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Abuse of Process and/or Sanctions – 37 C.F.R. § 42.12 - Spectrum Solutions LLC v. Longhorn Vaccines & Diagnostics, LLC, IPR2021-00847, IPR2021-00850, IPR2021-00854, IPR2021-00857 & IPR2021-00860 - Decision...more
United States Patent and Trademark Office (USPTO) Director Kathi Vidal had a busy end to her summer, issuing six decisions as part of the Director Review process between July 10 and August 22. In the six decisions, the...more
The Director of the USPTO initiated sua sponte review of a PTAB panel’s decision to impose sanctions based on patentee’s conduct during IPR proceedings.The PTAB cancelled all of patentee’s claims, including those not...more
United States Patent and Trademark Office Director Kathi Vidal's recent sanctions decisions have been notable for their seriousness and impact. In each case, Vidal invoked the Director Review process, a measure implemented...more
On February 17, 2023, the US Patent & Trademark Office (PTO) announced the launch of the new Trademark Decisions and Proceedings Search Tool. This tool allows users to filter and search expungement and reexamination...more
Alarm.com Inc. v. Hirshfeld, Appeal No. 2020-2102 (Fed. Cir. Feb. 24, 2022)- In an appeal from the U.S. District Court for the Eastern District of Virginia, the Federal Circuit addressed whether the ex parte reexamination...more
Following up on our article on depositions the Board recently denied a motion for sanctions by the Patent Owner, which alleged that the Petitioner’s questioning during deposition exceeded the scope of the witness’s...more
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 stakeholders looking at the entire...more
Arbitration - Waymo v. Uber Technologies, 870 F.3d 1342 (Fed. Cir. 2017) - Waymo sued Uber and others for trade secret misappropriation and patent infringement. Uber contends that Waymo should be compelled to...more
District Court Abused Discretion in Ignoring Federal Circuit Mandate to Reconsider Attorneys’ Fees Under Octane Fitness - In Adjustacam, LLC v. Newegg, Inc., Appeal No. 2016-1882, the Federal Circuit held that a district...more
In a 38 page decision with a 19 page dissent by Judge Newman, the Federal Circuit determined that Regeneron’s transgenic mouse patent is unenforceable due to inequitable conduct. The decision was rendered in Regeneron...more
In Regeneron v. Merus, a divided panel affirms a determination of unenforceability for violation of the duty of disclosure. What is interesting about the case is that neither the district court nor the majority reviewed...more
This paper is based on reports on precedential patent cases decided by the Federal Circuit distributed by Peter Heuser on a weekly basis. ...more
Amgen Inc., et al. v. Sanofi, et al., C.A. No. 14-1317 – SLR (Consolidated), March 2, 2016 - Robinson, J. Order resolving pre-trial evidentiary issues. Plaintiffs seek to preclude defendants from relying on two...more
Nunc Pro Tunc Assignments Insufficient To Confer Retroactive Standing - In ALPS SOUTH, LLC v. OHIO WILLOW WOOD CO., Appeal Nos. 2013-1452, 2013-1488, 2014-1147, and 2014-1426, the Federal Circuit reversed the denial of a...more