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Microsoft Patents Patent Litigation

Jones Day

Existence != Access – Public Accessibility Must be Clear

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In a recent decision, the Patent Trial and Appeals Board denied institution of inter partes review after holding that Petitioner Microsoft’s key obviousness reference did not qualify as a printed publication. Microsoft Corp....more

AEON Law

Patent Poetry: When is a patented product sold “within the United States”?

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Under 35 U.S. Code § 271, a US patent is infringed when someone: without authority makes, uses, offers to sell, or sells any patented invention, within the United States or imports into the United States any patented...more

Alston & Bird

Patent Case Summaries - May 2022 #2

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A weekly summary of the precedential patent-related opinions issued by the Court of Appeals for the Federal Circuit and the opinions designated precedential or informative by the Patent Trial and Appeal Board....more

Knobbe Martens

No “Automatic” Review Under O2 Micro

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KAUFMAN v. MICROSOFT CORPORATION - Before Dyk, Reyna, and Taranto. Appeal from the District Court for the Southern District of New York - Summary:  An “automatic” method does not require all steps in the method to be...more

Jones Day

Some Conditions May Apply – Fintiv Factor 4 Analysis

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In a recent decision, the Patent Trial and Appeal Board granted institution of inter partes review after accepting the Petitioner Microsoft’s stipulation to forego overlapping challenges in parallel district court proceedings...more

Jones Day

Fed. Cir.: Don’t Expect PTAB to Do Your Work For You

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The Federal Circuit’s recent decision in Microsoft Corporation v. FG SRC, LLC, No. 2020-1928 (Fed. Cir. June 17, 2021), is a stark reminder that an IPR petitioner must always set forth its grounds in its petition with...more

Jones Day

Joinder Bid After Prior Petition Denial Fails

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After being sued by Uniloc in April 2018 for infringement of U.S. Patent No. 6,467,088 (“Reconfiguration Manager for Controlling Upgrades of Electronic Devices”), Apple challenged claims 1-21 of that patent at the PTAB in...more

Patterson Belknap Webb & Tyler LLP

As Trial Concludes, Judge Hellerstein Issues, then Reconsiders, Patent Marking Ruling

As trial in Kaufman v. Microsoft Corporation wound down yesterday, United States District Court Judge Alvin K. Hellerstein (S.D.N.Y.) granted Defendant Microsoft Corporation (“Microsoft”)’s motion to limit damages to those...more

Jones Day

Should You File A “Copycat” IPR Petition?

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If you don’t have new grounds to add, you may as well copycat. On September 4, 2019, the PTAB denied Microsoft’s petition requesting inter partes review (“IPR”) of U.S. Patent No. 7,167,487 (“the ’487 patent”); furthermore,...more

McDermott Will & Emery

To Be Anticipatory, Reference Must Disclose All Claim Elements Arranged as in Claim

McDermott Will & Emery on

The US Court of Appeals for the Federal Circuit affirmed a decision that a patent challenger at the Patent Trial and Appeal Board (PTAB) must prove invalidity by a preponderance of evidence and must establish anticipation...more

Jones Day

EDTX Interprets Federal Circuit Precedent Narrowly, Recommends Applying §315 Estoppel Broadly

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In Biscotti Inc. v. Microsoft Corp., Magistrate Judge Payne recommended that estoppel under §315(e) apply broadly against Microsoft in an upcoming patent infringement trial scheduled for early June 2017. No....more

McDonnell Boehnen Hulbert & Berghoff LLP

Biscotti Inc. v. Microsoft Corp. (E.D. Tex. 2017)

Magistrate Recommends Narrow Interpretation of Inter Partes Review Estoppel Provision - Earlier this month, in Biscotti Inc. v. Microsoft Corp., U.S. Magistrate Judge Roy S. Payne of the U.S. District Court for the Eastern...more

Knobbe Martens

Magistrate Judge Recommends IPR Estoppel Bar of Prior Art References

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A magistrate judge in the Eastern District of Texas recommended in Biscotti, Inc. v. Microsoft Corp., No. 2:13-CV-01015, DI 191 (E.D. Tex. May 11, 2017) that Microsoft should be estopped from asserting invalidity grounds that...more

Goodwin

Issue Four: PTAB Trial Tracker

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Parallel District Court and PTAB Proceedings - In Douglas Dynamics, LLC v. Meyer Prods. LLC, No. 3:14-cv0886-JDP (W.D. Wis. April 18, 2017), the district court for the Western District of Wisconsin drew a clear line...more

Mintz - Intellectual Property Viewpoints

Even After Enfish, Alice Still Casts a Shadow at the PTAB

When it comes to Enfish, the PTAB may have just indicated that it prefers to cut bait. In Informatica Corp. v. Protegrity Corp., CBM2015-0021 (May 31, 2016), the PTAB held that U.S. Patent No 6,321,201 was void under Alice...more

BakerHostetler

Major 101 Decision – Enfish v. Microsoft

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Today in Enfish v. Microsoft, the Federal Circuit held software claims patent eligible, reversing the district court’s grant of summary judgment on 101. This is a major decision because it is only the second since Alice where...more

Morrison & Foerster LLP

MoFo IP Newsletter - October 2015

The Survey Says: Tiffany Is Not Generic for A Ring Setting - Last month, the Southern District of New York granted summary judgment to Tiffany & Co. on its trademark infringement claim against Costco Wholesale...more

Kelley Drye & Warren LLP

Microsoft And Google Resolve FRAND And Other Patent Disputes

Microsoft and Google announced that they have settled their global patent disputes, including the litigation underlying the FRAND dispute that gave rise to Judge Robart’s first-of-its-kind decision on determining a FRAND...more

Perkins Coie

Inter Partes Review Proceedings: A Third Anniversary Report

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When inter partes review (IPR) proceedings became effective in September 2012, few people would have predicted the transformative effect it would have on patents and the litigation landscape. Three years in, IPR has become...more

McDermott Will & Emery

Dismissal Without Prejudice Does Not Trigger IPR Statutory Bar - Microsoft Corporation v. Parallel Networks Licensing, LLC

Addressing the standard for the 35 U.S.C. §§ 315(a)(1) and (b) statutory bars to filing an inter partes review (IPR) petition, the Patent Trial and Appeal Board (PTAB or Board) concluded that, notwithstanding by the...more

McDermott Will & Emery

More Guidance on “Financial Service or Product” for Instituting CBM Review - Microsoft Corporation Inc. v. ADC Technology Inc.

Addressing whether an abstract idea involves “financial product or service” in the context of covered business method (CBM) reviews, and providing additional guidance on the analysis, the Patent Trial and Appeal Board (PTAB...more

K&L Gates LLP

PTAB Lays Initial Groundwork for Post-Remand Proceedings

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In a key development regarding Inter Partes Review (IPR) procedure, on September 1, 2015, the Patent Trial and Appeal Board (the “Board”) issued an order that lays the groundwork for how the Board may address cases on remand...more

McDonnell Boehnen Hulbert & Berghoff LLP

Microsoft Corporation v. Proxyconn, Inc. (Fed. Cir. 2015)

Earlier this week, we noted that parties wishing to challenge IPR Final Written Decisions from the PTAB on appeal to the Federal Circuit would face an uphill challenge. However, even if that challenge is extremely difficult,...more

Wilson Sonsini Goodrich & Rosati

Ninth Circuit Affirms District Court Decision Regarding Reasonable and Non-Discriminatory (RAND) Obligations in Patent Licensing...

In a recent decision, the Ninth Circuit affirmed a jury verdict awarding Microsoft $14.5 million for Motorola's breach of its obligation to offer Microsoft reasonable and non-discriminatory (RAND) licenses for certain...more

Ladas & Parry LLP

The Federal Circuit Reviews Patent Trial and Appeal Board Decisions on Inter Partes Review

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There are now three decisions of the Federal Circuit on appeals from the Patent Trial and Appeal Board (PTAB) on inter partes reviews: - In re Cuozzo Speed Technologies LLC - Belden Inc. v. Berk-Tek LLC and -...more

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