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...
Articles
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 ...
INSIGHT: Inconsistent Patent Venues - Considerations for In-House Counsel
(as published by Bloomberg Law) Determining whether a party can be sued in a particular venue is crucial for both patent owners looking to file suit and accused infringers seeking to avoid a given ven...
Federal Circuit Declines to Take Up Winning-Petitioner Estoppel
The Federal Circuit recently declined to consider whether a successful IPR petitioner is estopped from making its winning invalidity arguments in district court. If a winning petitioner does face esto...
Strategies For Patenting AI Innovations In Life Sciences
An article authored by Dan Rudoy titled “Strategies for Patenting AI Innovations In Life Sciences” appeared in the July/August issue of Life Science Leader. Read more.
Patent Coverage of Impossible Embodiments: A Cautionary Tale for Patent Owners, and Lingering Questions
(as published by the New York Law Journal) Patent owners asserting their patents in litigation will often seek broad claim constructions to cover accused products and forestall defendants’ non-infring...
INSIGHT: Supreme Court's Brunetti Ruling: Scandalous and Immoral Marks Are Fair Game
(As published by Bloomberg) OVERVIEW: The U.S. Supreme Court struck down the Lanham Act’s bar on registering immoral or scandalous marks on June 24, allowing federal trademark protection for “immoral ...
Supreme Court: Licensee may use trademark after bankruptcy rejection, subject to license
An article by John Strand and Ethan Marks titled “Supreme Court: Licensee may use trademark after bankruptcy rejection, subject to license” was published in Thomson Reuters Westlaw Journal. Read more.
Federal Circuit Report: What Is the Key to Unlocking the Federal Circuit's Divided Infringement Test?
An article co-authored by Hunter Keeton titled “What Is the Key to Unlocking the Federal Circuit’s Divided Infringement Test?” was published in the May/June 2019 issue of IP Litigator. Read more.
In Follow-On IPR Petitions, Different Prior Art May Not Be Considered Substantially Different
An IPR follow-on petitioner may find it particularly challenging to select the best prior art references and arguments to submit to the PTAB. To make matters worse, the PTAB may decide to invoke its d...
ALJ McNamara Finds Violation by Apple in Second Qualcomm Investigation & Recommends Remedy Despite Public Interest Arguments
(as published by ITC TLA) In the Matter of CERTAIN MOBILE ELECTRONIC DEVICES AND RADIO FREQUENCY AND PROCESSING COMPONENTS THEREOF (II), Inv. No. 337-TA-1093, Initial Determination and Recommended Rem...
PTAB Panel Denies IPR Institution Under § 314(a) in View of Parallel District Court Litigation
For months, panels at the PTAB have debated the relevance of parallel district court litigation on the PTAB’s discretion under 35 U.S.C. § 314(a) to institute or deny a petition for IPR. On May 7, 201...