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Litigation Strategies Patent Litigation

Jones Day

Trial Date Drives PTAB’s Denial of IPR Institution

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On April 16, 2025, the Patent Trial and Appeal Board (PTAB) denied institution of inter partes review (IPR) for several claims of U.S. Patent No. 7,187,307, owned by Universal Connectivity Technologies, Inc. HP Inc., Dell...more

A&O Shearman

Amendments in UPC proceedings: current developments and practical guidelines

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Recent decisions from various UPC divisions provide valuable guidance for parties seeking to amend their cases or patents. The decisions emphasize that it is crucial for parties to know how to distinguish between the rules...more

Sheppard Mullin Richter & Hampton LLP

A Line in the Sand: Federal Circuit Bounds IPR Estoppel in Ingenico v. IOENGINE

In a significant development for patent litigants, the Federal Circuit in Ingenico Inc. v. IOENGINE, LLC, affirmed an important limitation on the scope of IPR estoppel under 35 U.S.C. § 315(e)(2). Specifically, the court held...more

Akin Gump Strauss Hauer & Feld LLP

Director Vacates Decision to Institute: Investment in Parallel Proceeding Outweighed Petitioner’s Sotera Stipulation

The USPTO Director vacated the board’s decision to institute inter partes review based on an erroneous application of the Fintiv factors. Specifically, the Director found that the board placed too much emphasis on...more

Jones Day

PTAB Denies Institution of IPRs in Apple v. Haptic

Jones Day on

In two recent decisions, the Patent Trial and Appeal Board (PTAB) denied institution of inter partes review (IPR) proceedings sought by Apple Inc. against Haptic, Inc. regarding U.S. Patent No. 9,996,738 B2. These...more

Proskauer - The Patent Playbook

Ingenico Inc. v. IOENGINE, LLC: Federal Circuit Resolves the IPR Estoppel Split

In what is certain to become a landmark decision, the Federal Circuit has resolved a long-standing question that divided patent litigators and judges alike: does IPR estoppel apply to physical systems (“system art”) described...more

Proskauer - The Patent Playbook

Value and Risk of Overlapping Intellectual Property Protections

A well-orchestrated intellectual property strategy requires carefully and thoughtfully leveraging copyright, trademark, and patent laws, as highlighted by a recent decision handed down by the United Sates Court of Appeals for...more

Goodwin

District of New Jersey Denies Preliminary Injunction in Ustekinumab Breach of Contract Case

Goodwin on

On April 28, the U.S. District Court for the District of New Jersey denied Janssen Biotech, Inc. (“Janssen”) and Johnson & Johnson’s motion for a preliminary injunction seeking to enjoin Samsung Bioepis Co. Ltd. (“Samsung”)...more

Baker Botts L.L.P.

Impact of New USPTO Interim Procedures on Discretionary Denial of AIA Proceedings

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Key Takeaway: The USPTO has reinstated earlier discretionary denial standards (including Fintiv) and introduced a new two-phase review process, which is expected to lead to more frequent denials of IPR petitions. Both patent...more

Fish & Richardson

[Webinar] Analyzing SEPs: Strategies for Licensing Negotiations - May 15th, 1:30 pm ET

Fish & Richardson on

Most standard setting organizations require their members to agree to license their standard essential patents (SEPs) on fair, reasonable, and non-discriminatory terms. But there is no bright-line rule for determining whether...more

Proskauer - The Patent Playbook

Amazon Patent Evaluation Express (APEX): Personal Jurisdiction Considerations

The Supreme Court recently declined to review a Federal Circuit decision that could have significant implications for patent owners that rely on the Amazon Patent Evaluation Express (“APEX”) program....more

Hogan Lovells

Court of Appeal hands down reasons for awarding AZ an interim injunction in the UK against Glenmark’s generic dapagliflozin for...

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Just under two weeks ago, we reported the Court of Appeal had awarded AstraZeneca (AZ) a preliminary injunction in the UK against Glenmark’s generic dapagliflozin (dapa) product for type II diabetes, until the hearing...more

McDermott Will & Emery

High Burden Dooms Intra-District Transfer Request

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The US Court of Appeals for the Federal Circuit denied a mandamus petition requesting transfer from the Marshall division to the Sherman division within the US District Court for the Eastern District of Texas, finding that...more

Proskauer - The Patent Playbook

Litigating Patents in the ITC: When and Why Companies Take the Section 337 Route

Formerly a niche venue for trade-related matters, the International Trade Commission (“ITC”) has emerged as a battleground for many high stakes intellectual property disputes, particularly in the technology, life sciences,...more

Troutman Pepper Locke

What Were the Cooler Wars? (Part 2) — No Infringement Intended Podcast

Troutman Pepper Locke on

In this episode, Austin Padgett and Rusty Close delve back into the ongoing legal battle known as the "Cooler Wars" between YETI and RTIC. In Part 2, they discuss the various intellectual property strategies YETI employed to...more

A&O Shearman

How to commence main proceedings before the UPC: deadlines and court fees

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Patent holders must start Unified Patent Court (UPC) proceedings on the merits within a certain period if they do not want to risk the revocation of provisional measures. The UPC has now clarified that filing the statement of...more

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

Understanding the PTAB’s Recent Informative Decision: Cambridge Mobile Telematics, Inc. v. Sfara, Inc.

The Patent Trial and Appeal Board (PTAB) recently designated its decision in Cambridge v. Sfara (IPR2024-00952) as an informative decision.[1] This designation addresses an important issue in inter partes review (IPR)...more

Morgan Lewis

A New Era for the PTAB: Discretion Returns, Layoffs Loom, and Early Challenges Encouraged

Morgan Lewis on

The USPTO has launched a sweeping recalibration of its post-grant proceedings at the PTAB, signaling a decisive pivot back toward discretionary denials of patent challenges. With the rescission of prior procedural guidance, a...more

Mayer Brown

Examining New Guidance from the USPTO on Discretionary Denials in AIA Post-Grant Proceedings

Mayer Brown on

Recent changes at the US Patent and Trademark Office (USPTO) concerning the Patent Trial and Appeal Board's (PTAB) discretion to deny institution of inter partes reviews (IPRs) or post-grant reviews (PGRs) based on parallel...more

Akin Gump Strauss Hauer & Feld LLP

Plaintiff’s Declaratory Action Not Anticipatory Litigation Due to Patentee’s Delayed Response to Licensing Request

The Central District of California denied a defendant’s motion to dismiss or transfer plaintiff’s first-filed declaratory judgement action based on defendant’s later-filed patent infringement suit in Wisconsin. Though suit...more

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

Does Your Office Post-Grant Strategy Account for the Rise of Serial Challenges Flowing From the PTAB to the CRU?

After eight weeks of shifts in governmental policies, the patent bar is feeling repercussions from all directions. One critical area in flux is the post-grant challenge arena. With a reduced PTAB head count and a steady...more

Sunstein LLP

Collateral (Patent) Damage Undone by Federal Circuit?

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In Kroy IP Holdings v. Groupon, The Federal Circuit issued a decision that should come as a comfort to patent owners, addressing the interplay between decisions of the Patent Trial and Appeal Board (“PTAB”) in inter partes...more

Baker Botts L.L.P.

The Impact of Prosecution Length on Infringement Outcomes in Patent Litigation

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This article continues our analysis of over 89,000 patents to determine how the number of office actions to allowance during prosecution impacts litigation outcomes. Last month we discussed how prosecution length impacts...more

Holland & Knight LLP

New Guidance Regarding Fintiv Discretionary Denial at the PTAB

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Two recent memoranda from the Patent Trial and Appeal Board (PTAB or Board) have sought to clarify the factors by which boards will evaluate discretionary denial under Fintiv. This guidance follows the U.S. Patent and...more

Hudnell Law Group

PTAB Recalibrates Review: New Discretionary Denial Framework and Pre-Institution Reform

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In less than a month, the United States Patent and Trademark Office (“USPTO”) has dramatically reformed its policies and procedures for exercising its discretion to deny institution of AIA post-grant proceedings. First, on...more

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