Intellectual Property& Technology Law Journal
|
|
- Dulcie Powers
- 6 years ago
- Views:
Transcription
1 Intellectual Property& Technology Law Journal Edited by the Technology and Proprietary Rights Group of Weil, Gotshal & Manges LLP VOLUME 29 NUMBER 9 SEPTEMBER 2017 The Use of Genetic Evidence to Defend Against Toxic Tort Claims Part I Toxic tort cases generally involve claims that an individual was harmed as a consequence of exposure to a chemical(s) (including a medication). These cases can be particularly difficult to litigate because of the challenges presented by demonstrating or disproving causation. Because we do not fully understand the extent to which a chemical exposure can affect a particular individual, experts typically offer opinions based on the general risk posed to the plaintiff by the exposure in question. Judge and juries find this lack of plaintiff-specific evidence unsatisfying. This multi-part article, by Susan E. Brice, a partner at Bryan Cave LLP, and Whitney V. Christian, a senior toxicologist at Medtronic, explores how genetic and epigenetic biomarkers of cause and effect can be used to fill this gap for defendants. In this first part of the article, the authors introduce the topic, discuss the human genome, and genes, the environment, susceptibility, and disease. The final parts of the article, which will appear in upcoming issues of Intellectual Property & Technology Law Journal, will explore genetic data and toxic tort law, genetic biomarkers, genomics and toxicogenomics, epigenetics, and tools for understanding causation at the genomic level. FDA Amends Regulations for 505(b)(2) Applications and ANDAs Part I This two-part article, by Shana K. Cyr, Li Feng, and Thomas L. Irving, patent attorneys at Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, considers the U.S. Food and Drug Administration s amendments to the regulations relating to the approval of new drugs. In this first part of the article, the authors discuss the background of the regulations and certain of the amendments that warrant consideration. The second part of the article, which will appear in an upcoming issue of Intellectual Property & Technology Law Journal, will continue the discussion of the amendments and offer conclusions. Trademark Rights Protection Mechanisms in the Domain Name System: Current Landscape and Efforts to Diminish Protection This article, by Brian J. Winterfeldt and Griffin M. Barnett, attorneys at Mayer Brown LLP, presents an overview of these trademark Rights Protection Mechanisms (RPMs), key developments within the RPM review process and an analysis of opportunities and risks this review presents for brand owners, and predictions regarding the outcomes of the review process and what these outcomes may mean for brand owners moving forward. When to Ask for Additional Discovery Can Be Just as Important as What to Ask for In Garmin Int l, Inc. v. Cuozzo Speed Tech. LLC, the Patent Trial and Appeal Board (Board) set forth five factors commonly referred to as the Garmin factors for determining whether additional discovery will be granted to a party during a proceeding before the Board, such as an inter partes review, covered business method review, or post-grant review. In their article, Nelson D. Runkle and Tyler Del Rosario, of Sughrue Mion, PLLC, discuss the five factors and when to ask for additional discovery.
2 When to Ask for Additional Discovery Can Be Just as Important as What to Ask for By Nelson D. Runkle and Tyler Del Rosario In Garmin Int l, Inc. v. Cuozzo Speed Tech. LLC, 1 the Patent Trial and Appeal Board (Board) set forth five factors commonly referred to as the Garmin factors for determining whether additional discovery will be granted to a party during a proceeding before the Board, such as an inter partes review (IPR), covered business method review (CBM), or post-grant review (PGR). Briefly, the five Garmin factors are: 1. More than a Possibility and Mere Allegation; 2. Litigation Positions and Underlying Basis; 3. Ability to Generate Equivalent Information by Other Means; 4. Easily Understandable Instructions; and 5. Requests Not Overly Burdensome to Answer. 2 The Board infrequently grants additional discovery requests based on the above factors. Further, the burden on a party requesting additional discovery is heightened by additional considerations related to these five Garmin factors, which the Board may consider even if the parties do not raise the issue. These include the impact on schedule and the timing of the request. Impact on the Schedule In determining whether to grant additional discovery, the Board may consider whether the Nelson D. Runkle is an associate in the Electrical/Mechanical Practice Group of Sughrue Mion, PLLC. A former Patent Examiner at the U.S. Patent and Trademark Office, he assists clients in the procurement of both U.S. and foreign patents, which includes the preparation and prosecution of patent applications. Tyler Del Rosario is a law clerk at the firm analyzing patent cases, especially as they relate to PTAB rules, regulations, and decisions. request places a significant burden on meeting the time schedule of inter partes review, even if not specifically addressed by the parties. Further, these considerations may be used in applying the fifth Garmin factor, whether a request is overly burdensome to answer. For example, in Wavemarket Inc. v. Locationet Systems Ltd., 3 the Patent Owner requested additional discovery from Petitioner. 4 In particular, the Patent Owner sought to establish that various entities that were not named real parties in interest are in fact so, which could have resulted in dismissal of the Petitioner s challenge against the patent in question. 5 In an attempt to demonstrate this position, Patent Owner requested, inter alia, all indemnification agreements and communications about the indemnification by and between Petitioner and the entities. In denying the request for additional discovery and citing to the fifth Garmin factor, the Board stated, the requested discovery may place a significant burden on meeting the time schedule of inter partes review, noting the proceedings in the inter partes review were instituted nearly three months prior, and are no longer in the preliminary stage. 6 The Board considered the time schedule burden even though the issue was not addressed by the parties. 7 Similarly, in denying a request for additional discovery in Intri-Plex Technologies v. Saint Gobain Performance Plastics, 8 the Board stated they are mindful of the burden [additional discovery requests] may place on meeting the time schedule, for inter partes review. 9 Here, the Board noted the burden based on a broad request for Patent Owner s sales documents of a certain category of product, spanning several years. The Board also noted the difficulties in meeting the inter partes review time schedule should the additional discovery request be granted. Although the Board may extend the due dates of substantive filings, thereby alleviating the burden of additional discovery on meeting the time schedule, the Board also may refuse an extension Volume 29 Number 9 September 2017 Intellectual Property & Technology Law Journal 23
3 without good cause. For example, in SK Innovation v. Celgard, 10 the Board denied the Patent Owner authorization to file a motion for additional discovery relating to secondary considerations of non-obviousness. In part, the Board did not believe there was sufficient time before the Patent Owner Response was due and the Board was unwilling to extend the due date a third time (when the due date already was extended by a month). 11 In particular, the Board stated that there is insufficient time remaining before the twice-extended Patent Owner Response due date to permit the parties to fully brief and the Board to fully consider the issues, and for SKI to produce any discovery that is ultimately ordered. 12 Timing of Request as Related to Progress of Instituted Trial Aside from the impact on the schedule, the Board also may consider how the timing of the request relates to the progress of the instituted proceeding. For example, in Apple v. Evolutionary Products, 13 in denying Patent Owner s request to file a motion for additional discovery, the Board found the issue was not ripe for discovery based on Patent Owner s presented rationale. The Patent Owner s request related to investigating whether Petitioner was coordinating with other parties the Patent Owner has sued for alleged infringement. The Patent Owner argued that if such coordination is taking place, another defendant could be a real party-in [ ] interest or a privy [ ], thus creating estoppel. 14 The Petitioner countered that the discovery sought by Patent Owner was premature, because estoppel with respect to a real party-in-interest or a privy in proceedings before the office under 35 U.S.C. 315(e)(1) or in civil actions or other proceedings under 35 U.S.C. 315(e)(2) arises only after a final written decision under 35 U.S.C. 318(a). 15 In denying the request to file a motion for additional discovery, the Board stated because a final decision has not been rendered in the instant proceeding, proceedings in the district court are stayed, and there are no other proceedings before the Office, the issue is not ripe for discovery. 16 Other timing issues, such as a party s delay, also can be considered by the Board in determining whether to grant additional discovery. For example, in Schott Gemtron v. SSW Holding Co., 17 the Board found that a delay in requesting additional discovery weighs against granting [a motion for additional discovery]. 18 In this case the Patent Owner filed the motion for additional discovery to obtain evidence related to the Patent Owner s assertion of commercial success as a secondary consideration of nonobviousness. However, the Patent Owner did not request a conference call seeking authorization for additional discovery until almost two months after institution of the trial. 19 Similarly, in St Jude Medical v. University of Michigan, 20 in denying Patent Owner s request for additional discovery, the Board determined that the moving party failed to show it acted timely in making the current request. 21 The Board also considers the constraints of regulations governing procedures before the Board in assessing whether requested additional discovery may yield information that can be used in the course of the trial, given the procedural posture of a case. The Board may deny a motion for additional discovery relating to substantive issues when a party files the motion after the end of routine discovery and after filing its last substantive brief in the proceedings. In particular, the first Garmin factor may favor no additional discovery in these circumstances because the party has no opportunity to use the additional discovery as evidence in its arguments to the Board. The third Garmin factor also may be relevant in denying additional discovery when the requesting party is not diligent in its prior discovery to uncover the documents sought in additional discovery. For example, in Daicel v. Celanese International, 22 the Board denied the Patent Owner s motion for additional discovery when the Patent Owner filed the motion after its Patent Owner s Response, because the Board believed the Patent Owner previously could have uncovered the contents of the documents through cross-examination. 23 The Patent Owner sought production of documents allegedly first uncovered by the Patent Owner during cross-examination and relied on by the Petitioner s expert to support arguments of unpatentability, but not included in the expert s Declaration. 24 The Board denied the request after holding that the first, third, fourth, and fifth Garmin factors favored denying the motion. 25 With respect to the first and third Garmin factors, the Board noted that the Patent Owner did not provide enough 24 Intellectual Property & Technology Law Journal Volume 29 Number 9 September 2017
4 evidence to show anything beyond speculation, despite having the opportunity to do so through its cross-examination of the Petitioner s expert. 26 The Board also stated that timing may be relevant to weighing the first factor: [t]he timing of Patent Owner s motion further supports the conclusion that any information obtained is unlikely to be useful, because there is no further opportunity for Patent Owner to submit evidence into the record, absent leave of the Board. 27 In reaching its conclusion, the Board rejected the Patent Owner s argument that information obtained through additional discovery could be included in a Motion for Observations on Cross-Examination because, such observations are not a vehicle for raising new evidence to the Board; rather, they are to be used to call the Board s attention to testimony obtained during cross-examination Furthermore, such observations would only be permitted in this case if Petitioner submits additional testimony from Mr. Miura along with its Reply, which at this point in the proceeding is conjecture. 28 Captioncall v. Ultratec 29 provides another example where the Board held that a motion for additional discovery is untimely when filed after the requesting party s last substantive brief. In Captioncall, the Board denied authorization for the Patent Owner to file a motion for additional discovery relating to draft claim charts of the Petitioner s expert when authorization was requested nearly two months after a first deposition of the expert and the filing of the Patent Owner Response. 30 The Patent Owner argued that the motion would be timely because it expected that the Petitioner would file a second declaration by an expert in support of the Petitioner s Reply and therefore the Patent Owner would use the documents in preparation of a second deposition of the expert. 31 However, the Board disagreed with the argument that the motion would be procedurally timely because Petitioner s Reply is limited to responding to arguments raised in Patent Owner s Response. 32 Furthermore, with respect to the first Garmin factor, the Board stated that the Patent Owner would unlikely find something useful because Patent Owner lacks an opportunity to file a substantive paper addressing the documents and because [the expert] signed each of his declarations on January 28, 2015, the day before the Petitions were filed thus implying that that draft claim charts would be similar to the one produced in the Petition. 33 Although requests for additional discovery should be made in a timely manner, the Board has determined requests to be premature, particularly when the request involves an uninvolved third party. For example, in SAP America v. PiNet International, 34 the Board determined a Petitioner s request for additional discovery from a third party to be premature because the request was based on speculation that the Patent Owner will seek to amend the claims or make certain unidentified arguments. In denying the motion, the Board stated the Board is not inclined to authorize a motion to compel such discovery from an uninvolved third party without a more clear articulation of the reason such discovery is necessary, the scope of information sought and its intended use. 35 Similarly, in Hilti v. Milwaukee Electric Tool, 36 the Board denied a Patent Owner s first motion for additional discovery of documents that belonged to an uninvolved party, Snap-on, and related to secondary considerations of obviousness. 37 However, unlike PiNet, the Board noted that the proper mechanism for seeking discovery from a non-party is to request authorization under 37 C.F.R (a) to apply for subpoenas from a district court under 35 U.S.C Despite the denial, the Board in Hilti granted the Patent Owner s second motion for additional discovery of the Snap-on documents after Snap-on was joined with the original Petitioner. 39 Notably, like the motions in Daicel and Captioncall, this second motion for additional discovery was filed after the Patent Owner s last substantive brief, the Patent Owner Response. 40 Yet, this second motion was granted despite the Petitioners arguments that (1) the request was untimely for being filed after the Patent Owner Response and (2) the Patent Owner could have sought a subpoena from a district court earlier to obtain the documents. 41 Alongside the request for additional discovery, the Board also granted the Patent Owner s request to file, before the Petitioners Reply was due, a single page of supplemental briefing to address the documents to be newly discovered. 42 Thus, the Board allowed the Patent Owner to enter the additional discovery documents into the record despite the Patent Owner having finished discovery and having submitted its final substantive brief. Volume 29 Number 9 September 2017 Intellectual Property & Technology Law Journal 25
5 The Board made its decision on both motions after considering the Patent Owner s arguments that: the request for additional discovery was timely because Snap-on was only recently joined as a party; a single page of supplementary briefing was sufficient and no page limit exception was needed because the Patent Owner Responses did not use the full 60 pages allotted; no further expert depositions were needed because the Patent Owner stated that it would not rely on expert testimony in the supplemental briefing; and under the current schedule, the Petitioners had sufficient time to consider the supplemental briefing before their Reply was due. 43 In particular, the Board stated that the single page of supplemental briefing requested by Patent Owner is warranted in the interests of justice, where the supplemental information at issue relates to issues of secondary considerations raised for the first time in the Patent Owner s Response, and Patent Owner diligently, if unsuccessfully, pursued production of that information via the motion for additional discovery. 44 Accordingly, Patent Owner [was] authorized to file a single page of supplemental briefing, without relying on expert testimony, and may include supporting exhibits consisting of the eight Snap-On documents produced pursuant to this Order as supplemental information under 37 C.F.R (b). 45 Because the Board allowed the Patent Owner to submit supplemental briefing to discuss the documents produced through additional discovery, the Board also granted the Petitioners a 10 percent increase to the word count in their Reply Brief. 46 Thus, in satisfying the already onerous Garmin factors, a party requesting additional discovery needs to consider timing on multiple fronts, to avoid prejudicing the tribunal s ability to satisfy the schedule and to avoid making a request too early, as well as too late. As a corollary, the constraints imposed by the rules governing proceedings before the Board also may hamper a party s ability to obtain additional discovery if not timed properly relative to milestones in the trial schedule. However, in rare circumstances, the Board may excuse a party s later motions for additional discovery as timely when the party demonstrates diligence in seeking the discovery and is willing to limit the amount of materials that it will introduce into the record as a result of that discovery. Notes 1. IPR See IPR , Paper 26 at 6-7, (PTAB Mar. 5, 2013). 3. IPR See IPR , Paper 34 at 2 (PTAB Aug. 11, 2014). 5. Id. 6. Id. at Id. 8. IPR See IPR , Paper 40 at 9 (PTAB Sept. 4, 2014). 10. IPR IPR , Paper 31 (PTAB Feb. 5, 2015). 12. Id. at 2-3. Furthermore, the Board held that that the Patent Owner did not establish good cause for a further extension when it substituted counsel for a second time without requesting an extension of time in connection with its Motion for Withdrawal of Counsel. 13. IPR See IPR , Paper 13 at 2 (June 3, 2014). 15. See Id. at See Id. at IPR See IPR , Paper 43 at 7 (PTAB Feb. 14, 2014). 19. See Id. at IPR See IPR , Paper 20 at IPR IPR , Paper 59 (PTAB Dec. 22, 2015). 24. Id. at Id. at Id. at Id. at Id. at IPR IPR , Paper 20 (PTAB Jan. 26, 2016). 31. Id. at Id. 33. Id. 34. IPR Intellectual Property & Technology Law Journal Volume 29 Number 9 September 2017
6 35. See IPR , Paper 17 at 6 (PTAB Oct. 16, 2013). 36. IPR IPR , Paper 19 (PTAB Mar. 29, 2016). 38. Id. at IPR , Paper 32 (PTAB May 13, 2016). 40. Id. at Id. 42. Id. at Id. at Id. at Id. at Id. at 6. Volume 29 Number 9 September 2017 Intellectual Property & Technology Law Journal 27
7 Wolters Kluwer Intellectual Property & Technology Law Journal Distribution Center 7201 McKinney Circle Frederick, MD To subscribe, call or order online at September/
New Post Grant Proceedings: Basics by
New Post Grant Proceedings: Basics by Tom Irving Copyright Finnegan 2013 May 14, 2013 Disclaimer These materials are public information and have been prepared solely for educational and entertainment purposes
More informationUSPTO Post Grant Trial Practice
Bill Meunier, Member Michael Newman, Member Peter Cuomo, Of Counsel July 18, 2016 Basics: Nomenclature "IPRs" = Inter partes review proceedings "PGRs" = Post-grant review proceedings "CBMs" = Post-grant
More informationDiscovery and Fact Investigation: New Patent Office Procedures under America Invents Act
2013 Korea-US IP Judicial Conference (IPJC) Seminar 1 Discovery and Fact Investigation: New Patent Office Procedures under America Invents Act Nicholas Groombridge Discovery in District Court Litigations
More informationPaper 11 Tel: Entered: October 20, 2015 UNITED STATES PATENT AND TRADEMARK OFFICE
Trials@uspto.gov Paper 11 Tel: 571-272-7822 Entered: October 20, 2015 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD RPX CORPORATION Petitioner v. APPLICATIONS IN INTERNET
More informationPresentation to SDIPLA
Presentation to SDIPLA Anatomy of an IPR Trial by Andrea G. Reister Chair, Patent Office and Advisory Practice Covington & Burling LLP February 20, 2014 Outline 1. Overview 2. Preliminary Phase 3. Decision
More informationInter Partes and Covered Business Method Reviews A Reality Check
Inter Partes and Covered Business Method Reviews A Reality Check Wab Kadaba Chris Durkee January 8, 2014 2013 Kilpatrick Townsend Agenda I. IPR / CBM Overview II. Current IPR / CBM Filings III. Lessons
More informationInter Partes Review: At the Intersection of the USPTO and District Court
Inter Partes Review: At the Intersection of the USPTO and District Court Barbara A. Fiacco Duke Law Patent Institute May 14, 2013 Inter Partes Review 1 Overview Background: IPR by the numbers Standing/Privity
More informationPaper Date: April 13, 2015 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD
Trials@uspto.gov Paper 51 571-272-7822 Date: April 13, 2015 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD LG CHEM, LTD., Petitioner, v. CELGARD, LLC, Patent Owner.
More informationPTAB Trial Proceedings and Parallel Litigation: Impact, Strategy & Consequences
Finnegan, Henderson, Farabow, Garrett & Dunner, LLP PTAB Trial Proceedings and Parallel Litigation: Impact, Strategy & Consequences 2015 National CLE Conference Friday, January 9, 2015 Presented by Denise
More informationPaper No Entered: June 10, 2015 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD
Trials@uspto.gov Paper No. 24 571.272.7822 Entered: June 10, 2015 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD KINGSTON TECHNOLOGY COMPANY, INC., Petitioner, v. CATR
More informationNavigating the Limitations on Discovery in AIA Post-Grant Proceedings Buffalo Intellectual Property Law Journal Volume XI December 3, 2015
Navigating the Limitations on Discovery in AIA Post-Grant Proceedings Buffalo Intellectual Property Law Journal Volume XI December 3, 2015 MARY R. HENNINGER, PHD REBECCA M. MCNEILL AMELIA FEULNER BAUR,
More informationPaper 23, IPR ; Paper 23, IPR Entered: February 20, 2015 UNITED STATES PATENT AND TRADEMARK OFFICE
Trials@uspto.gov Paper 25, IPR2014-00946; 571.272.7822 Paper 23, IPR2014-00947; Paper 23, IPR2014-00948 Entered: February 20, 2015 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND
More informationPaper Date: July 24, 2014 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD
Trials@uspto.gov Paper 15 571-272-7822 Date: July 24, 2014 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD ARRIS GROUP, INC. Petitioner, v. C-CATION TECHNOLOGIES, LLC
More informationPost Grant Review. Strategy. Nathan Frederick Director, IP Services
Post Grant Review Strategy Nathan Frederick Director, IP Services Cardinal Intellectual Property 1603 Orrington Avenue, 20th Floor Evanston, IL 60201 Phone: 847.905.7122 Fax: 847.905.7123 Email: mail@cardinal-ip.com
More informationPost-Grant for Practitioners
Part XII: Inter Partes Review Highlights From the First Year+ Dorothy Whelan and Karl Renner Principals and Co-Chairs of Post-Grant Practice Webinar Series January 8, 2014 Agenda @FishPostGrant I. Overview
More informationPaper Entered: September 10, 2015 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD
Trials@uspto.gov Paper 34 571-272-7822 Entered: September 10, 2015 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD ZHONGSHAN BROAD OCEAN MOTOR CO., LTD., BROAD OCEAN
More informationT he landscape for patent disputes is changing rapidly.
BNA s Patent, Trademark & Copyright Journal Reproduced with permission from BNA s Patent, Trademark & Copyright Journal, 84 PTCJ 828, 09/14/2012. Copyright 2012 by The Bureau of National Affairs, Inc.
More informationPaper 9 (IPR ) Entered: September 1, 2016 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD
Trials@uspto.gov Paper 9 (IPR2016-01111) 571-272-7822 Paper 9 (IPR2016-01112) Entered: September 1, 2016 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD DR. REDDY S LABORATORIES,
More informationPost-SAS Implications On Parties to Inter Partes Review and Estoppel Issues
Post-SAS Implications On Parties to Inter Partes Review and Estoppel Issues Grant Shackelford Sughrue Mion, PLLC 2018 1 Agenda Background: PTAB's partial institution practice SAS Decision Application of
More informationFactors Favoring Early Settlement of Post-Grant Proceedings Landslide Vol. 8, No. 6 July/August 2016
Factors Favoring Early Settlement of Post-Grant Proceedings Landslide Vol. 8, No. 6 July/August 2016 MARY R. HENNINGER, PHD 404.891.1400 mary.henninger@mcneillbaur.com REBECCA M. MCNEILL 617.489.0002 rebecca.mcneill@mcneillbaur.com
More informationPaper 11 Tel: Entered: September 24, 2015 UNITED STATES PATENT AND TRADEMARK OFFICE
Trials@uspto.gov Paper 11 Tel: 571-272-7822 Entered: September 24, 2015 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD INTERNATIONAL BUSINESS MACHINES CORPORATION, Petitioner,
More informationPost-Grant Proceedings in the USPTO
Finnegan, Henderson, Farabow, Garrett & Dunner, LLP Post-Grant Proceedings in the USPTO Erika Arner Advanced Patent Law Institute, Palo Alto, CA December 12, 2013 0 Post-Grant Proceedings New AIA proceedings
More informationPaper: Entered: January 19, 2016 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD
Trials@uspto.gov Paper: 71 571-272-7822 Entered: January 19, 2016 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD NESTLÉ HEALTHCARE NUTRITION, INC., Petitioner, v. STEUBEN
More informationInter Partes Review: A New Tool for Challenging Patent Validity. Dorothy Whelan and Karl Renner
Inter Partes Review: A New Tool for Challenging Patent Validity By Dorothy Whelan and Karl Renner Principals and Co-Chairs of Post-Grant Practice, Fish & Richardson Gwilym Attwell Principal, Fish & Richardson
More informationPaper Entered: July 29, 2013 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD
Trials@uspto.gov Paper 16 571-272-7822 Entered: July 29, 2013 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD SONY CORPORATION OF AMERICA; AXIS COMMUNICATIONS AB; AXIS
More informationSughrue Mion, PLLC Washington, Tokyo, San Diego, Silicon Valley 7/2/2012
Sughrue Mion, PLLC Washington, Tokyo, San Diego, Silicon Valley www.sughrue.com This presentation is for educational purposes only, and it does not provide legal advice or comment on the application of
More informationPaper Entered: December 18, 2018 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD
Trials@uspto.gov Paper 11 571.272.7822 Entered: December 18, 2018 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD NUNA BABY ESSENTIALS, INC., Petitioner, v. BRITAX CHILD
More informationU.S. Patent and Trademark Office Issues Proposed Rules for Post-Issuance Patent Review under the America Invents Act
February 16, 2012 Practice Groups: Intellectual Property Intellectual Property Litigation U.S. Patent and Trademark Office Issues Proposed Rules for Post-Issuance Patent Review under the America Invents
More informationThe New Post-AIA World
Finnegan, Henderson, Farabow, Garrett & Dunner, LLP The New Post-AIA World New Ways to Challenge a US Patent or Patent Application Erika Arner FICPI ABC 2013 Conference New Orleans, LA 0 Third Party Patent
More informationUnited States Patent and Trademark Office. Patent Trial and Appeal Board
United States Patent and Trademark Office Patent Trial and Appeal Board PTAB Organization Statutory Members of the Board The Board is created by statute (35 U.S.C. 6). 35 U.S.C. 6(a) provides: There shall
More information2012 Winston & Strawn LLP
2012 Winston & Strawn LLP How the America Invents Act s Post-Issuance Proceedings Influence Litigation Strategy Brought to you by Winston & Strawn s Intellectual Property practice group 2012 Winston &
More informationUNITED STATES DISTRICT COURT NORTHERN DISTRICT OF CALIFORNIA SAN FRANCISCO DIVISION
Case:-mc-00-RS Document Filed0// Page of UNITED STATES DISTRICT COURT NORTHERN DISTRICT OF CALIFORNIA SAN FRANCISCO DIVISION PERSONAL AUDIO LLC, Plaintiff, v. TOGI ENTERTAINMENT, INC., and others, Defendants.
More informationDISCLAIMER PETITIONS FILED SalishanPatent Law Conference
For 2016 SalishanPatent Law Conference Enhancing The Possibilities Of Success For The Patent Owner In AIA Post-Grant Proceedings: Lessons From PTAB Denials Of Institution by Deb Herzfeld Copyright Finnegan
More informationPaper 30 Tel: Entered: November 28, 2014 UNITED STATES PATENT AND TRADEMARK OFFICE
Trials@uspto.gov Paper 30 Tel: 571-272-7822 Entered: November 28, 2014 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD MITSUBISHI PLASTICS, INC., Petitioner, v. CELGARD,
More informationPaper Entered: May 1, 2015 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD
Trials@uspto.gov Paper 10 571-272-7822 Entered: May 1, 2015 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD ARRIS GROUP, INC., Petitioner, v. C-CATION TECHNOLOGIES, LLC,
More informationAugust 13, Jeff Costakos Vice Chair, IP Litigation Practice Partner, Patent Office Trials Practice
August 13, 2015 Attorney Advertising Prior results do not guarantee a similar outcome Models used are not clients but may be representative of clients 321 N. Clark Street, Suite 2800,Chicago, IL 60654
More informationPaper No Entered: October 12, 2017 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD
Trials@uspto.gov Paper No. 9 571-272-7822 Entered: October 12, 2017 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD NETAPP INC., Petitioner, v. REALTIME DATA LLC, Patent
More informationPaper 14 Tel: Entered: July 17, 2017 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD
Trials@uspto.gov Paper 14 Tel: 571-272-7822 Entered: July 17, 2017 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD CULTEC, INC., Petitioner, v. STORMTECH LLC, Patent
More informationPreparing For The Obvious At The PTAB
Portfolio Media. Inc. 860 Broadway, 6th Floor New York, NY 10003 www.law360.com Phone: +1 646 783 7100 Fax: +1 646 783 7161 customerservice@law360.com Preparing For The Obvious At The PTAB Law360, New
More informationUNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD. GENERAL ELECTRIC COMPANY, Petitioner,
Trials@uspto.gov Paper 11 571-272-7822 Entered: October 20, 2014 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD GENERAL ELECTRIC COMPANY, Petitioner, v. TRANSDATA, INC.,
More informationThe Changing Landscape of AIA Proceedings
The Changing Landscape of AIA Proceedings Presented by: Gina Cornelio, Partner, Patent Clint Conner, Partner, Intellectual Property Litigation June 20, 2018 The Changing Landscape of AIA Proceedings Gina
More informationUNITED STATES DISTRICT COURT NORTHERN DISTRICT OF CALIFORNIA
UNITED STATES DISTRICT COURT NORTHERN DISTRICT OF CALIFORNIA CYPRESS SEMICONDUCTOR CORPORATION, v. Plaintiff, GSI TECHNOLOGY, INC., Defendant. Case No. -cv-00-jst ORDER GRANTING MOTION TO STAY Re: ECF
More informationPaper Entered: May 29, 2018 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD
Trials@uspto.gov Paper 30 571-272-7822 Entered: May 29, 2018 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD FACEBOOK, INC., WHATSAPP INC., and LG ELECTRONICS, INC.,
More informationAmerica Invents Act Implementing Rules. September 2012
America Invents Act Implementing Rules September 2012 AIA Rules (Part 2) Post Grant Review Inter Partes Review Section 18 Proceedings Derivation Proceedings Practice before the PTAB 2 Post Grant Review
More informationAmerica Invents Act (AIA) Post-Grant Proceedings. Jeffrey S. Bergman Kevin Kuelbs Laura Witbeck
America Invents Act (AIA) Post-Grant Proceedings Jeffrey S. Bergman Kevin Kuelbs Laura Witbeck What is included in Post-Grant Reform in the U.S.? Some current procedures are modified and some new ones
More informationIntersection of Automotive, Aerospace, & Transportation: Practical Strategies for Resolving IP Conflicts in Multi-Supplier Sourcing
Intersection of Automotive, Aerospace, & Transportation: Practical Strategies for Resolving IP Conflicts in Multi-Supplier Sourcing May 28, 2014 R. David Donoghue Holland & Knight LLP 131 South Dearborn
More informationIntellectual Property: Efficiencies in Patent Post-Grant Proceedings
Intellectual Property: Efficiencies in Patent Post-Grant Proceedings By Ann Fort, Pete Pappas, Karissa Blyth, Robert Kohse and Steffan Finnegan The Leahy-Smith America Invents Act of 2011 (AIA) created
More informationFriend or Foe: the New Patent Challenge Procedures at the Patent Trial and Appeal Board
Friend or Foe: the New Patent Challenge Procedures at the Patent Trial and Appeal Board Asserting rights are no longer the province of pencil-pushing technology companies. Many businesses, big and small
More informationPaper Date Entered: July 24, 2015 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD
Trials@uspto.gov Paper 10 571-272-7822 Date Entered: July 24, 2015 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD ZTE CORPORATION, ZTE (USA) INC., and T-MOBILE USA INC.,
More informationGeorge Mason University School of Law PATENT LITIGATION AND DISPUTE RESOLUTION. Spring Tuesdays 8:00-9:50 P.M. Classroom 329 SYLLABUS
George Mason University School of Law PATENT LITIGATION AND DISPUTE RESOLUTION Spring 2014 Tuesdays 8:00-9:50 P.M. Classroom 329 SYLLABUS INSTRUCTORS Robert F. Shaffer Finnegan, Henderson, Farabow, Garrett
More informationThe Royal Society of Chemistry IP Law Case Seminar: 2017 in the U.S.
Finnegan, Henderson, Farabow, Garrett & Dunner, LLP The Royal Society of Chemistry IP Law Case Seminar: 2017 in the U.S. Anthony C. Tridico, Ph.D. 2017 1 Agenda U.S. Supreme Court news 2017 U.S. Court
More informationPaper Entered: September 18, 2017 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD
Trials@uspto.gov Paper 13 571-272-7822 Entered: September 18, 2017 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD LUV N CARE, LTD., Petitioner v. MICHAEL L. MCGINLEY,
More informationWhat is Post Grant Review?
An Overview of the New Post Grant Review Proceedings at the USPTO Michael Griggs, Boyle Fredrickson May 15, 2015 What is Post Grant Review? Trial proceedings at the USPTO created by the America Invents
More informationUNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD. ACCO BRANDS CORPORATION, Petitioner. FELLOWES, INC., Patent Owner.
Trials@uspto.gov 571-272-7822 Paper No. 16 Date Entered: April 18, 2014 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD ACCO BRANDS CORPORATION, Petitioner. v. FELLOWES,
More informationUNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD. SQUARE, INC., Petitioner, REM HOLDINGS 3, LLC, Patent Owner.
Trials@uspto.gov Paper 23 571-272-7822 Entered: September 15, 2014 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD SQUARE, INC., Petitioner, v. REM HOLDINGS 3, LLC, Patent
More informationPaper Date Entered: November 2, 2015 UNITED STATES PATENT AND TRADEMARK OFFICE
Trials@uspto.gov Paper 21 571-272-7822 Date Entered: November 2, 2015 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD APPLE INC., Petitioner, v. VIRNETX INC., Patent
More informationPaper No Entered: March 8, 2017 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD
Trials@uspto.gov Paper No. 15 571.272.7822 Entered: March 8, 2017 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD ORACLE AMERICA, INC., Petitioner, v. REALTIME DATA LLC,
More informationMAY/JUNE 2016 DEVOTED TO INT ELLECTUAL P RO PERTY LIT IGATION & ENFORCEMENT. Edited by Gregory J. Battersby and Charles W. Grimes.
MAY/JUNE 2016 VOLUME 22 NUMBER 3 DEVOTED TO INT ELLECTUAL P RO PERTY LIT IGATION & ENFORCEMENT Edited by Gregory J. Battersby and Charles W. Grimes Litigator The IPR Trial A Play in Three Acts Charles
More informationFederal Circuit Review of Post-Grant Review-Related Proceedings
Federal Circuit Review of Post-Grant Review-Related Proceedings October 7, 2015 Attorney Advertising Speakers Greg Lantier Partner Intellectual Property Litigation Emily R. Whelan Partner Intellectual
More informationPaper Date: June 5, 2014 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD
Trials@uspto.gov Paper 49 571-272-7822 Date: June 5, 2014 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD RPX CORPORATION Petitioner v. VIRNETX INC. Patent Owner Case
More informationPTAB Approaches To Accessibility Of Printed Publication
Portfolio Media. Inc. 111 West 19 th Street, 5th Floor New York, NY 10011 www.law360.com Phone: +1 646 783 7100 Fax: +1 646 783 7161 customerservice@law360.com PTAB Approaches To Accessibility Of Printed
More informationPost-Grant for Practitioners. Evidentiary Trends at the PTAB Part II: "Paper" Witness Testimony. June 8, Steve Schaefer Principal
June 8, 2016 Post-Grant for Practitioners Evidentiary Trends at the PTAB Part II: "Paper" Witness Testimony Steve Schaefer Principal John Adkisson Principal Thomas Rozylowicz Principal Agenda #FishWebinar
More informationSupreme Court of the United States
No. 16-76 ================================================================ In The Supreme Court of the United States --------------------------------- --------------------------------- J. CARL COOPER,
More informationPatent Reform State of Play
Patent Reform Beyond the Basics: Exposing Hidden Traps, Loopholes, Landmines Powered by Andrew S. Baluch April 15, 2016 1 Patent Reform State of Play Congress 8 bills pending Executive Agencies IPR Final
More informationPaper 24 Tel: Entered: October 9, 2018 UNITED STATES PATENT AND TRADEMARK OFFICE
Trials@uspto.gov Paper 24 Tel: 571-272-7822 Entered: October 9, 2018 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD FACEBOOK, INC. Petitioner v. EVERYMD.COM LLC Patent
More informationUNITED STATES DISTRICT COURT DISTRICT OF MASSACHUSETTS
UNITED STATES DISTRICT COURT DISTRICT OF MASSACHUSETTS KONINKLIJKE PHILIPS N.V. and PHILIPS LIGHTING NORTH AMERICA CORP., Plaintiffs, v. Civil Action No. 14-12298-DJC WANGS ALLIANCE CORP., d/b/a WAC LIGHTING
More informationUNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD. BUNGIE, INC., Petitioner, ACCELERATION BAY LLC., Patent Owner.
Filed on behalf of: Bungie, Inc. By: Michael T. Rosato (mrosato@wsgr.com) Andrew S. Brown (asbrown@wsgr.com) WILSON SONSINI GOODRICH & ROSATI 701 Fifth Avenue, Suite 5100 Seattle, WA 98104-7036 Paper No.
More informationPaper Entered: May 16, 2017 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD
Trials@uspto.gov Paper 54 571.272.7822 Entered: May 16, 2017 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD POLYGROUP LIMITED (MCO), Petitioner, v. WILLIS ELECTRIC COMPANY,
More informationPaper Entered: September 20, 2016 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD
Trials@uspto.gov Paper 16 571-272-7822 Entered: September 20, 2016 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD SIERRA WIRELESS AMERICA, INC., SIERRA WIRELESS, INC.,
More informationPaper: Entered: October 28, 2015 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD
Trials@uspto.gov Paper: 45 571-272-7822 Entered: October 28, 2015 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD SEAGATE TECHNOLOGY (US) HOLDINGS, INC. and SEAGATE TECHNOLOGY
More informationCurrent Developments in Inter Partes Review
Current Developments in Inter Partes Review Speakers: Peter Gergely, Merchant & Gould Current Developments Ryan Fletcher, Ph.D., Merchant & Gould Hot Topics Chris Davis, Merchant & Gould Trends and Statistics
More informationPaper Entered: April 2, 2019 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD
Trials@uspto.gov Paper 13 571-272-7822 Entered: April 2, 2019 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD VALVE CORPORATION, Petitioner, v. ELECTRONIC SCRIPTING PRODUCTS,
More informationPaper Entered: March 31, 2016 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD
Trials@uspto.gov Paper 19 571-272-7822 Entered: March 31, 2016 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD INLINE PACKAGING, LLC, Petitioner, v. GRAPHIC PACKAGING
More informationWIPO Conference on IP Dispute Resolution in Life Sciences 2016 Amanda K. Murphy, Ph.D.
Finnegan Europe LLP WIPO Conference on IP Dispute Resolution in Life Sciences 2016 Amanda K. Murphy, Ph.D. 1 U.S. Judicial System U.S. Supreme Court Quasi- Judicial Federal Agencies Federal Circuit International
More informationMAY/JUNE 2014 DEVOTED TO INT ELLECTUAL P RO PERTY LIT IGATION & ENFORCEMENT. Edited by Gregory J. Battersby and Charles W. Grimes.
MAY/JUNE 2014 VOLUME 20 NUMBER 3 DEVOTED TO INT ELLECTUAL P RO PERTY LIT IGATION & ENFORCEMENT Edited by Gregory J. Battersby and Charles W. Grimes Litigator A Guide to Using Video-Recorded Depositions
More informationCOMMENTARY. Exclusion of Evidence Before the Patent Trial and Appeal Board. Mechanics of Filing a Motion to Exclude
October 2014 COMMENTARY Exclusion of Evidence Before the Patent Trial and Appeal Board Post-issue challenges at the Patent Trial and Appeal Board (the Board ) 1 provide an accelerated forum to challenge
More informationA Practical Guide to Inter Partes Review. Strategic Considerations Relating To Termination
A Practical Guide to Inter Partes Review Strategic Considerations Relating To Termination Webinar Guidelines Participants are in listen-only mode Submit questions via the Q&A box on the bottom right panel
More informationPost-Grant Patent Proceedings
Post-Grant Patent Proceedings The Leahy-Smith America Invents Act (AIA), enacted in 2011, established new post-grant proceedings available on or after September 16, 2012, for challenging the validity of
More informationPTAB At 5: Part 3 Fed. Circ. Statistics
Portfolio Media. Inc. 111 West 19 th Street, 5th Floor New York, NY 10011 www.law360.com Phone: +1 646 783 7100 Fax: +1 646 783 7161 customerservice@law360.com PTAB At 5: Part 3 Fed. Circ. Statistics By
More informationPaper Entered: June 3, 2016 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD
Trials@uspto.gov Paper 8 571-272-7822 Entered: June 3, 2016 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD SECURUS TECHNOLOGIES, INC., Petitioner, v. GLOBAL TEL*LINK
More informationAIA Post-Grant Proceedings: Evolution of the Rules. Rachel A. Kahler, Ph.D. Patent Agent General Mills, Inc.
AIA Post-Grant Proceedings: Evolution of the Rules Rachel A. Kahler, Ph.D. Patent Agent General Mills, Inc. Christopher B. Tokarczyk Attorney at Law Sterne Kessler Goldstein & Fox, PLLC - 1 - I. Introduction
More informationBACK TO THE FUTURE Discovery at the Patent Trial and Appeal Board (PTAB)
BACK TO THE FUTURE Discovery at the Patent Trial and Appeal Board (PTAB) Oliver R. Ashe, Jr. ASHE, P.C. 11440 Isaac Newton Sq. North Suite 210 Reston, VA 20190 Tel.: 703-467-9001 Fax: 703-467-9002 www.ashepc.com
More informationPaper 22 Tel: Entered: May 1, 2015 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD
Trials@uspto.gov Paper 22 Tel: 571 272 7822 Entered: May 1, 2015 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD JIAWEI TECHNOLOGY (HK) LTD., JIAWEI TECHNOLOGY (USA)
More informationPaper Entered: October 24, 2014 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD
Trials@uspto.gov Paper 10 571.272.7822 Entered: October 24, 2014 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD FEDEX CORPORATION, Petitioner, v. IPVENTURE, INC., Patent
More informationSPECIAL REPORT May 2018 SURPREME COURT FINDS USPTO S ADMINISTRATIVE PATENT TRIALS CONSTITUTIONAL AND SETS GROUND RULES FOR THEIR CONDUCT BY THE PTAB
SPECIAL REPORT May 2018 Spring 2017 SURPREME COURT FINDS USPTO S ADMINISTRATIVE PATENT TRIALS CONSTITUTIONAL AND SETS GROUND RULES FOR THEIR CONDUCT BY THE PTAB On April 24, 2018, the United State Supreme
More informationPresenting a live 90-minute webinar with interactive Q&A. Today s faculty features:
Presenting a live 90-minute webinar with interactive Q&A Preparing for and Navigating PTAB Appeals Before the Federal Circuit Conducting PTAB Trials With Eye to Appeal, Determining Errors for Appeal, Understanding
More informationPaper Entered: July 10, 2015 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD
Trials@uspto.gov Paper 9 571-272-7822 Entered: July 10, 2015 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD PNC Bank, N.A. Petitioner, v. SECURE AXCESS, LLC, Patent
More informationEmerging Trends and Legal Developments in Post-Grant Proceedings
Emerging Trends and Legal Developments in Post-Grant Proceedings March 28, 2017 Attorney Advertising Overview Trends for TC1600/Orange Book Patents Legal Developments Scope of Estoppel Joinder Motions
More informationAIA Post-Grant Implementation Begins - Is Your Business Strategy Aligned? August 27, A Web conference hosted by Foley & Lardner LLP
AIA Post-Grant Implementation Begins - Is Your Business Strategy Aligned? August 27, 2012 A Web conference hosted by Foley & Lardner LLP Attorney Advertising Prior results do not guarantee a similar outcome
More informationPaper Entered: October 17, 2017 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD
Trials@uspto.gov Paper 11 571-272-7822 Entered: October 17, 2017 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD SAMSUNG ELECTRONICS CO., LTD., Petitioner, v. ELM 3DS
More informationPaper Entered: July 29, 2013 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD
Trials@uspto.gov Paper 15 571-272-7822 Entered: July 29, 2013 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD SONY CORPORATION OF AMERICA; AXIS COMMUNICATIONS AB; AXIS
More information2015 IP Law Year In Review John B. Sganga, Jr.
2015 IP Law Year In Review John B. Sganga, Jr. January 7, 2016 knobbe.com Patents: Belief of invalidity not a defense to inducement Commil USA, LLC v. Cisco Systems, Inc., 135 S. Ct. 1920 (May 26, 2015)
More informationHow Post Grant Challenges Have Evolved from Proposed Rules to Practice. Prepared by W. Karl Renner Principal & Co Chair of Post Grant Practice
How Post Grant Challenges Have Evolved from Proposed Rules to Practice Prepared by W. Karl Renner Principal & Co Chair of Post Grant Practice Fish & Richardson May 8, 2013 Agenda I. Very Brief Orientation
More informationFenner Investments, Ltd. v. Cellco Partnership Impact on IPR Practice and District Court Practice
Where Do We Go from Here? - An Analysis of Teva s Impact on IPR Practice and How the Federal Circuit Is Attempting to Limit the Impact of Teva By Rebecca Cavin, Suzanne Konrad, and Michael Abernathy, K&L
More informationPaper Entered: September 16, 2015 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD
Trials@uspto.gov Paper 8 571-272-7822 Entered: September 16, 2015 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD APOTEX INC., Petitioner, v. WYETH LLC, Patent Owner.
More informationUSPTO Post Grant Proceedings
Post-Grant Proceedings Are You Ready to Practice Before the New PTAB? Bryan K. Wheelock January 30, 2013 USPTO Post Grant Proceedings The AIA created three post grant proceedings for challenging the validity
More informationPaper 12 Tel: Entered: April 30, 2018 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD
Trials@uspto.gov Paper 12 Tel: 571-272-7822 Entered: April 30, 2018 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD POWER INTEGRATIONS, INC., Petitioner, v. SEMICONDUCTOR
More informationCoordinating Litigation
Presented: 2013 Berkeley-Stanford Advanced Patent Law Institute December 12-13, 2013 Four Seasons Hotel Palo Alto, California Coordinating Litigation Jared Bobrow David L. McCombs Isaac Peterson Jared
More informationAmerica Invents Act of 2011 Part 1: Impact on Litigation Strategy Part 2: Strategic Considerations of the FTF Transition
America Invents Act of 2011 Part 1: Impact on Litigation Strategy Part 2: Strategic Considerations of the FTF Transition Dave Cochran Jones Day Cleveland December 6, 2012 Part 1: Impact on Litigation Strategy
More informationInter Partes Review Part I: Pretrial
Challenging Patent Validity in the USPTO: Strategic Considerations in View of the USPTO s Proposed Rules Inter Partes Review Part I: Pretrial Presented By: Karl Renner Dorothy Whelan Co-Chairs of Post
More information