Intellectual Property

US Patent Trial and Appeal Board (PTAB) institution denials for inter partes review (“IPR”) and other post-grant review petitions have steadily risen from 13 percent in 2012 to 44 percent in 2020. In 2020, the institution rate has fallen to 56%, down from 63% a year ago.

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.

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.

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.

A PhD-holding patent prosecutor and a seasoned ITC and district court litigator talk claim construction. Can they possibly find common ground?

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)).

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. 

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. 

Does Google’s Android API infringe Oracle’s copyright in its Java API? That’s the question the Supreme Court was asked to deal with in Google v. Oracle recently.

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”).

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. 

In this episode of our Exclusive Rights podcast series, Mintz IP attorneys Daniel Weinger and Todd B. Buck, PhD, discuss the recent decision by the Biden Administration to signal US approval of a proposal to waive intellectual property rights related to COVID-19 vaccines currently under review at the World Trade Organization (WTO).

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.

Intellectual property rights protect your innovations and competitive position in the market.

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”).

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).

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”).

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.

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.

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.