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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 Litigation Viewpoint Thumbnail
The Federal Circuit’s recent Uniloc 2017 v. Facebook Inc. decision is a mixed bag of good and bad news for both patent owners and inter partes review petitioners.  On the plus side for patent owners (but not for petitioners), the Federal Circuit determined that the so-called “No Appeal” provision does not necessarily apply to 35 U.S.C. § 315(e)(1), and, therefore, a patent owner may still appeal a Patent Trial and Appeal Board determination that a petitioner is not estopped from maintaining an IPR under § 315(e)(1). 
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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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Patent Prosecution and Strategic Counseling Viewpoint Thumbnail

USPTO Provides Guidance on Conducting an Effective Patent Examiner Interview

March 25, 2021 | Blog | By Christina Sperry, Paul Brockland

Examiner interviews are often indispensable to advance prosecution of a U.S. patent application, and interviews can help advance prosecution in the vast majority of applications. The Midwest Regional U.S. Patent and Trademark Office (USPTO) held a webinar on March 24, 2021 entitled “Conducting an Effective Patent Examiner Interview,” featuring Vivek Koppikar, Special Advisor to the Regional Director of the Midwest Regional Office.
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Patent Prosecution and Strategic Counseling Viewpoint Thumbnail

Obviousness-Type Double Patenting and Divisional Applications in Canada

March 23, 2021 | Blog | By Andrew D. Skale, Justin J. Leisey

Obviousness-type double patenting (“OTDP”) arises when two or more patents or applications include claims that, while not being identical, are not patentably distinct from each other.  In the U.S., OTDP rejections can be overcome by filing a terminal disclaimer that limits the term of the rejected application to be no greater than the term of the disclaimed patent. 
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Patent Prosecution and Strategic Counseling Viewpoint Thumbnail

Expediting PTAB Appeals Using the Fast-Track Program

February 26, 2021 | Blog | By Christina Sperry

The U.S. Patent and Trademark Office (USPTO) recently released statistics about its Fast-Track Appeals Pilot Program. The program went into effect on July 2, 2020 and is currently slated to run until the earlier of July 2, 2021 and 500 appeals being accepted into the program.
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Patent Litigation Viewpoint Thumbnail

Doctrine of Assignor Estoppel to be Reviewed by U.S. Supreme Court

February 25, 2021 | Blog | By Christina Sperry, Monique Winters Macek

On January 8, 2021, the U.S. Supreme Court agreed to hear a case calling for it to abolish or limit the doctrine of assignor estoppel. See Minerva Surgical, Inc. v. Hologic, Inc., et al., No. 20-440, 2021 WL 77248 (U.S. Jan. 8, 2021). Mintz previously discussed the Federal Circuit’s decision, which found assignor estoppel to be applicable.
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Patent Prosecution and Strategic Counseling Viewpoint Thumbnail

Design Patent Registrations after Brexit and Updates to Design Rights in China

February 25, 2021 | Blog | By Michael Van Loy, Joshua Berk

As we noted in Are Design Patents Missing From Your IP Portfolio, a design patent protects the visual ornamental characteristics of an article and can be an important part of a company’s patent portfolio. Like other patent rights, design patent applications may be filed internationally to expand the number of countries in which a company’s designs are protected.
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Federal Circuit Appeals Viewpoint Thumbnail

Copy Cats II: Nexus of Copying Required to Substantiate Non-Obviousness

February 17, 2021 | Blog | By Ken Jenkins, Jeff Giering

On January 28, 2021, the Federal Circuit affirmed the general principle that the mere fact of copying by an accused infringer is insufficient to rebut a charge of obviousness (L’Oreal USA, Inc. v. Olaplex, Inc.; appeal from PGR2018-00025; non-precedential). 
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Patent Prosecution and Strategic Counseling Viewpoint Thumbnail

Understanding Chinese Voluntary Divisional Application Patent Practice

February 10, 2021 | Blog | By Andrew D. Skale, Justin J. Leisey

For many parts of the world, a voluntary divisional application (known as a continuation application in the U.S.) may be filed at any time during the pendency of any parent application.  The claims in the voluntary divisional application must be supported by the original specification and cannot introduce any new matter.  
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Federal Circuit Appeals Viewpoint Thumbnail

Federal Circuit Says Automated Systems Are Not Abstract when Tied to Improvements

February 9, 2021 | Blog | By Michael Van Loy, F. Jason Far-hadian, Mark Hammond

It is now over 10 years since the Bilski decision was handed down by the United States Supreme Court.  In that decision and several other decisions that followed (i.e., Mayo, Myriad, and Alice), the Supreme Court pronounced patent claims directed to abstract ideas not eligible for patent protection.
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