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A&O Shearman

Federal Circuit Affirms Non-Infringement At Summary Judgment On “Document Stream” Patents In Mirror Worlds Technologies, LLC v....

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Mirror Worlds Technologies, LLC ("Mirror Worlds") owns U.S. Patent Nos. 6,006,227; 7,865,538; and 8,255,439, which claim methods for storing, organizing, and presenting data in time-ordered streams on a computer system. In...more

Smart & Biggar

2022 mid-year highlights in Canadian life sciences IP and regulatory law

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In the first half of 2022, Rx IP Update reported on a number of developments in Canadian life sciences IP and regulatory law. The Rx IP Update team at Smart & Biggar has collected the top stories from January to July and...more

Holland & Knight LLP

U.S. District Judge: Method of Determining Webpage Visitor Intent Is Abstract

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In USC IP Partnership, L.P. v. Facebook, Inc., 2021 WL 6690275, U.S. District Judge Alan Albright of the U.S. District Court for the Western District of Texas found U.S. Patent No. 8,645,300 invalid under 35 U.S.C. §101...more

Spilman Thomas & Battle, PLLC

Decoded: Technology Law Insights, Volume 2, Issue 22

Assignment and Recordation of Patent Ownership Rights - A patent has the attributes of intangible personal property: it can be sold or mortgaged; it may be bequeathed by a will; and it may pass to the heirs of a deceased...more

Spilman Thomas & Battle, PLLC

Decoded: Technology Law Insights, Volume 2, Issue 21

Nature of Patents and Patent Rights - When a patent is issued under the seal of the United States Patent and Trademark Office, it is signed by the Director of the USPTO or an Office official. The patent contains a grant...more

Mintz - Intellectual Property Viewpoints

Good News/Bad News: Patent Owners and Petitioners Both Make Gains in CAFC Uniloc Decision

The Federal Circuit’s recent Uniloc 2017 v. Facebook Inc. decision is a mixed bag of good and bad news for both patent owners and inter partes review petitioners. On the plus side for patent owners (but not for petitioners),...more

Haug Partners LLP

Federal Circuit Clarifies Scope of PTAB Review - estoppel decisions appealable under § 314(d)

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Uniloc 2017, LLC v. Facebook, Inc., Case No. 19-1688 (Fed. Cir. March 9, 2021) - The Federal Circuit has further clarified the scope of what types of PTAB decisions are appealable under 35 U.S.C. § 314(d). In Uniloc 2017 v....more

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

Uniloc v. Facebook: Federal Circuit Rules Against a Finding of Estoppel in Joinder

Earlier this month, in the precedential decision Uniloc 2017 LLC v. Facebook Inc., the Court of Appeals for the Federal Circuit (“the CAFC”) upheld the Patent Trial and Appeal Board (“the Board”) on the issue of estoppel (or...more

McDermott Will & Emery

No Estoppel in the Name of Different Interests and Claims

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The US Court of Appeals for the Federal Circuit found that 35 USC § 314(d) did not bar its review of a Patent Trial & Appeal Board determination that a petitioner was not estopped from maintaining inter partes review (IPR)...more

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases - March 2021 #3

Uniloc 2017 LLC v. Facebook Inc., Appeal Nos. 2019-1688, -1689 (Fed. Cir. Mar. 9, 2021) In this week’s Case of the Week, Uniloc appealed from two consolidated IPR decisions finding multiple claims unpatentable as obvious....more

Knobbe Martens

Reviewability of PTAB Estoppel Decisions

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UNILOC 2017 LLC v. FACEBOOK INC. Before Lourie, Wallach, and Chen. Appeal from the Patent Trial and Appeal Board. Summary: 35 U.S.C. § 314(d) does not preclude Federal Circuit review of the Patent Trial and Appeal...more

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

Still No Same Party Joinder and Joinder of New Issues through 35 U.S.C. § 315(c)

The Federal Circuit reconfirmed its interpretation of the IPR joinder rules of 35 U.S.C. § 315(c) after the panel’s rehearing in Facebook, Inc. v. Windy City Innovations, LLC, No. 2018-1400, 2020 WL 5267975 (Fed. Cir. Sept....more

Haug Partners LLP

Facebook v. Windy City - Federal Circuit Justifies Judicial Review of PTAB Joinder Decisions at the Institution Stage

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WHAT DO WE KNOW? 1. On September 4, 2020, the Federal Circuit modified and reissued its March 18, 2020 Facebook v. Windy City opinion to address the Supreme Court’s intervening April 20, 2020 Thryv v. Click-to-Call opinion...more

Knobbe Martens

Federal Circuit Has Jurisdiction to Review Joinder Decisions in IPRs

Knobbe Martens on

FACEBOOK, INC., V. WINDY CITY INNOVATIONS LLC Before Prost, Plager, and O’Malley.  Appeal from the Patent Trial and Appeal Board. Summary:  The Federal Circuit has jurisdiction to review challenges to the Board's joinder...more

Morrison & Foerster LLP - Federal Circuitry

Last Week in the Federal Circuit (August 31-September 4): Same-Party Joinder Still Not Thryv-ing

Last week was September Court week, marking the unofficial end of summer for Federal Circuit practitioners. The Court issued a total of 25 decisions, including 8 Rule 36 summary affirmances in cases argued last week, as well...more

Sunstein LLP

Court’s Strict Interpretation of Timing Requirement May Force Patent Validity Challenges in Two Forums

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The America Invents Act (“AIA”), signed into law in 2011, introduced inter partes review (“IPR”), which allows parties to challenge the validity of patent claims in proceedings before the Patent Trial and Appeal Board...more

Bass, Berry & Sims PLC

Federal Circuit Holds that Issue Joinder is Unavailable in IPRs

Bass, Berry & Sims PLC on

In Facebook, Inc. v. Windy City Innovations, LLC, No. 2018-1400 (Fed. Cir. Mar. 18, 2020), the Federal Circuit held that the “clear and unambiguous text of” 35 U.S.C. § 315(c) does not authorize “same-party joinder” and...more

Fish & Richardson

Federal Circuit Says PTAB Joinder Rules Contrary to Law

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The Federal Circuit has ruled in Facebook, Inc. v. Windy City Innovations, LLC that the Patent Trial and Appeal Board’s (PTAB) practice of permitting petitioners to join themselves as parties to existing reviews and adding...more

McDonnell Boehnen Hulbert & Berghoff LLP

Facebook, Inc. v. Windy City Innovations, LLC (Fed. Cir. 2020)

It's often said that hard cases make bad law.  And that is what had happened here:  faced with an unreasonable number of potentially asserted claims in litigation, and a Plaintiff not required to identify which of those...more

Holland & Knight LLP

In Facebook v. Windy City Innovations, Federal Circuit Ends Self-Joinder for Already Filed IPRs

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The U.S. Court of Appeals for the Federal Circuit held in an opinion filed March 18, 2020, that petitioners to the Patent Trial and Appeal Board (PTAB) may not join themselves as a party to their earlier filed inter partes...more

Knobbe Martens

Costs Awarded to Defendant After Case Dismissed for Mootness

Knobbe Martens on

B.E. TECHNOLOGY, L.L.C. v. FACEBOOK, INC. Before Lourie, Plager, and O’Malley. Appeal from the United States District Court for the Western District of Tennessee. Summary: A decision on the merits is not a prerequisite...more

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases - October 2019 #2

PATENT CASE OF THE WEEK - HZNP Medicines LLC v. Actavis Laboratories UT, Inc., Appeal Nos. 2017-2149, et al. (Fed. Cir. Oct. 10, 2019) - In a lengthy decision following a bench trial, the Court addressed a matter of...more

Jones Day

Use Caution When Considering Multiple IPRs Against a Single Patent

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The recent PTAB order in IPR2017-01427 is a cautionary tale for petitioners considering multiple IPRs against a single patent. On May 11, 2017, Facebook and WhatsApp filed the ’1427 IPR petition challenging claims 1-8 of U.S....more

McDonnell Boehnen Hulbert & Berghoff LLP

Zak v. Facebook, Inc. (E.D. Mich. 2016) - Software Patent Found to Be Directed to Abstract Idea, But Survives § 101 Challenge with...

Bruce Zak, an individual, sued Facebook, Inc. for patent infringement in the U.S. District Court for the Eastern District of Michigan on two of his software patents -- United States Patent Nos. 8,713,134 and 9,141,720. ...more

Akin Gump Strauss Hauer & Feld LLP

IP Newsflash - April 2015 #3

DISTRICT COURT CASES - District Court Awards Attorney Fees Under its Inherent Powers Rather than 35 U.S.C. § 285 - On October 10, 2013, plaintiff MyMedicalRecords, Inc. (MMR) sued defendants claiming...more

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