Can Amendment Save Your Claims in IPR?
In the past, moving to amend the challenged claims during IPR was largely futile. The PTAB denied nearly all motions to amend, and many patent owners that might have benefited from amendment chose not...
Articles
Continued Uncertainty About Estoppel Highlights the Importance of Preparing Carefully
Challengers in post-grant proceedings like IPR may not reassert invalidity arguments in court that they “raised or reasonably could have raised” before the PTAB. Several recent cases illustrate that w...
Invention: Coming Up with an Idea and Making It Work
(as published by DesignNews) At the core of every patent application are its inventors. For both large and small companies, differing opinions on input into the invention and internal politics frequen...
Supreme Court Preview: What Can a Patent Owner Do When the PTAB Institutes an IPR That the Statute Doesn’t Permit?
The statute that created inter partes review (IPR) defines certain situations when IPR is not available. For example, IPR is not available if the petitioner was served with a complaint alleging infrin...
What’s Estoppin’ You? – Beware the Barriers of Asserting Judicial Estoppel
Judicial estoppel is an equitable doctrine that precludes a party from taking a position in one proceeding that is inconsistent with a position the party took in a previous proceeding. It can be used ...
Boston Patent Law Association Response to USPTO Request for Comments on Patenting Artificial Intelligence Inventions
Jonathan Roses was the lead author on behalf of the Boston Patent Law Association's (BPLA’s) Patent Office Practice Committee of a November 2019 Response to USPTO Request for Comments on patenting art...
Chief ALJ Bullock Grants Summary Determination That Domestic Industry Investments are Not Significant or Substantial
(as published by ITC TLA) In the Matter of CERTAIN CARBURETORS AND PRODUCTS CONTAINING SUCH CARBURETORS, Inv. No. 337-TA-1123, Initial Determination Granting Summary Determination Before Chief ALJ Bul...
Understanding Foreign Filing License Requirements
An article written by Michele Moresco titled "Understanding Foreign Filing License Requirements" was published by Industry Today. Read more.
US law inches towards protecting trademark reputation without use
An article written by John Welch, titled "US law inches towards protecting trademark reputation without use" was published by World Trademark Review. Read more (subscription required).
Unpacking The Latest ITC Trends: Part 2
(as published by Law360) In part one of this two-part series, we discussed the latest U.S. International Trade Commission developments involving Patent Trial and Appeal Board proceedings, the public i...
Unpacking The Latest ITC Trends: Part 1
(as published by Law360) Despite a brief hiatus stemming from the government shutdown, 2019 has already been a very busy year in Section 337 practice at the U.S. International Trade Commission. Two ad...
IPR Estoppel May Apply to Product-Based Defenses
Under the estoppel provisions of 35 U.S.C. § 315(e), if an IPR results in a final written decision, the petitioner is barred from raising invalidity arguments in court or the ITC based on any grounds ...