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Mintz - Intellectual Property Viewpoints

AI-Based Patent Applications: Recent History and the Future

The emergence of artificial intelligence (AI) as a field of technology has correlated with an increase in patent application filings on AI-related inventions over the past two decades. With more filings than ever, businesses...more

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

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

Avoidable Errors at the PTAB: When an “Index” is Not an “Index”

Last week, Microsoft got tripped up at oral argument on the blocking and tackling of IPR practice:  making sure your prior art is prior art....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

Wilson Sonsini Goodrich & Rosati

Overview of the Patent Landscape in the Blockchain, Cryptocurrency, and Cryptographic Token Space

This analysis identified and processed over 8,000 patents and patent applications worldwide relating to blockchain, cryptocurrencies, and cryptographic tokens as of July 2018. The analysis did not include patents and...more

Morrison & Foerster LLP

JPO Released Its Practical Guide to SEP Licensing Negotiations

The Japan Patent Office (JPO) published a 56-page “Guide to Licensing Negotiations Involving Standard Essential Patents” (“Guide”) on June 5, 2018. The Guide provides an overview of licensing negotiation processes and royalty...more

McDermott Will & Emery

Lack of Standing, Bad Faith Conduct Result in Fees Award

Affirming a district court decision, the US Court of Appeals for the Federal Circuit held that a litigant may be deemed a prevailing party if it receives a dismissal with prejudice against the plaintiff, even if it did not...more

Knobbe Martens

Raniere v. Microsoft Corporation

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Federal Circuit Summaries - Before Lourie, O’Malley, and Wallach. Appeal from the United States District Court for the Northern District of Texas Summary: When a case is dismissed with prejudice for lack of standing,...more

McDermott Will & Emery

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

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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

McDonnell Boehnen Hulbert & Berghoff LLP

Mastermine Software, Inc. v. Microsoft Corp. (Fed. Cir. 2017)

Mastermine brought a patent infringement action against Microsoft in the District of Minnesota. At issue were four claims of U.S. Patent No. 7,945,850 and three claims of U.S. Patent No. 8,429,518. After claim construction...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

Akin Gump Strauss Hauer & Feld LLP

District Court Precludes Defendant from Asserting Invalidity Grounds That It Raised or Could Have Reasonably Raised in IPR...

On May 11, 2017, Magistrate Judge Roy Payne in the Eastern District of Texas recommended that patentee Biscotti’s inter partes review (IPR) estoppel motion be granted–in-part and denied-in-part....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

Morrison & Foerster LLP

What’s behind Microsoft's latest IP protection offer?

Microsoft Corp in February unveiled a new program that provides what it’s touting as “best-in-industry” protection against threats of intellectual property lawsuits. Under the Microsoft Azure IP Advantage program,...more

Knobbe Martens

PTAB Applies Collateral Estoppel to Exclude Purported Patent Owner

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The PTAB issued an order applying collateral estoppel to determine that one purported owner of U.S. Patent 7,215,752 and U.S. Patent 7,844,041 (the “challenged patents”) had no authority to act as the patent owner in...more

McDermott Will & Emery

Copyright Date Alone Does Not Prove Public Accessibility of Software User Guide

Addressing the standard for establishing whether a prior art reference qualifies as a “printed publication,” the Patent Trial and Appeal Board (PTAB) denied institution of inter partes review (IPR), finding that the...more

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