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PTAB Finds Recycled Art and Advanced State of Parallel District Proceeding Warrant Denial of IPR Trial

September 17, 2018| Blog

Last week the Patent Trial and Appeal Board (“PTAB”) provided yet another arrow in the patent owner’s quiver for defending against institution of IPRs.  In NHK International Corp. v. Intri-Plex Technologies, Inc., IPR2018-00752, the PTAB exercised its discretion under 35 U.S.C. § 325(d) and denied institution because the asserted art was already considered during the original examination of the patent.  The PTAB also found that denial was warranted under 35 U.S.C. § 314(a) in light of the additional factor that a district court trial on the same patent was imminent. 
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RPX Requests en banc Review in Applications in Internet Time v. RPX

September 13, 2018| Blog

On September 7, 2018, RPX Corporation (“RPX”) requested a rehearing en banc of the Federal Circuit’s July 2018 Applications in Internet Time, LLC v. RPX Corp. decision, which held that the Patent Trial and Appeal Board (“PTAB”) must use a flexible approach when determining what entities constitute real parties in interest for the purpose of inter partes review (“IPR”).
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PTAB Denies Institution of IPR after Successive Petitions by Unrelated Co-Defendants

September 11, 2018| Blog

Last week, the Patent Trial and Appeal Board (the “Board”) denied a second challenge to a patent where the petitioners were co-respondents in an ITC investigation. 
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Federal Circuit Holds that the Petitioner Bears the Burden to Show All Real Parties in Interest are Properly Named in a Petition for IPR

September 10, 2018| Blog

Six months later, and more than 2.5 years after service of the complaint on Activision, Bungie filed IPRs challenging Worlds’ patents.
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Massachusetts Adopts Uniform Trade Secrets Act

September 6, 2018| Blog

On October 1, 2018, Massachusetts will become the 49th state to adopt a version of the Uniform Trade Secrets Act. The version of the UTSA that Massachusetts will adopt bears notable similarities to the Defend Trade Secrets Act, the two year old federal trade secrets statute.

Not just for crypto – How blockchain technology will affect medical devices

September 4, 2018| Blog

Most people are familiar with blockchain technology because of its use in cryptocurrency, but its use is going to be far more widespread than just as a ledger for digital currency. 

A Sales Agent’s Home Office May Qualify as a Regular and Established Place of Business

August 20, 2018| Blog

In our continued post-TC Heartland coverage, the Southern District of New York recently held that an employee’s home office in New York constituted a “regular and established place of business” in the state as required by the patent venue statute, 28 U.S.C. § 1400(b).

Updates to the PTAB Trial Practice Guide Memorialize Current Practices While Leveling the Playing Field for Patent Owners

August 16, 2018| Blog

The Patent Trial and Appeal Board (PTAB) issued an August 2018 update to the American Invents Act Trial Practice Guide (the “Updated TPG”).  The Updated TPG incorporates the PTAB’s current practices and provides further explanation of certain aspects of the PTAB’s standard practices to the public. 

Google’s servers housed by a third-party ISP qualify as a regular and established place of business to establish proper venue in the Eastern District of Texas

August 15, 2018| Blog

In our continued post-TC Heartland coverage, Judge Gilstrap in the Eastern District of Texas recently held that venue was proper because Google exercises exclusive control over physical servers implicated by the litigation, as well as the physical space within which the server is located and maintained.

Lessons about Prosecution History Estoppel and Design Patents from Advantek Marketing, Inc. v. Shanghai Walk-Long Tools Co.

August 3, 2018| Blog

Patent practitioners are probably well familiar with circumstances in which prosecution history estoppel can limit the scope of a U.S. utility patent’s claims.  Examples include claim amendments and statements made by the applicant during prosecution in papers filed with the U.S. Patent and Trademark Office (USPTO).

Patent Specification Drafting Considerations Highlighted by TF3 Limited v. TRE Milano, LLC

August 2, 2018| Blog

Is there any possible danger in using the abbreviation “i.e.” in the specification of a U.S. patent application?  The Federal Circuit’s recent decision in TF3 Limited v. TRE Milano, LLC shows that the answer is “yes.” 

Improper Venue for Web-Based Company in light of In re Cray

August 2, 2018| Blog

In our continuing post-TC Heartland coverage, the District of Nevada recently identified a key factor in analyzing venue challenges in patent litigation: whether the public can access the defendant corporation or its services in the respective forum.

When Public Use Qualifies for the Experimental Use Exception to 35 U.S.C. § 102(b)

July 24, 2018| Blog

Some inventions require testing before they are ready for patenting, and sometimes that testing requires use by the public. A recent decision from the Federal Circuit provides additional guidance on what activities qualify for the experimental use exception to the public use bar of 35 U.S.C. § 102(b).

Recent ITC decision clarifies and eases domestic industry burden for patent holders

July 17, 2018| Blog

A recent decision by the International Trade Commission (“ITC” or the “Commission”) improves intellectual property holders’ ability to prove that they have a “domestic industry” and obtain relief for infringement from the Commission. 

Understanding Priority Claims for U.S. Patent Applications: Part 1

July 11, 2018| Blog

This article is first in a two-part series focusing on various issues related to priority claims in U.S. patent applications.  Part 1 is a general overview of how to make a proper priority claim, without addressing how to correct an improper priority claim, which will be examined in Part 2.

The Patent Act Allows for Full Compensation for All Forms of Infringement

June 22, 2018| Blog

Patent owners have a new arrow in their quiver. The Supreme Court has held that patent owners can recover foreign lost profits for the use or sale of infringing products abroad if the products were assembled from components of the patented invention exported from the United States.

10 Millionth U.S. Patent Issues Today

June 19, 2018| Blog

Further to our previous blog post, the U.S. Patent and Trademark Office reported that the 10 millionth patent issued today with the new patent cover design.

Is a “necessary distributor” enough to qualify as a regular and established place of business for purposes of satisfying proper venue?

June 15, 2018| Blog

According to the Eastern District of Texas, no. In our continued post-TC Heartland coverage, for the purpose of establishing venue, courts typically will decline to treat the place of business of one corporation as the place of the business of the other, even when the two are related, so long as a formal separation of entities is preserved.

Discovery Concerning Potential Litigation Funding is Not Relevant or Proportional

June 14, 2018| Blog

A recent order from the Northern District of California provides some succinct guidance on the relevancy of discovery concerning litigation funding. In Space Data Corp. v. Google LLC, 5-16-cv-03260, the court denied Defendants Google and Alphabet’s motion to compel discovery as to potential litigation funding allegedly considered by Plaintiff Space Data.

Can retrieving materials from a storage unit qualify as engaging in business activity for purposes of establishing proper patent venue?

June 12, 2018| Blog

According to a recent decision from the Southern District of New York, no.  In our continued post-TC Heartland coverage, the court in CDX Diagnostic, Inc. v. U.S. Endoscopy Group, Inc. clarified that a storage unit does not qualify as a regular and established place of business.

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