USPTO added two more decisions to the list last week: Valve Corp. v. Elec. Scripting...more
On April 18, 2019, Senators Thom Tillis (R-NC) and Chris Coons (D-DE), along with Representatives Doug Collins (R-GA), Hank Johnson (D-GA), and Steve Stivers (R-OH), released a bipartisan framework for 35 U.S.C. § 101...more
In a proceeding that included Patent Office Director Andrei Iancu on the panel, the PTAB issued an order this past week denying institution of 3 IPRs filed by Valve. The decision demonstrates that the PTAB continues to...more
In its first decision since its inception, the Precedential Opinion Panel (“POP”) for the U.S. Patent Trial and Appeal Board (“Board”), in Proppant Express Investments, LLC v. Oren Technologies, LLC, IPR2018-00914, held that...more
On March 13, 2018, the U.S. Patent and Trademark Office Patent Trial and Appeal Board (PTAB)’s Precedential Opinion Panel (POP), consisting of Director Andrei Iancu, Commissioner of Patents Drew Hirshfeld, and newly appointed...more
The PTAB has discretion to deny “follow-on” petitions that challenge the validity of a patent that has been previously subjected to inter partes review. See 35 U.S.C. § 314(a); Gen. Plastic Indus. Co. Ltd. v. Canon Kabushiki...more
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 tackle three important issues: ...more
Motions to Amend: Burden to Prove Amended Claims are Unpatentable Rests with Petitioner - On October 4, 2017, the Federal Circuit issued its long-awaited en banc opinion in Aqua Products, Inc. v. Matal, regarding the...more
On October 24th, the PTAB issued the following notice, designating the following decisions, which address 35 U.S.C. § 325(d), as informative....more
The Patent Trial and Appeal Board (PTAB) recently designated as informative three cases involving discretionary denial of inter partes review under 35 U.S.C. § 325(d). We previously profiled the case of Hospira, Inc. v....more
On October 24th, the PTAB designated three decisions related to discretionary petition denials under 35 U.S.C. § 325(d) as informative. Unified Patents, Inc. v. Berman is discussed below. We previously reported on Hospira,...more
This is the first of a three-part series discussing developments around Section 325(d). Part two will appear in our November 2017 newsletter and part three will appear in our December 2017 newsletter. Congress granted the...more
Historically, patent owners have pled willful infringement in an effort to support the collection of enhanced damages from an infringer. Typically, if there was willful infringement the damages were enhanced and often...more