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Patent Prosecution and Strategic Counseling Viewpoint Thumbnail

Rise of the Improper Markush Grouping Rejection and Biomolecules

November 18, 2020 | Blog | By Marc Morley, Jeff Giering

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Patent Litigation Viewpoint Thumbnail
Recently in Nike, Inc. v. Skechers U.S.A., Inc., 2:17-cv-08509 (C.D. Cal.) (October 26, 2020), the U.S. District Court for the Central District of California granted-in-part and denied-in-part Defendant, Skechers U.S.A., Inc.’s (“Skechers”), motion to limit Plaintiff, Nike, Inc.’s (“Nike”), claim seeking attorney’s fees related to the infringement of its eight asserted design patents, resulting in the bifurcation of the willfulness issue from the trial on the merits.
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IPRs and Other Post-Grant Porceedings Viewpoint Thumbnail
Building on Tip #4, one effective way to avoid institution and not address facts is to point out shortcomings in the petition’s application of KSR when asserting motivation to combine for an obviousness analysis. The Patent Trial and Appeal Board (“PTAB”) is an administrative tribunal that frequently encounters proposed grounds that challenged claims are obvious pursuant to 35 U.S.C. ¶103.
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Federal Circuit Appeals Viewpoint Thumbnail

In Hatch-Waxman litigation, Federal Circuit restricts venue under the TC Heartland to districts relating to ANDA filings

November 12, 2020 | Blog | By Adam Samansky, Peter Cuomo, Joe Rutkowski, Nana Liu

On November 5, 2020, the United States Court of Appeals for the Federal Circuit, in Valeant Pharmaceuticals N. Am. LLC v. Mylan Pharmaceuticals Inc., No. 19-2402, resolved a split among district courts over what constitutes “acts of infringement” sufficient to support venue in the context of a Hatch-Waxman litigation.  
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IPRs and Other Post-Grant Porceedings Viewpoint Thumbnail

Tip #4 for Avoiding IPR Institution: Don’t Argue Facts

November 9, 2020 | Blog | By Brad M Scheller, Serge Subach

We’ve previously written that the best defense to an IPR challenge is avoiding IPR institution altogether. In addition to the other tips discussed in this series of posts, another strategy for avoiding institution is focusing the Patent Owner’s Preliminary Response (“POPR”) on areas where the Petitioner failed to adequately support its argument.
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IPRs and Other Post-Grant Porceedings Viewpoint Thumbnail

Tip #3 for Avoiding IPR Institution: Use Disclaimers Strategically

November 5, 2020 | Blog | By William Meunier, Peter Cuomo

Under U.S. patent law, “No inter partes review will be instituted based on disclaimed claims.”  37 C.F.R.  § 42.107(e).  And petitioners only need to demonstrate a reasonable likelihood of prevailing with respect to one challenged claim in order to secure a favorable institution from the PTAB. 35 U.S.C. § 314.  
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IPRs and Other Post-Grant Porceedings Viewpoint Thumbnail
If you are a patent owner facing an inter partes review (“IPR”) or other post-grant review at the Patent Trial and Appeal Board (“PTAB”), your best chance of success is to convince the PTAB not to institute a trial.  But that does not mean that you should pack all of your substantive arguments about patentability into your preliminary response.
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IPRs and Other Post-Grant Porceedings Viewpoint Thumbnail

Tip #1 for Avoiding IPR Institution: Litigation Venue Selection

October 29, 2020 | Blog | By Daniel Weinger, Michael Newman, Peter Cuomo

Venue selection is a critical component to any patent enforcement strategy, even before the inception of the PTAB as we know it today.  Venue now has even greater importance, as the speed of your patent case (i.e. time to trial) and stay statistics will have a direct impact on whether IPRs against your patents will institute in light of the Fintiv factors.
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Trademark Copyright Viewpoints Thumbnail
As we reported in our July 7, 2020 blog post on the USPTO v. Booking.com B.V decision, the U.S. Supreme Court ruled that a proposed mark consisting of the combination of a generic term and a generic top-level domain, like “.com,” is not automatically generic and can be protected as a trademark under certain circumstances.
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Patent Prosecution and Strategic Counseling Viewpoint Thumbnail

Procuring U.S. Patents without a Signed Assignment of Patent Rights

October 27, 2020 | Blog | By Christina Sperry, Mark Hammond

Increased employee mobility, health challenges, and the economic downturn due to the COVID-19 pandemic may result in more inventors than usual being unavailable to assign patent rights.  Fortunately, applicants may procure a U.S. patent even if an assignment document cannot be obtained for the application to be filed.  
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IPRs and Other Post-Grant Porceedings Viewpoint Thumbnail

Avoiding IPR Institution: Your Best Defense to an IPR Challenge

October 27, 2020 | Blog | By Peter Cuomo, William Meunier, Brad M Scheller

The United States Patent and Trademark Office (USPTO) Patent Trial and Appeal Board (PTAB) was once famously referred to by the former chief judge of the Federal Circuit, the honorable Randall Rader, as a patent death squad.
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Patent Litigation Viewpoint Thumbnail
The recent anti-suit injunction issued against InterDigital in its SEP litigation with Xiaomi is a somewhat predictable reaction to the recent UK Supreme Court decision against Huawei and ZTE.  One of the central arguments there was that the UK courts were trying to set themselves up as the international arbiter of FRAND disputes. 
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IPRs and Other Post-Grant Porceedings Viewpoint Thumbnail

Fate of PTAB Judges and Decisions Now in Hands of Supreme Court

October 15, 2020 | Blog | By Michael Renaud, William Meunier, Monique Winters Macek

On October 13, 2020, the U.S. Supreme Court granted three petitions for writ of certiorari related to Arthrex v. Smith & Nephew addressing two issues that will determine the fate of PTAB judges and decisions.
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Federal Circuit Appeals Viewpoint Thumbnail
In Network-1 Techs., Inc. v. Hewlett-Packard, No. 18-2338, the Federal Circuit reversed and vacated multiple aspects of the district court’s final judgment holding that Hewlett-Packard (HP) did not infringe U.S. Patent No. 6,218,930 (“the ’930 patent”) disclosing an apparatus and method for remotely powering Ethernet compatible equipment.
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Viewpoint Thumbnail

Another One Bites the Dust – N.D. Tex. Dismisses Antitrust Claims re FRAND Commitments with Prejudice

September 17, 2020 | Blog | By Michael Renaud, Joseph Miller, Adrian Kwan

In the latest decision addressing antitrust liability for FRAND commitments, Judge Barbara M. G. Lynn of the Northern District of Texas dismissed a complaint from Continental Automotive Systems, Inc. (“Continental”) alleging, inter alia, violations of §§ 1 and 2 of the Sherman Act, and declaratory judgment as to FRAND obligations against Avanci, LLC (“Avanci”) and various members of its patent pool (collectively, “Defendants”).
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Trade Secrets Viewpoint Thumbnail

Fact-Specific Inquiry: Deciding Between Trade Secret and Patent Protection

September 15, 2020 | Blog | By Adam Samansky, Nicholas Armington

Innovations that are eligible for patent protection are often vital to a company’s revenue stream and profitability, but in some cases, opting for trade secret protection is a better strategic choice.
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Patent Prosecution and Strategic Counseling Viewpoint Thumbnail

Patent Application Declarations for Unavailable or Uncooperative Inventors

September 14, 2020 | Blog | By Christina Sperry, Mark Hammond

Increased employee mobility, health challenges, and the economic downturn due to the COVID-19 pandemic may result in more inventors than usual being unavailable to sign declarations for patent applications as required by the U.S. Patent and Trademark Office (USPTO) for all applications. 
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Viewpoint Thumbnail

DOJ to IEEE: Yes, Injunctive Relief Should Be Available for SEPs, and Stop Saying Otherwise

September 14, 2020 | Blog | By Michael Renaud, James Wodarski, Joseph Miller, Daniel Weinger, Kara E. Grogan

Last Thursday, September 10, 2020, the U.S. Department of Justice’s Antitrust Division (“DOJ”) issued an updated Business Review Letter (“2020 Letter”) to the Institute of Electrical Electronics Engineers, Incorporated (“IEEE”) clarifying the DOJ’s views on licensing and enforcement practices related to standard essential patents (“SEPs”).
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Trade Secrets Viewpoint Thumbnail

Rules of Engagement: Minimizing Trade Secret Disputes when Hiring Rival Employees

September 10, 2020 | Blog | By Adam Samansky, Nicholas Armington

An ethical corporate culture and clear expectations during the hiring process can help companies curtail trade secret disputes when hiring employees from rival companies.
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