News & Analysis as of

Sanctions Patent Litigation Patent Trial and Appeal Board

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

PTAB Year in Review – Caveat Experimenter: Using Experimental Data in PTAB Proceedings Comes With Risks

Parties involved in Patent Trial and Appeal Board (PTAB) proceedings sometimes contemplate submitting experimental data to support their positions. Although such data can be useful, there also are risks. Several recent cases...more

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

2024 PTAB Year in Review: Analysis & Trends – 2024 PTAB Case Highlights

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

WilmerHale

Federal Circuit Patent Watch: Deterrence Sanctions Affirmed for Bad Faith Filings of Meritless Lawsuits

WilmerHale on

Precedential and Key Federal Circuit Opinions - 1. CYTIVA BIOPROCESS R&D AB v. JSR CORP. [OPINION] (2023-2074, 12/4/2024) (Prost, Taranto, Hughes) - Prost, J. The Court affirmed the PTAB’s IPR determination that...more

Jones Day

PTAB Issues Sanctions for Attempted Extortion During “Settlement Negotiations”

Jones Day on

Director Vidal recently issued sanctions against OpenSky Industries (“OpenSky”) for attempted extortion during settlement negotiations and abuse of the IPR process for US Patent 7,725,759 and awarded $413,264.15 to VLSI...more

McDermott Will & Emery

We Meant It – No Incorporation by Reference

McDermott Will & Emery on

The US Court of Appeals for the Federal Circuit issued a sua sponte order regarding the impermissibility of incorporating by reference arguments from one brief into another, especially when doing so causes the brief to exceed...more

McDermott Will & Emery

Cloudy Skies: PTO Director Finds Abuse and Sanctionable Conduct

McDermott Will & Emery on

The US Patent & Trademark Office (PTO) Director issued a precedential opinion finding that filing an inter partes review (IPR) solely to extract payment in a settlement—without the intent to prosecute the IPR to completion—is...more

McDermott Will & Emery

“Self-Similar” More Objective Than One Might Think

The US Court of Appeals for the Federal Circuit affirmed a Patent Trial & Appeal Board (Board) decision holding that the term “self-similar” was not indefinite and denying leave to file a sanctions motion. ClearOne, Inc. v....more

Knobbe Martens

Board Has Final Say on Time Bar Decisions

Knobbe Martens on

ATLANTA GAS LIGHT COMPANY v. BENNETT REGULATOR GUARDS, INC. Before Newman, Lourie, and Stoll - Summary: Termination decision made by the Board in part based on the time-bar was “intimately related” to the institution...more

Jones Day

District Court Issues Sanctions for Patent Owner’s Shapeshifting Arguments at the PTAB

Jones Day on

Although infrequently awarded, district courts are empowered to issue sanctions for behavior at the PTAB that they deem “exceptional” under Octane Fitness. In Game and Technology Co., Ltd. v. Wargaming Group Limited,...more

McDermott Will & Emery

Ex Parte Communications Lead to PTAB Sanctions

Finding that several of the patent owner’s communications were improper ex parte communications, the Patent Trial and Appeal Board (PTAB) entered an order granting in part the petitioner’s motion for sanctions. Apple Inc. v....more

Jones Day

Patent Owner Sanctioned For Ex Parte Communications

Jones Day on

Under 37 C.F.R. § 42.5(d), communications with a Board member regarding a specific proceeding are not permitted “unless both parties have an opportunity to be involved in the communication.” This prohibition, however, does...more

Schwabe, Williamson & Wyatt PC

2017 and Early 2018 Supreme Court and Precedential Patent Cases From the Federal Circuit

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

Schwabe, Williamson & Wyatt PC

Fresh From the Bench: Precedential Patent Cases From the Federal Circuit

Our report includes discussions of six of the precedential cases decided in the past week and will include the other three cases in next week’s report. In Aylus v. Apple, the panel finds prosecution disclaimer in a...more

King & Spalding

ITC Section 337 Update – October 2016

King & Spalding on

Commission Suspends ‘939 Investigation Enforcement Pending PTAB Result - On July 21, 2016, the International Trade Commission (“the Commission”) issued a notice that it had found a violation of Section 337 in Certain Cinema...more

Foley & Lardner LLP

PTAB Refuses To Sanction Kyle Bass

Foley & Lardner LLP on

Many pharmaceutical companies have complained about the IPR petitions filed by Kyle Bass and the Coalition for Affordable Drugs against Orange Book-listed patents covering approved pharmaceutical products, but Celgene Corp....more

Morrison & Foerster LLP

PTAB to Consider Motion for “Abuse of Process” Sanctions Against Kyle Bass Hedge Fund IPR Petition

In a recent order, the Patent Trial and Appeals Board (PTAB) indicated that it will consider a motion for sanctions based on a claim of “abuse of process” in Inter Partes Review (IPR) proceedings filed by the Coalition for...more

Akin Gump Strauss Hauer & Feld LLP

IP Newsflash - June 2014

Federal Circuit Upholds Award of Sanctions for a “Frivolous” Patent Lawsuit - On June 5, 2014, the Federal Circuit affirmed the Southern District of New York’s decision to sanction Appellant and its attorneys for...more

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