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IPRs and Other Post-Grant Porceedings Viewpoint Thumbnail
In our previous post we started talking about discovery procedures in inter partes review (“IPR”) proceedings under 37 CFR § 42.51 and, in particular, the scope and timing of seeking limited additional discovery under Rule 42.51(b)(2). We reviewed timing considerations and emphasized the importance of anticipating the need for additional discovery and, to the extent necessary, moving the Board as early as possible following Institution.
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Trademark Copyright Viewpoints Thumbnail
After five years of litigation, the battle between Unicolors, a California-based fabric design company, and H&M is still going strong. Now the United States Supreme Court has agreed to decide whether an inaccuracy in Unicolors’ copyright registration invalidates its registration and thus a jury’s $1 million damages award in Unicolors’ favor.
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IPRs and Other Post-Grant Porceedings Viewpoint Thumbnail

PTAB Admits Mistake, Reverses, and Institutes

June 8, 2021 | Blog | By Brad M Scheller, James Thomson

In a rare turn of events the Patent Trial and Appeal Board recently granted a rehearing request in Maxlite, Inc. v. Jiaxing Super Lighting Elec. Appl. Co., Ltd., No. IPR2020-00208, Paper 14 (P.T.A.B. June 1, 2021), stating that “we abused our discretion in denying institution” based on an improper allocation of the parties’ burdens when a petitioner challenges an alleged priority date.
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Patent Prosecution and Strategic Counseling Viewpoint Thumbnail
Claim language is important. Particularly when dealing with software systems, claims may be held invalid as being indefinite when the claim language is characterized as “means-plus-function” under pre-AIA 35 U.S.C. §112 ¶ 6 (now AIA 35 U.S.C. §112(f)).
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IPRs and Other Post-Grant Porceedings Viewpoint Thumbnail
Discovery procedures in inter partes review (“IPR”) proceedings, governed by 37 CFR § 42.51, are more limited in scope and timing compared to cases in district court. 
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Intellectual Property Viewpoints Thumbnail

How NFTs and Blockchain Secure Digital Sports Collectibles

May 24, 2021 | Blog | By Keith P. Carroll, Andrew D. Skale, Justin J. Leisey

Today, there are new opportunities to own a bit of sports history. It is now possible to even own a digital collectible of your favorite athlete making a play during a game.  NFTs (non-fungible tokens) are being used to provide digital provenance that affords unique ownership of sports most memorable moments. 
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IPRs and Other Post-Grant Porceedings Viewpoint Thumbnail
Expert declarations are an essential component of any patent owner’s effort to survive an instituted inter partes review (“IPR”). The Board relies heavily on expert testimony in order to evaluate and understand the technology at issue from the point of view of a person of ordinary skill in the art (“POSA”).
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Patent Litigation Viewpoint Thumbnail
Over the last decade, patent litigation has exploded at the International Trade Commission (“ITC”), which has caused the ITC to seek out ways to increase efficiency.  Several years ago, the ITC introduced an early 100-Day pilot program to dispose of dispositive issues early on in investigations. While now a mainstay, the 100-Day pilot program is rarely utilized. 
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IPRs and Other Post-Grant Porceedings Viewpoint Thumbnail
As we have previously discussed, expert testimony is a critical aspect of the Patent Owner’s case-in-chief of an inter partes review (“IPR”) proceeding. In addition to retaining the right expert witness and maximizing that expert’s testimony in the expert declaration, it is imperative that expert testimony is supported by objective, contemporaneous documentary evidence.
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IPRs and Other Post-Grant Porceedings Viewpoint Thumbnail

Patent Owner Tip #5 for Surviving An Instituted IPR: The Right Expert Can Save Your Patent

May 6, 2021 | Blog | By Daniel Weinger, Monique Winters Macek

The right expert can be the critical piece that saves the validity of your patent. Finding the right expert for a patent owner requires careful selection and due diligence. We previously detailed how your expert’s testimony can make or break your Patent Owner’s Response (“POR”).
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Patent Prosecution and Strategic Counseling Viewpoint Thumbnail
It is not uncommon for applicants to file related patent applications in the United States and in Japan. When the applications claim priority to a common patent application, or one of the applications claims priority to the other, the applications’ family relationship can be used advantageously to speed prosecution in one or both jurisdictions. Multiple programs exist to expedite prosecution at the U.S. Patent and Trademark Office (USPTO) and the Japan Patent Office (JPO).
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IPRs and Other Post-Grant Porceedings Viewpoint Thumbnail
The expert declaration provides a unique opportunity for Patent Owners to bolster their case during the discovery period of an inter partes review (“IPR”) proceeding. We previously detailed how to effectively use an expert declaration in the Patent Owner’s Preliminary Response (“POPR”). Now we turn to maximizing your expert’s testimony for the Patent Owner’s Response (“POR”).
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IPRs and Other Post-Grant Porceedings Viewpoint Thumbnail
Drafting the expert declaration is another critical task for Patent Owners during the inter partes review (“IPR”) discovery period. As noted in our previous post, IPR expert witnesses provide declarations as affirmative testimony in lieu of live testimony before the Board at the hearing.
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Federal Circuit Appeals Viewpoint Thumbnail

The Federal Circuit Provides New Guidance for Patent Licensees Wishing to Challenge the Licensed Patent’s Validity

April 21, 2021 | Blog | By Brad M Scheller, Peter Cuomo, Monique Winters Macek, Mark Hammond

The Federal Circuit in Apple Inc. v. Qualcomm Incorporated handed down a decision on April 7, 2021 that provides guidance on the determination of standing for patent licensees who wish to contest the validity of a patent or patents in a licensed portfolio.
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IPRs and Other Post-Grant Porceedings Viewpoint Thumbnail

PTAB Reinforces Uneven Evidentiary Playing Field in IPRs

April 16, 2021 | Blog | By Daniel Weinger, Nana Liu

The U.S. Patent and Trademark Office’s Patent Trial and Appeal Board (PTAB) recently grappled with the admission into evidence of expert deposition testimony that was presumably harmful to the petitioner in an inter partes review (IPR), and barred the testimony from coming into evidence. 
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IPRs and Other Post-Grant Porceedings Viewpoint Thumbnail
As discussed in our previous post, one of the most critical tasks for Patent Owners during the Inter Partes Reviews (“IPR”) discovery period is deposing the Petitioner’s expert. Since IPR depositions are treated differently than fact-gathering depositions in district court litigation, a Patent Owner should approach the IPR deposition with different goals.
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IPRs and Other Post-Grant Porceedings Viewpoint Thumbnail
As a Patent Owner in an instituted Inter Partes Reviews (“IPR”), one of the first and most critical tasks before you is deposing the Petitioner’s witnesses, including its experts.  But approaching an IPR deposition like a typical litigation deposition could be a big mistake. 
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Trademark Copyright Viewpoints Thumbnail

United States Supreme Court Rules for Google in a Landmark Fair Use Decision

April 6, 2021 | Blog | By Michael Graif, Matthew Hurley, Geoffrey Friedman

On April 5, 2021, the United States Supreme Court issued a significant fair use decision, holding six to two that Google’s copying of 11,500 lines of code from Oracle’s Java SE API in Google’s Android platform was a fair and transformative use. 
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Patent Litigation Viewpoint Thumbnail
On March 24, 2021, U.S. District Judge Colm F. Connolly of the District of Delaware, granted a defendant’s motion to dismiss claims for contributory and induced infringement and enhanced damages under 35 U.S.C. § 284 because the complaint alleged knowledge of the asserted patents solely based on averments in prior original and amended complaints in the same lawsuit.
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Patent Prosecution and Strategic Counseling Viewpoint Thumbnail

Best Practices for Clearances and Opinions

March 31, 2021 | Blog | By Lisa Adams, Alexander Roan

Last week, Mintz Member Lisa Adams moderated a panel discussion between in-house attorneys that covered best practices for conducting patent clearances and obtaining non-infringement and invalidity opinions. The panel discussion, which was hosted by the Boston Patent Law Association, focused on key practical considerations that ensure product clearances and opinions are used as effective tools in a comprehensive intellectual property protection strategy.
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