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DOJ Breaking with Big Tech Approach to SEPs
June 13, 2022 | Blog | By Daniel Weinger, Michael McNamara, Michael Renaud, James Thomson
Rules for Complainant Success in ITC Trade Secret Litigation
May 16, 2022 | Blog | By Jonathan Engler, Michael Renaud
Why is the ITC a Great Venue for Protecting Trade Secrets? Speed and Extraterritorial Authority
May 12, 2022 | Blog | By Jonathan Engler, Michael Renaud
The ITC Should Put Its Foot Down on Patent Hold-out and Hold-up
May 9, 2022 | Blog | By Jonathan Engler, Michael Renaud
Judge Alsup Certifies Two Hot Button Issues on Standard for Pleading Willful Infringement for Interlocutory Appeal to the CAFC
March 23, 2022 | Blog | By Joe Rutkowski, Peter Cuomo, Adam Samansky
Amazon’s Utility Patent Neutral Evaluation Proceeding: Let the Seller Beware
March 22, 2022 | Blog | By Michael Graif, Matthew Hurley
Avoiding Unforced Tech DI Errors at the ITC
March 11, 2022 | Blog | By Jonathan Engler, Michael Renaud
The key to success as a Complainant in the ITC is careful preparation, long before the complaint is filed. Nowhere is this more important than in preparing and planning a Complainant’s domestic industry case. The so-called “technical prong” of the domestic industry requirement is a much more common point of failure for ITC complainants than the “economic prong.” The “technical prong” requirement is essentially the same as for infringement: an ITC complainant must “show that there is a domestic industry product that actually practices” at least one claim of the asserted patent. Microsoft, 731 F.3d 1354 at 1361. (Fed. Cir. 2013). It is unfortunately not uncommon at the ITC for Complainants to prepare meticulous infringement proofs for the accused products but then to fail to show that the domestic industry products practice a claim of the asserted patents.
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Open Question: Use of Stolen Trade Secrets May or May Not Qualify as a Predicate Act Under RICO
March 10, 2022 | Blog | By Adam Samansky, Michael McNamara, Nicholas Armington, Oliver Ennis
Since the passage of the Defend Trade Secrets Act (DTSA), trade secret owners have been able to use allegations of trade secret misappropriation under the DTSA to support civil claims under the Racketeer Influence and Corrupt Organizations Act (RICO). Specifically, DTSA violations that qualify as predicate acts can be used to show a pattern of racketeering activity, which may allow a trade secret owner to state civil claims under RICO, and thus take advantage of the substantial remedies that the RICO statute provides, including the potential for treble damages and attorney’s fees.
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Expert Patent Damages Opinions Hit the Spotlight as Federal Circuit Scuttles Two Patent Infringement Verdicts Worth $1.2 Billion in One Day
March 9, 2022 | Blog | By Andrew DeVoogd, James Thomson
In two recent decisions, both issued on February 4, 2022, the United States Court of Appeals for the Federal Circuit (the “CAFC”) erased two huge patent damages awards because the underlying expert opinion on damages was untethered to the specific facts of each case.
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No Harm, No Foul, and No Standing for Would-be SEP Implementer: 5th Circuit Changes Narrative on Patent “Hold Up”
March 3, 2022 | Blog | By Daniel Weinger, Michael Renaud, Bruce Sokler, James Thomson
In its analysis of Cont’l Auto. Sys., Inc. v. Avanci, L.L.C.,, the Fifth Circuit made several interesting findings: (1) that potential pass-through non-FRAND royalties are too speculative to create an injury in fact; (2) that SEP holders can fulfill their obligations to SSOs, with respect to suppliers, by actively licensing SEPs to downstream OEMs; and (3) that not all implementers are intended beneficiaries entitled to FRAND licenses.
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Patent Owner Tips for Avoiding IPR Institution
March 1, 2022 | Blog | By William Meunier, Michael Renaud, Brad M Scheller
Inter partes reviews have a very high institution rate. And worse, once instituted IPRs result in invalidated claims at an inordinately high rate. The best defense against an IPR petition is to convince the Patent Trial and Appeal Board to deny institution. In this post, the Mintz IPR team put together out top six tips for avoiding IPR institution.
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Plaintiff Can Assert Patent Infringement and Seek Injunctive Relief in Second-Phase BPCIA Litigation Per Illinois District Court Decision
February 24, 2022 | Blog | By Adam Samansky, Joe Rutkowski, Tianyi Tan
On January 26, 2022, in what appears to be a case of first impression, U.S. District Court Judge John Z. Lee of the United States District Court for the Northern District of Illinois denied a biosimilar applicant defendant’s motion to dismiss patent infringement claims brought in the second phase of the parties’ Biosimilar Price Competition and Innovation Act (“BPCIA”) litigation. In so doing, Judge Lee held that the reference product sponsor (“RPS”) plaintiff is not limited to only declaratory judgment actions in the second phase of litigation under the BPCIA.
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A Business Deal Could Kill Your Right to Challenge a Patent’s Validity
February 22, 2022 | Blog | By William Meunier, Peter Cuomo, Marguerite McConihe, Sean Casey
Last week, the Federal Circuit issued a decision holding that parties can contractually bargain away their rights to file petitions for Inter Partes Review (“IPR”) at the Patent Trial and Appeals Board (“the Board”). This precedential case is the first to hold that a forum selection clause can forfeit the right to challenge a patent’s validity by IPR. The takeaway from this case is that when entering into any type of patent related agreement, be careful to ensure that your right to file IPR petitions is not stripped away, particularly by way of a forum selection clause which is “prima facie valid and should be enforced” in the words of the Federal Circuit.
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EXCLUSIVE RIGHTS: Intellectual Property — Domestic Industry at the ITC – The Commission Has Set a Positive Trend
February 18, 2022 | Podcast | By Daniel Weinger, Jonathan Engler
While there have been some adverse decisions from individual administrative law judges at the US International Trade Commission in recent years, final decisions coming from the commission since January 2019 have largely affirmed that complainants have satisfied the domestic industry (DI) requirement.
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D. Del. Says ANDA Specification Trumps All Else in Infringement Analysis
February 17, 2022 | Blog | By Peter Cuomo, Adam Samansky, Joe Rutkowski, Tianyi Tan
On February 8, 2022, U.S. District Court Judge Maryellen Noreika of the United States District Court for the District of Delaware granted the plaintiff’s motion to exclude defendant’s expert testimony for being “based on an erroneous legal theory” in a suit alleging defendants’ proposed generic Abbreviated New Drug Application (“ANDA”) product would infringe Exela’s patents under the Hatch-Waxman Act. Judge Noreika’s decision in this case reinforces the Federal Circuit’s holding in Sunovion and serves as a reminder that ANDA product infringement is primarily assessed by comparing the asserted claims with the ANDA specification, rather than other ANDA submission materials further describing the ANDA product.
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Keep Out: Uniloc Gets Second Chance to Seal Licensing Documents
February 16, 2022 | Blog | By Daniel Weinger, Robert Sweeney
The Federal Circuit decision in Uniloc USA, Inc. et al. v. Apple, Inc., where a 2-1 panel ruled that the district court had abused its discretion by refusing to seal certain patent-licensing documents provided by plaintiffs, Uniloc USA, Inc. and Uniloc Luxembourg, S.A., demonstrates the Federal Circuit’s recognition of the importance of keeping certain patent licensing and other trade secret materials confidential.
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Benefits of and Best Practices for Protecting Artificial Intelligence and Machine Learning Inventions as Trade Secrets
February 10, 2022 | Blog | By Marguerite McConihe, Meena Seralathan
We previously discussed which portions of an artificial intelligence/machine-learning (“AI/ML”) platform can be patented. Under what circumstances, however, is it best to keep at least a portion of the platform a trade secret? And what are some best practices for protecting trade secrets? In this post, we explore important considerations and essential business practices to keep in mind when working to protect the value of trade secrets specific to AI/ML platforms, as well as the pros and cons of trade secret versus patent protection.
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California District Court Sides with Majority Position, Dismissing Willful and Induced Infringement Claims that Relied on Original Complaint for Knowledge of Asserted Patent
February 8, 2022 | Blog | By Adam Samansky, Peter Cuomo, Joe Rutkowski
On January 18, 2022, U.S. District Judge R. Gary Klausner of the Central District of California sided with the majority of divided district courts, dismissing claims of willful and induced infringement that based the defendants’ required knowledge of the asserted patents on its receipt of the original complaint for patent infringement. Ravgen Inc. v. Quest Diagnostics Inc., No. 21-cv-09011 (C.D. Cal. Jan. 18, 2022) ECF 146 - Order dismiss willful infringement
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Prior Daubert Orders and Discovery Lessons Out of N.D. Cal.
February 4, 2022 | Blog | By Peter Snell, Robert Sweeney
A recent order from the Northern District of California in Edwards Lifesciences Corp. v. Meril Life Sciences Pvt. Ltd., No. 19-cv-06593 (Jan. 27, 2022) (“Edwards”), provides guidance regarding the ability (or inability) to use a prior Daubert ruling to discredit an expert witness at trial when such a ruling arose within the context of a different case. In addition, the order highlights a pitfall that can arise when an opposing party produces deficient damages-related discovery but is not pressed to supplement its discovery through a motion to compel.
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Strengthen Software Claims Against Alice Challenges through Coined Terms and Depicting Technical Advantages in Figures
February 4, 2022 | Blog | By Daniel Weinger, Mark Hammond, Matthew Karambelas
The Federal Circuit recently provided strategic guidance for defending software claims against Alice challenges that claims recite ineligible patent subject matter under 35 U.S.C. § 101. In Mentone Solutions LLC v. Digi International Inc., defendants alleged that representative claim 5 of U.S. Patent No. 6,952,413, directed towards allocating data channels using shifted uplink status flags in cellular mobile stations, claimed only an abstract idea. The District Court agreed and dismissed. On appeal, the Federal Circuit reversed, holding that claim 5 is not directed to an abstract idea because the claim improved the functionality of a computer.
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