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Jenner & Block

Jenner & Block Japan Newsletter - January 2025

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Welcome to the January 2025 edition of the Jenner & Block Japan Newsletter, a publication containing updates about legal developments in the United States that may be noteworthy to our clients and other leaders in the...more

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

PTAB Strategies and Insights - February 2021

[co-author: Kathleen Wills] 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...more

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

Federal Circuit Appeals from the PTAB and ITC: Summaries of Key 2020 Decisions: Acoustic Technology, Inc. v. Itron Networked...

Acoustic sued Itron for infringement of its patent, and the two parties settled, with Itron taking a license to the patent. Acoustic later sued Silver Spring for infringement. Silver Spring petitioned for inter partes review...more

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

Federal Circuit Appeals From The PTAB: Summaries of Key 2019 Decisions: Power Integrations, Inc. v. Semiconductor Components...

Semiconductor Components, doing business as ON Semiconductor, petitioned for inter partes review (IPR) of several claims of Power Integration’s U.S. Patent No. 6,212,079. The Patent Trial and Appeal Board (PTAB) instituted...more

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases - February 2020 #3

PATENT CASE OF THE WEEK - In re: Google LLC, Appeal No. 2019-126 (Fed. Cir. Feb. 13, 2020) - In this week’s Case of the Week, the Federal Circuit granted mandamus to dismiss or transfer a patent infringement suit for...more

McDermott Will & Emery

Pre-Institution Merger Creates Time Bar Under § 315(b)

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Addressing for the first time whether real-parties-in-interest (RPIs) are evaluated at the time a petition is filed or at the time of institution for purposes of § 315(b), the US Court of Appeals for the Federal Circuit held...more

Akin Gump Strauss Hauer & Feld LLP

PTAB Must Consider Privity and Real Party-in-Interest Relationships Arising After Filing but Before Institution for Time-Bar...

The Federal Circuit vacated a PTAB decision invalidating claims of U.S. Patent No. 6,212,079 (the “’079 Patent”) on the grounds that the inter partes review (IPR) petition was time-barred as a result of a merger between the...more

Knobbe Martens

Federal Circuit Review - June 2019

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One-year Clock for Filing IPR Petition Applies to Litigants and Parties that Become Privies of the Litigant Prior to Institution. In Power Integrations, Inc v. Semiconductor Components, Appeal No. 2018-1607, the Federal...more

Foley & Lardner LLP

Buyer Beware: Post-Facto Mergers a New Potential IPR Killer

Foley & Lardner LLP on

Overturning prior PTAB precedent, the Federal Circuit has now held that post-facto business mergers that create a new real-party-in-interest (“RPI”) trigger the one-year bar date for filing IPR petitions on patents asserted...more

Knobbe Martens

One-Year Clock for Filing IPR Petition Applies to Litigants and Parties That Become Privies of the Litigant Prior to Institution

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POWER INTEGRATIONS, INC v. SEMICONDUCTOR COMPONENTS - Before Prost, Reyna, and Stoll. Appeal from the Patent Trial and Appeal Board. Summary: An IPR is time-barred under 35 U.S.C. § 315(b) if, at the time of...more

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

Federal Circuit clarifies that a post-filing change in RPI status can trigger the § 315(b) time-bar

Federal Circuit clarifies that a post-filing change in RPI status can trigger the § 315(b) time-bar and that there are exceptions to issue preclusion in IPR appeals - On June 13, 2019, the Court of Appeals for the Federal...more

McDermott Will & Emery

Untimely Presentation of Updated Mandatory Notice Is Not a Cause for Termination - Valeo North America, Inc. v. Magna Electronics...

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Addressing a petitioner’s untimely Updated Mandatory Notice following a merger, the U.S. Patent and Trademark Office’s (PTO) Patent Trial and Appeal Board (PTAB or Board) denied a patent owner’s motion to terminate an inter...more

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