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

Proskauer Rose LLP

Ventures in Venue: Selecting the Proper Patent Venue

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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

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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

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

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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

Williams Mullen

PTAB Designates as Precedential 2014 Decision Governing Communications with Counsel During Deposition

Williams Mullen on

On July 10, 2019, the Patent Trial and Appeal Board designated as precedential Focal Therapeutics, Inc. v. Senorx, Inc., IPR2014-00116, Paper 19 (PTAB, July 21, 2014), which concerned the rules governing depositions in the...more

McDermott Will & Emery

Reasonably Continuous Diligence to Reduction to Practice is Enough

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The US Court of Appeals for the Federal Circuit explained that diligence towards reduction to practice may be established by a showing of reasonably continuous activity. ATI Techs. ULC v. Iancu, Case Nos. 2016-2222, -2406,...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

Wilson Sonsini Goodrich & Rosati

Federal Circuit Holds That Tribal Sovereign Immunity Does Not Apply to Inter Partes Review

The U.S. Court of Appeals for the Federal Circuit has decided whether tribal sovereign immunity required termination of inter partes review (IPR) proceedings before the Patent Trial and Appeal Board (PTAB). At the PTAB, Mylan...more

Foley & Lardner LLP

Federal Circuit Affirms PTAB Ruling That Tribal Immunity Does Not Apply To IPRs

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On July 20, 2018, the Federal Circuit held in St. Regis Mohawk Tribe v. Mylan Pharmaceuticals that tribal sovereign immunity does not prevent IPR on a patent assigned to a tribe asserting such immunity. The court expressly...more

Esquire Deposition Solutions, LLC

4 Things You Must Know about AIA Trial Depositions

After the America Invents Act (AIA) passed with a vote of 304-177 in June 2011, inventors seeking patents had to be the first to file to lay claim to their innovations. As the first major shift in patent law since 1952,...more

McDermott Will & Emery

The Cases that Never Were: Nullified Litigation and the One-Year Bar

McDermott Will & Emery on

Addressing whether either of two previously filed district court actions precluded institution of an inter partes review (IPR) proceeding under the one-year time bar of 35 USC § 315(b), the Patent Trial and Appeal Board...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

McDonnell Boehnen Hulbert & Berghoff LLP

Skeptical St. Regis Mohawk Tribe Requests Discovery Regarding Panel Selection Circumstances

The creation of adversarial procedures before the Patent Trial and Appeal Board under the Leahy-Smith America Invents Act (post-grant review, inter partes review, and covered business methods review) has raised a number of...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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