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News and Analysis

  • PTAB: estoppel and subsequent district court litigation

    December 21, 2016

    Jim Brogan, Brian Eutermoser and Janna Fischer discuss the ways that the unsuccessful IPR petitioner at the Patent Trial and Appeal Board still can challenge validity in subsequent district court litigation

  • Federal Circuit en banc considers motions to amend in Aqua Products

    December 20, 2016

    During oral arguments for In re: Aqua Products, the Federal Circuit sitting en banc considered the burden of proof in motions to amend before the PTAB. Natalie Rahhal analyses the likely outcomes when the appeals court issues its decision in the case

  • ITC rules Arista infringed Cisco’s patents … again

    December 20, 2016

    The International Trade Commission has ruled that Arista’s components for routers and networking systems infringe two Cisco patents. This follows a June ITC judgment that Arista infringed three other Cisco’s patents

  • Delaware jury awards Merck biggest-ever patent award of $2.54bn

    December 16, 2016

    A Delaware jury has ordered Gilead Sciences to pay $2.54 billion in damages to Merck for infringing a patent related to hepatitis C treatment. It is the largest-ever patent damages award

  • US Supreme Court to hear patent venue case TC Heartland

    December 15, 2016

    The Eastern District of Texas’s dominance over patent cases is in peril after the Supreme Court granted cert in TC Heartland v Kraft Food Brands Group

  • Berkeley and Broad fight for CRISPR rights before USPTO

    December 13, 2016

    The USPTO has heard what will likely be the last important patent interference proceeding to come before a panel of its judges. The proceedings are going out with a bang with a hearing over the celebrated CRISPR gene editing technology

  • Analysing Life Tech v Promega arguments at the US Supreme Court

    December 07, 2016

    The Life Tech v Promega case involving the export of components of patented inventions pitted Sidley Austin’s Carter Phillips against WilmerHale’s Seth Waxman during oral arguments

  • November PTAB round-up: 2016’s second-busiest filing month, CAFC decisions of interest

    December 07, 2016

    Data and analysis: November was a strong month for Patent Trial and Appeal Board filing, while the Federal Circuit took issue with several decisions coming out of the Board

  • Samsung v Apple: SCOTUS redefines article of manufacture

    December 07, 2016

    In its opinion in Samsung v Apple, the US Supreme Court rejected the Federal Circuit’s definition of “article of manufacture”, saying it can encompass both a product and a component

  • Interview: Randi Karpinia, Meg Boulware and the AIPLA Women in IP Law Committee

    December 02, 2016

    The chair of AIPLA’s Women in IP Law Committee and the co-chair of the Advancement and Retention Subcommittee tell Natalie Rahhal how they promote retaining and advancing women

  • Live from Palo Alto: the 2016 International Women's Leadership Forum

    November 29, 2016

    The annual Women's Leadership Forum in Palo Alto covers issues including software patents, emerging technologies, the UPC, licensing and leadership development

  • Analysing the Federal Circuit’s Unwired Planet ruling on CBMs at the PTAB

    November 28, 2016

    The Federal Circuit’s Unwired Planet v Google decision will lead to more rigorous review of covered business method review petitions by the Patent Trial and Appeal Board and discourage filing

  • Debating partnering strategies for patent licensing

    November 23, 2016

    A panel on IP monetisation at the IP Dealmakers Forum discussed whether to partner or not and how to develop effective strategies

  • Defining the IP landscape in IoT

    November 23, 2016

    The Internet of Things necessitates standardisation and more collaborative, consolidated IP licensing structures

  • CAFC rules PTAB’s CBM definition too broad in Unwired Planet

    November 22, 2016

    In Unwired Planet v Google, the Federal Circuit has declared: “The Board’s application of the ‘incidental to’ and ‘complementary to’ language from the PTO policy statement instead of the statutory definition renders superfluous the limits Congress placed on the definition of a CBM patent”

  • USPTO could change direction under Trump administration – panel

    November 21, 2016

    A panel on the US election at the IP Dealmakers Forum speculated that the Trump administration may take a long time to appoint a USPTO director and the Republican leadership that worked on patent bills in the previous Congress will again push for reform

  • Halo webinar reveals how courts are using their discretion over enhanced damages

    November 18, 2016

    Federal Circuit and district court rulings interpreting the Supreme Court’s Halo opinion on enhanced damages were analysed in a webinar presented by Managing IP and Fitzpatrick

  • Texas jury awards $20m patent damages against Medtronic

    November 17, 2016

    Medtronic has been ordered to pay $20.4m in damages by an Eastern District of Texas jury for infringing a doctor’s patents related to idiopathic scoliosis treatment

  • Philips to pay Masimo $300m patent settlement

    November 15, 2016

    Philips and Masimo have ended their long-running dispute over blood oxygen measurement patents

  • Arnold & Porter/Kaye Scholer merge, and more North America people moves

    November 11, 2016

    The formation of Arnold & Porter Kaye Scholer, the retirement of a Northern District of California judge, and hires by Brooks Kushman, Osler, Honigman, Seyfarth Shaw, Mishcon de Reya, Morrison & Foerster, Quinn Emanuel, Katten and more

  • Data: US patent litigation picks up in October

    November 07, 2016

    October district court patent case filing was above average for the year, but 2016 is still greatly down on recent years. The entity filing the most cases in the month was a new entity suing broadcasters and publishers, with the EFF already labelling its patent the “Stupid Patent of the Month”

  • PTAB Bar Association enjoying fast growth

    November 07, 2016

    The PTAB Bar Association has added more members and attracted more seed funding since it was announced in September. Managing IP talks to the association’s president-elect Erika Arner and vice-president Naveen Modi about its goals

  • October PTAB round-up: Filing holds up, CAFC IPR reviewability decisions, fee and patent agent privilege changes

    November 04, 2016

    The past four months have been stable for Patent Trial and Appeal Board filings, while October saw the Federal Circuit giving another ruling on reviewability of IPR institution in Medtronic, the PTAB issue Kyle Bass and printed publication decisions, and the USPTO propose fee increases and changes to patent agent privilege

  • DTSA strategies and cases discussed in webinar

    November 03, 2016

    The cases filed so far under the Defend Trade Secrets Act of 2016 and emerging legal and strategic issues facing DTSA litigants were discussed in a webinar hosted by Managing IP and Wolters Kluwer

  • Laches and patent law: SCA Hygiene v First Quality Baby Products SCOTUS arguments

    November 03, 2016

    The Supreme Court in SCA Hygiene v First Quality Baby Products, its second IP case of the week, weighed whether or not laches should apply in patent law

  • Kyle Bass goes on PTAB winning streak ahead of winter break

    November 03, 2016

    The Coalition for Affordable Drugs has notched a flurry of PTAB wins in the past two weeks. The next decisions will not come until the new year, however

  • Federal Circuit finds software claims patent eligible for fourth time this year

    November 02, 2016

    “There is no such single, succinct, usable definition or test” for defining an abstract idea, the Federal Circuit said while allowing a software patent to survive a Section 101 analysis for the fourth time since May

  • Federal Circuit falling behind as PTAB appeals stack up

    November 01, 2016

    A backlog of Patent Trial and Appeal Board appeals is building up at the Federal Circuit. Finnegan’s Erika Arner discusses recent decisions of interest, including the appeals court affirming the invalidation of two patents cited in the creation of the covered business method patent programme

  • New AIPLA president outlines three goals for the year

    October 31, 2016

    The new AIPLA President, Mark Whitaker of Morrison & Foerster, outlines his hopes for the next year

  • The SEP licensing conundrum

    October 31, 2016

    Negotiations over patent licensing are tricky. One bad sign is if parties start discussing standard-essential patents in detail

  • The state of the IP union

    October 31, 2016

    Alice was the dominant topic in the AIPLA session "Addressing the Hot Topics of Today for Tomorrow's Business"

  • Women in IP Law give tips for taking the lead

    October 31, 2016

    A panel during the Women in IP Law breakfast at the AIPLA annual meeting discussed best practices for retaining women

  • Debating the Defend Trade Secrets Act

    October 31, 2016

    Panelists at the AIPLA annual meeting discussed the Defend Trade Secrets Act, which one described as "the most significant development in trade secrets law in decades"

  • How to impress PTAB judges

    October 31, 2016

    Patent Trial and Appeal Board judges gave tips on how to get the best results from AIA trial hearings

  • The USPTO's Michelle Lee looks back

    October 31, 2016

    At the AIPLA annual meeting, Michelle Lee reflected warmly and proudly on the work that she and the Office have done in collaboration with IP offices and professionals in the US and abroad

  • Interview: AIPLA President Denise DeFranco

    October 28, 2016

    Looking back on a whirlwind year: Denise DeFranco reflects on her term as AIPLA President, which included the passage of the Defend Trade Secrets Act and ramping up of the Association's publications

  • What in-house look for in outside counsel

    October 28, 2016

    In Thursday afternoon's corporate track panel session, in-house counsel from Microsoft, The Clearing House Payments Co and Google revealed what they are looking for in an outside counsel match

  • When enough is enough in patent prosecution

    October 27, 2016

    Patent prosecutors are bound by a duty of candor requiring them to report known prior art. But the scope of doing so is a source of debate

  • Making a better patent

    October 27, 2016

    Patent prosecution is taking place against a backdrop of the press claiming many patents should not have been issued, allegations that patent examiners shirk their responsibilities and the technology industry being exasperated by the Alice aftermath

  • AIPLA's continuous balancing act

    October 27, 2016

    We interview Lisa Jorgenson, AIPLA's executive director, ahead of the association's annual meeting, which starts today

  • Kyle Bass gets first IPR win

    October 27, 2016

    The Patent Trial and Appeal Board has invalidated the claims of a patent covering Shire’s Gattex drug

  • Pure Storage agrees $30m patent litigation settlement with Dell

    October 21, 2016

    Following a $14 million damages award being set aside in September and a new trial scheduled, Pure Storage agrees to pay Dell $30 million to settle all litigation

  • Interview: Time Inc assistant general counsel, Jennifer Chung

    October 19, 2016

    Jennifer Chung speaks to Managing IP about her experiences in modern IP enforcement and obstacles faced by international brand owners today.

  • Samsung v Apple analysis: design patents put to the test at Supreme Court

    October 17, 2016

    Apple was put in a tough spot during oral arguments at the US Supreme Court over how the value of design patent infringement should be determined while it was unclear if the Justices were swayed by Samsung’s proposal of a two-part test for establishing the article of manufacture, believe observers

  • Little impact from PTAB testimonial evidence so far

    October 14, 2016

    The ability to include testimonial evidence with patent owner preliminary responses in Patent Trial and Appeal Board proceedings has not been much help since it was introduced in May, according to an analysis by Oblon’s Scott McKeown

  • Q3 US patent litigation data and analysis

    October 13, 2016

    Managing IP reveals data on US district court patent case filing so far in 2016, as well as the biggest plaintiffs and defendants. Natalie Rahhal talks to patent lawyers to identify the biggest pressures on patent litigation

  • Samsung v Apple SCOTUS arguments: Tests proposed for "article of manufacture"

    October 12, 2016

    Supreme Court justices grappled with how to define article of manufacture in design patent cases in arguments for Samsung v Apple, with Samsung’s lawyer proposing a two-step test and the government’s lawyer offering a four-factor test

  • En banc Federal Circuit reinstates $120m verdict in Apple v Samsung

    October 10, 2016

    The Federal Circuit sitting en banc has reinstated a $120m damages verdict for Apple. Three judges dissented, saying en banc review should never have been granted

  • PTAB finds Shire patent valid in first Kyle Bass final decision

    October 07, 2016

    A patent related to Lialda has been found valid in the first final written decision of a Coalition for Affordable Drugs inter partes review. Decisions from the Patent Trial and Appeal Board on three more patents challenged by the coalition are due this month

  • FTC report identifies two types of PAEs, makes recommendations

    October 06, 2016

    The Federal Trade Commission’s long-awaited patent assertion entity report differentiates between portfolio PAEs and litigation PAEs. The Innovation Alliance has called it an “unscientific case study”

  • Data: PTAB filing stabilises in third quarter

    October 05, 2016

    Managing IP reveals Patent Trial and Appeal Board filing figures for September and the third quarter, as well as ranking the top petitioners and patent owners for the first nine months of 2016. More PGRs than CBMs were filed for the first time ever in September

  • Kappos: McRO is CAFC’s “most important 101 case since Alice”

    October 05, 2016

    Software patents have been reanimated by the Federal Circuit in its McRO v Bandai decision. Natalie Rahhal analyses the most substantive guidance given on Section 101 by the appeals court

  • Secrets of success for university patent licensing and enforcement

    October 04, 2016

    Read an overview and watch a replay of the “University Patent Licensing and Enforcement” webcast

  • CAFC Judge Mayer: “Alice sounded the death knell for software patents”

    October 03, 2016

    In a controversial concurring opinion in a Federal Circuit decision finding claims of three Intellectual Ventures patents invalid, Judge Haldane Mayer argues: “It is well past time to return software to its historical dwelling place in the domain of copyright.”

  • VirnetX awarded $302m in damages against Apple

    October 03, 2016

    An Eastern District of Texas jury has ordered Apple to pay damages for infringing VirnetX patents, with another trial also set to begin soon

  • Strategies for DTSA trade secrets cases

    September 29, 2016

    Read an overview and watch a replay of the “Trade secrets: Strategies for understanding and litigating a DTSA cause of action” webcast

  • DLA Piper (Canada) and Dimock Stratton combine, and other Americas people moves

    September 28, 2016

    Managing IP’s regular review of the latest appointments includes 16 Dimock Stratton lawyers joining DLA Piper in Canada and hires from Brooks Kushman, Chadbourne & Parke, White & Case, Fish & Richardson, Baker Botts, Kirkland & Ellis and K&L Gates

  • Federal Circuit rules it cannot review PTAB assignor estoppel

    September 28, 2016

    The Federal Circuit has outlined a two-part framework for deciding whether it can review an institution decision, in its Husky Injection Molding Sys v Athena Automation decision

  • Judges weigh in on expert evidence around the world

    September 21, 2016

    The issues of expert evidence and what role it plays in IP cases was debated by a panel of judges at the AIPPI World Congress

  • Juries award damages against Apple, LG in Eastern District of Texas

    September 20, 2016

    In two patent cases in the Eastern District of Texas last week, an Acacia subsidiary was awarded $22m and Conversant Intellectual Property Management was awarded $2m

  • PTAB 4 Years In: Biotech/pharma’s share of AIA trials increases

    September 16, 2016

    Biotechnology/pharmaceutical companies were slow to use the Patent Trial and Appeal Board. This is now changing, though this patent type has lower institution and invalidation rates

  • PTAB Bar Association launches

    September 16, 2016

    A bar association solely dedicated to the Patent Trial and Appeal Board has been formed by more than 45 law firms

  • Interview: Chief Judge David Ruschke leads the PTAB into new phase

    September 16, 2016

    The Patent Trial and Appeal Board’s chief judge believes his biggest challenge is taking the Board into a new introspective phase. He talks to Michael Loney about rule changes, PGRs’ potential, Cuozzo, motions to amend and ditching the death squad reputation

  • PTAB 4 Years In: Federal Circuit appeal statistics and unresolved issues

    September 16, 2016

    The Federal Circuit has issued more than 100 decisions on PTAB appeals. But practitioners report many issues remain unsolved, one of which is whether the appeals court can cope with the caseload

  • Federal Circuit rules on Stryker v Zimmer on remand from Supreme Court

    September 14, 2016

    The Federal Circuit has affirmed the jury’s finding of wilful infringement but vacated and remanded the district court’s award of treble damages, in its Stryker v Zimmer decision

  • Lee defends USPTO against accusations of examiners billing unworked hours

    September 14, 2016

    Michelle Lee has testified before a House of Representatives committee amid accusations of USPTO examiners claiming unsupported hours. Managing IP spoke to POPA and patent practitioners to put the problem into perspective

  • Federal Circuit rules software patents valid in McRO v Bandai Namco

    September 14, 2016

    The Federal Circuit has provided guidance on Section 101 while finding software patents valid for only the fourth time since Alice v CLS

  • PTAB 4 Years In: Hedge funds and reverse patent trolls

    September 09, 2016

    A big story last year was the emergence of hedge funds and other entities using the Patent Trial and Appeal Board. While Kyle Bass is seeing his IPRs through to final decision, other entities are acting as reverse patent trolls, a phenomenon that is predicted to gather pace

  • PTAB 4 Years In: Don’t Estop Me Now

    September 09, 2016

    The Federal Circuit this year has provided some guidance on how district courts should treat estoppel from Patent Trial and Appeal Board trials. This has made defendants less terrified about estoppel but many questions remain. Practitioners are also concerned about how confidential material is treated in district courts and the Board

  • PTAB filing falls in August but higher than 2016 average

    September 07, 2016

    The number of Patent Trial and Appeal Board petitions filed in August was slightly above 2016 average. The month also saw notable Federal Circuit decisions on common sense, motions to amend and claim construction

  • IP Stars 2017 research now underway

    September 05, 2016

    Research for the 2017 edition of IP Stars, Managing IP’s legal directory, starts today. Kingsley Egbuonu and Jennifer Ruther highlight some of the things you need to know and why IP firms and practitioners worldwide should participate by making a submission

  • Samsung ordered to pay treble damages in first TXED post-Halo decision

    September 02, 2016

    A jury award to Imperium IP of $6.9 million has been trebled to $20.9 million by an Eastern District of Texas judge

  • PTAB 4 Years In: Is the Board too hard on motions to amend?

    September 01, 2016

    The Federal Circuit will soon consider en banc the Patent Trial and Appeal Board’s amendment practice. But, asks Michael Loney, is the 5% success rate of motions to amend unfair on patent owners?

  • PTAB 4 Years In: Rule changes – a declaration of intent

    August 31, 2016

    Rule changes at the Patent Trial and Appeal Board became effective in May. But practitioners tell Michael Loney they are struggling to see their impact. Some also call for the Board to go over its 12-month deadline for final written decisions in extraordinary circumstances

  • PTAB “arbitrary and capricious” in denying motion to amend – CAFC

    August 31, 2016

    The Federal Circuit has remanded the Veritas v Veeam Software case back to the Patent Trial and Appeal Board, finding its reason for denying a motion to amend “unreasonable”

  • Andrews Kurth adds remaining 55 Kenyon lawyers, and other US people moves

    August 29, 2016

    Managing IP’s regular review of the latest appointments, including Andrews Kurth taking on Kenyon & Kenyon's lawyers and hires at Hunton & Williams, Kilpatrick Townsend & Stockton, Merchant & Gould, Gibson Dunn & Crutcher and Baker Botts

  • PTAB 4 Years In: If you let me stay – district court and ITC trends

    August 25, 2016

    Data provided by LegalMetric reveals that stay motion success rate has stayed constant nationwide but some big shifts have occurred at district level. Michael Loney analyses the strategy for seeking a stay as well as two recent interesting ITC decisions involving PTAB proceedings

  • PTAB 4 Years In: An inconsistent CBM clampdown

    August 25, 2016

    The Patent Trial and Appeal Board has narrowed its definition of what constitutes a covered business method, causing a fall in filing, but the treatment varies by panel. The Federal Circuit may provide more clarity in its upcoming Unwired Planet v Google opinion, practitioners tell Michael Loney

  • ITC latest: Third 100-day decision issued, Fitbit trade secrets win

    August 24, 2016

    In a first for its 100-day pilot programme, the ITC has invalidated a patent involved in a $100m iPod-related settlement a decade ago. In a separate ruling, the Commission has ruled that Fitbit did not misappropriate Jawbone’s trade secrets

  • The Mad Men of IP

    August 24, 2016

    In the early 1960s, patent practice was quiet and inventors often faced a hostile environment. But then, like now, new technologies were emerging to reshape business and the economy. Across North America, innovative lawyers set up boutique firms that would transform the market, many of which still exist today. Fifty years on, Jakob Schnaidt tells their story

  • PTAB chief judge Ruschke hails impact of expert declaration rule change

    August 23, 2016

    In a call with reporters, the Patent Trial and Appeal Board chief judge said the number of judges now is enough, praised the impact of submitting expert declarations with preliminary responses, and said the Board was open to going beyond the 12-month statutory deadline for issuing final written decisions

  • PTAB 4 Years In: PGRs ready for primetime

    August 18, 2016

    Post-grant review petition filing this year is already higher than the whole of 2015, with biopharma companies leading the way. Michael Loney analyses PGRs’ appeal and what strategies filers should consider

  • PTAB 4 Years In: A “new norm” for petition filing

    August 18, 2016

    Patent Trial and Appeal Board filing so far this year is down on 2015. Michael Loney speaks to PTAB practitioners to ask what is driving this and whether the downward trend will continue

  • Halo – is it clarity you’re looking for?

    August 17, 2016

    Federal Circuit and district court rulings since the Supreme Court’s Halo decision have made it clear a jury finding alone is enough for a judgment of willfulness. But an enhanced damages determination should ultimately be made by the judge weighing factors yet to be clarified. Natalie Rahhal analyses post-Halo trends

  • Federal Circuit grants en banc review of PTAB amendment practices

    August 16, 2016

    The Federal Circuit has agreed to rehear en banc two issues relating to Patent Trial and Appeal Board amendment practices in the In re Aqua Products case

  • PTAB’s use of common sense reversed in Arendi v Apple

    August 16, 2016

    The Federal Circuit has issued a rare reversal of the Patent Trial and Appeal Board, ruling the use of common sense was misapplied in Arendi v Apple

  • AbbVie v Amgen: Is the “patent dance” fair for both sides?

    August 16, 2016

    Abbvie suing Amgen over its efforts to launch a Humira biosimilar is the first instance of parties not agreeing on which patents to be litigated under the BPCIA. The case poses the question of whether the patent dance strikes the right balance between parties

  • The Samsung v Apple briefs are in

    August 10, 2016

    Ahead of a showdown over design patents at the Supreme Court in October, Samsung has received more support from US technology companies whereas Apple has received the backing of non-tech companies, high-profile designers and intellectual property associations

  • Federal Circuit rules in Halo on remand from Supreme Court

    August 10, 2016

    The Federal Circuit directs district court to decide whether "an enhancement of the damages award is warranted" in Halo v Pulse

  • Sterne Kessler first law firm to 500 PTAB proceedings

    August 04, 2016

    Sterne Kessler has become the first law firm to handle more than 500 AIA proceedings, with a particularly strong showing representing defendants. Fish & Richardson is the top law firm for challengers at the PTAB, breaking the 300 petition mark

  • US patent litigation update: July filing down 11%

    August 04, 2016

    Data: 407 cases were filed in US district courts in July, with two new plaintiffs leading the way and entities such as Shipping and Transit, Uniloc, Sportbrain and Guyzar adding to their 2016 totals

  • The PTAB, pharmaceutical patents and reverse payments

    August 03, 2016

    The authors of a new white paper believe that almost 75% of pharmaceutical patent settlements at the Patent Trial and Appeal Board meet the criterion for inferring a strong likelihood of reverse payment settlement. The paper also suggests a rule to deter attempts to exploit the Board as a holdup device as well as discussing reverse patent trolls

  • July CBM petition filing slumps to lowest level since February 2013

    August 03, 2016

    PTAB Monthly Data and Analysis: July was the second-busiest month of 2016 for petition filing, but covered business method petitions fell to the lowest level since February 2013. Recent decisions from the Board include cancelling claims on a patent that had been used to sue more than 250 defendants

  • PTAB’s third PGR decision invalidates container delivery patent

    August 03, 2016

    The PTAB has ruled that Boxbee’s storage container tracking patent is invalid under Alice, in its third final written decision of a post-grant review petition

  • Limelight and Akamai convert $51m damages award into licence

    August 02, 2016

    The content delivery network companies have settled their decade-long dispute over a patent that was the focus of a Supreme Court ruling. A district court jury confirmed Limelight infringed the patent this June, with Akamai awarded $51 million damages

  • Judge vacates VirnetX’s $626m damages award in Apple case

    August 01, 2016

    Apple has had a good few days for patent news: the $626m in damages it was ordered to pay VirnetX has been vacated by an Eastern District of Texas judge, and the Federal Circuit has affirmed two district court rulings of non-infringement in cases involving Wi-LAN and GPNE

  • Making sense of US patent litigation in 2016’s first half

    July 29, 2016

    Data and Analysis: Managing IP ranks the top plaintiffs, defendants and law firms in US district court litigation in the first half of 2016, using the Docket Navigator database. One finding is that the proportion of cases filed in the Eastern District of Texas is down, with a drop in NPE suits. But some new plaintiffs emerged during the second quarter

  • Unified Patents files PTAB challenges to 2016’s three busiest NPEs

    July 28, 2016

    Inter partes review petitions have been filed challenging patents owned by Shipping and Transit, Sportbrain Holdings and Uniloc, which have sued more than 200 companies combined in 2016

  • Latest people moves in the US

    July 27, 2016

    Managing IP’s regular review of the latest appointments, including Cooley hiring a team of Morrison & Foerster lawyers in California, James Pooley joining Orrick, a new Librarian of Congress, and hires by Milbank Tweed Hadley & McCloy, K&L Gates, Barnes & Thornburg and Paul Hastings

  • Federal Circuit reverses PTAB for shifting burden of proof to patent owner

    July 27, 2016

    The Federal Circuit concludes that the Patent Trial and Appeal Board erred in shifting the burden of proof on obviousness in this IPR from the petitioner to the patent owner, in In re Magnum Tools International

  • How ASEAN countries rank for IP protection

    July 25, 2016

    In the latest of our series of articles on ASEAN, Natalie Rahhal discovers that ratings for many countries in the region have improved, but important differences remain

  • USPTO issues memorandum in response to CellzDirect and Sequenom

    July 21, 2016

    The USPTO tells examiners the Federal Circuit’s CellzDirect ruling “highlighted several important points” but says its subject matter eligibility guidance and training examples are already consistent with it

  • Federal Circuit keeps 180 days’ exclusion time in patent dance

    July 20, 2016

    The Federal Circuit has provided some guidance on the issue of 180 days’ notice of launch in a recent biosimilars ruling, in Amgen v Apotex, but practitioners say there will be a lot more litigation before the patent dance is fully clarified

  • Federal Circuit’s en banc MedCo ruling clarifies on-sale bar

    July 15, 2016

    In a unanimous en banc decision in The Medicines Company v Hospira, the Federal Circuit addressed and clarified the “on sale” bar, a source of much anxiety for pharmaceutical companies

  • PTAB grants motion to amend ContentGuard patent in Google/Apple CBM

    July 14, 2016

    The Patent Trial and Appeal Board has granted a rare motion to amend, in a covered business method review that focused on the construction of the term “meta-rights”

  • PTAB grants attorneys fees for first time, to RPX

    July 13, 2016

    The Patent Trial and Appeal Board has awarded attorneys fees for the first time, ruling that Applications in Internet Time violated a protective order in its handling of RPX’s confidential information

  • Apple pays $25m to settle Network-1 patent litigation

    July 12, 2016

    Apple will pay Network-1 Technologies $25 million to settle subsidiary Mirror World Technologies’ patent litigation in the Eastern District of Texas

  • Federal Circuit reverses Section 101 invalidation of life science patent

    July 06, 2016

    The Federal Circuit has ruled that the claims of a patent for liver cell treatment were not directed to a patent-ineligible concept, in a decision that provides guidance on how life science innovations can satisfy the Mayo test

  • June is busiest month for PTAB filing of 2016

    July 06, 2016

    PTAB Data and Analysis: Managing IP reveals Patent Trial and Appeal Board filing data for June and analyses recent decisions from the Supreme Court, Federal Circuit and PTAB, including the Board interpreting Enfish in mixed rulings. The USPTO has also announced it is replacing the Patent Review Processing System for PTAB trials

  • First DTSA decision entered, as new trade secrets cases roll in

    July 01, 2016

    The Northern District of California appears to be the first federal court to enter a written decision under the Defend Trade Secrets Act. At least 15 cases have been filed under the DTSA since it was enacted

  • Bascom analysis: Is the Federal Circuit going soft on software patents?

    June 30, 2016

    The Federal Circuit has found a software patent valid for the third time since Alice, ruling in Bascom v AT&T that “an inventive concept can be found in the non-conventional and non-generic arrangement of known, conventional pieces”

  • ITC rules Arista infringed three Cisco patents

    June 28, 2016

    The International Trade Commission issued a limited exclusion order and cease and desist order for Arista infringing three patents in an investigation brought by Cisco Systems relating to ethernet switch products

  • SCOTUS stands by PTAB in Cuozzo decision

    June 22, 2016

    The US Supreme Court has affirmed the PTAB’s standard for claim construction, in what some see as a blow to patent owners. Natalie Rahhal examines the Cuozzo case

  • SCOTUS says wilfulness is subjective in Halo ruling

    June 17, 2016

    Patent owners may have a better chance of winning treble damages in US patent cases, after the Supreme Court ruled the Federal Circuit’s Seagate test was too rigid

  • Federal Circuit remands PTAB for changing theories in midstream

    June 16, 2016

    The Federal Circuit’s ruling in SAS Institute v ComplementSoft that the Patent Trial and Appeal Board was wrong to use a new claim construction without giving parties a chance to respond will have a big impact on trial and appeal practice, believe practitioners

  • PTAB invalidates two patents in first PGR final written decisions

    June 14, 2016

    The Patent Trial and Appeal Board has invalidated two livestock valuation patents in the first PGR final written decisions. Only one of the 28 PGR petitions filed so far has been denied institution, with two settled and 11 waiting an institution verdict

  • Kyle Bass IPRs end up with 57% institution success rate

    June 13, 2016

    The Patent Trial and Appeal Board’s institution decisions on all 35 of the inter partes review petitions filed by Kyle Bass and Erich Spangenberg are now in

  • Americas Women in Business Law Awards: 2016 winners

    June 10, 2016

    The best female lawyers from across the Americas congregated at Essex House last night to celebrate Euromoney Legal Media Group’s fifth annual Americas Women in Business Law Awards

  • Merck’s $200m patent damages award voided after “misconduct”

    June 09, 2016

    Northern District of California judge rules Merck forfeited its right to assert patents against Gilead because of "unclean hands" and "numerous unconscionable acts", voiding the second-largest US patent damages award of 2016 so far

  • Latest people moves in the Americas

    June 08, 2016

    Managing IP’s regular review of the latest moves and appointments in the Americas, including the appointment of a new PTAB chief judge and hires at Cozen O’Connor, Robins Kaplan, Sheppard Mullin, Perkins Coie, Honigman, DLA Piper, Hogan Lovells, Calderon & De La Sierra, and Latham & Watkins

  • Highlights from the PTAB Forum 2016

    June 08, 2016

    Managing IP rounds up interesting quotes, statistics, slides and tidbits from speakers at the PTAB Forum 2016 in New York, which included panels on Patent Trial and Appeal Board rule changes, Federal Circuit appeals, district court strategies, pharma challenges and more

  • What in-house practitioners really want

    June 07, 2016

    A new IP STARS report analyses the concerns and priorities of in-house IP practitioners, and is based on responses from more than 1,100 questionnaires. Peter Ollier introduces the themes of the research

  • PTAB passes 5,000 petition mark but 2016 filing lagging last year

    June 03, 2016

    PTAB Monthly Data: Ford filed the most PTAB petitions in May, with Versata the most-targeted patent owner. Four PGR petitions were filed, a sign that this type of petition is gaining traction

  • Dissecting the Defend Trade Secrets Act

    June 03, 2016

    Managing IP speaks to James Pooley, an advocate, and professor Eric Goldman, a critic, of the Defend Trade Secrets Act signed by President Obama last month. An increase in trade secret litigation is predicted, with at least three cases already filed under the new law

  • Protecting IP in a 3D printed future

    May 24, 2016

    3D printing might just change everything. At least John Hornick, who leads Finnegan’s 3D printing working group and wrote 3D Printing Will Rock the World, certainly thinks so. Introduced by Bracewell Giuliani’s Erin Hennessy, Hornick spoke to INTA registrants yesterday morning about the dramatic consequences he believes the proliferation of 3D printing could have for intellectual property.

  • IP3 patent buying programme launched as successor to Google’s PPP

    May 20, 2016

    Companies including Google, Facebook, IBM, Microsoft, Adobe, SAP, Ford, Honda, Hyundai, Kia Motors, Verizon, Cisco and Arris have launched the Industry Patent Program, which will be administrated by AST

  • PTAB designates five decisions as precedential

    May 19, 2016

    A total of eight Patent Trial and Appeal Board decisions have now been designated precedential. At the PTAB Forum 2016, acting PTAB chief judge Nathan Kelley provided detail on the process of approving precedential decisions

  • US Department of Justice files six IPRs

    May 19, 2016

    The Department of Justice has filed petitions at the Patent Trial and Appeal Board for the second time, targeting the patents involved in a suit brought by Discovery Patents and 3rd Eye Surveillance that seeks $1 billion in compensation from the US government

  • Software patent owners given rare boost in Federal Circuit Enfish decision

    May 17, 2016

    The Federal Circuit has found software patents valid under Alice for only the second time, in Enfish v Microsoft. The decision gives valuable ammunition for opposing a Section 101 challenge to software patent claims and may also mean the recent USPTO patent eligibility guidance needs to be updated

  • Erich Spangenberg takes Marathon role

    May 17, 2016

    Marathon Patent Group has named Erich Spangenberg as director of acquisitions, licensing and strategy. He will spend most of his time in Europe and Asia working with large corporate patent owners on monetisation opportunities

  • Medtronic’s David Ruschke appointed PTAB chief judge

    May 11, 2016

    The USPTO has announced a new chief judge of the Patent Trial and Appeal Board, after 10 months of Nathan Kelley serving as acting chief judge

  • PTAB has granted six of 118 reviewed motions to amend – study

    May 10, 2016

    A new USPTO study reveals the Patent Trial and Appeal Board (PTAB) has granted 5% of the motions to amend that it has had a chance to review and is on track to have about 50 motions filed this year, consistent with the level filed in 2013 and 2015

  • Data: PTAB filing up in April, led by HP

    May 04, 2016

    Managing IP reveals the biggest petitioners and most-targeted entities in April and year-to-date at the Patent Trial and Appeal Board. HP and Apple had a busy month, while Finjan and Nike were on the receiving end of the most petitions

  • PTAB grants sixth motion to amend

    May 03, 2016

    While granting Tire Hanger’s motion to amend, the Patent Trial and Appeal Board approved “grouping prior art references together according to their particular teachings” and “discussing only a representative few in its motion to amend”. This may provide guidance to other patent owners seeking to amend claims

  • Federal Circuit declines to change patent venue rules

    May 03, 2016

    The Federal Circuit has denied TC Heartland’s petition for a writ of mandamus that called for a change in the patent venue rules. The court said the “arguments raised regarding venue have been firmly resolved by VE Holding”

  • Reactions and predictions from Cuozzo arguments at the Supreme Court

    May 02, 2016

    PTAB observers have been analysing the comments of Supreme Court justices during the Cuozzo v Lee arguments for signs of how they will rule. Chief Justice Roberts was the biggest proponent of bringing the Board’s claim construction standard in line with district courts but other justices appeared a lot more resistant to scrapping BRI

  • ANDA patent litigation rises 68% in past two years

    April 29, 2016

    Lex Machina’s Hatch-Waxman/ANDA Report reveals a spike in case filing, as well as the biggest participants and law firms in ANDA patent litigation

  • US House passes trade secrets bill

    April 27, 2016

    The Defend Trade Secrets Act, which will create a federal civil remedy for stealing trade secrets, will now go to President Obama for signing into law after being passed in the House of Representatives 410-2

  • US Supreme Court hears Cuozzo oral arguments

    April 26, 2016

    The Supreme Court has heard oral arguments in Cuozzo Speed Technologies v Lee, the first Supreme Court case to consider an appeal of a PTAB decision

  • Apple to pay $25m to settle patent litigation with Marathon subsidiary

    April 20, 2016

    Marathon subsidiary Dynamic Advances will dismiss patent litigation with Apple related to the Siri personal assistant. Marathon may have to enter arbitration with co-plaintiff Rensselaer Polytechnic Institute, however, which it believes “unreasonably withheld its consent to the reasonable royalty rate”

  • Trade secrets bill clears US House Judiciary Committee

    April 20, 2016

    In a busy few days for trade secrets news, the House Judiciary Committee has approved a Senate-passed trade secrets bills with no changes and Indian company Tata has been hit with a $940m damages verdict in Wisconsin

  • Latest people moves in the US

    April 20, 2016

    In our regular round-up, we summarise recently-announced partner moves in the Americas, including hires by Norton Rose Fulbright, Sheppard Mullin Richter & Hampton, Mayer Brown, Reed Smith and Honigman Miller Schwartz and Cohn

  • Interview: Angela Johnson, IP litigation counsel, Hewlett Packard Enterprise

    April 19, 2016

    The California-based counsel shares her views on the state of the IP environment in the US and how professionals can contribute to improvements, particularly in the patent field

  • Analysing PTAB first-quarter petitions – filing falls to a two-year low

    April 19, 2016

    Managing IP crunches the data to reveal the busiest petitioners, patent owners, law firms, and attorneys at the Patent Trial and Appeal Board in the first three months of 2016. The quarter included some interesting petitions such as the first IPR challenging an Apple patent

  • Euromoney LMG Americas Women in Business Law Awards 2016 – shortlist announced

    April 13, 2016

  • US patent litigation plummets in first quarter

    April 08, 2016

    US patent case filing in district courts dropped in the first quarter, down 39% on the fourth quarter and 34% on the first quarter last year, according to Unified Patents. An analysis of Eastern District of Texas filing reveals a disproportionately large drop in the district

  • US trade secrets bill passed unanimously in Senate

    April 06, 2016

    The Defend Trade Secrets Act has been passed 87-0 in the US Senate. It would allow federal actions in response to the misappropriation of trade secrets, but it is not clear how big an impact it would have after some of the more controversial provisions were scaled back by a Senate committee and with the House of Representatives yet to vote on the bill

  • Analysing the PTAB’s final rule changes

    April 05, 2016

    The final rule changes to Patent Trial and Appeal Board proceedings will likely help to reduce the rate of institution of trials, especially allowing patent owners to include relevant testimonial evidence in preliminary responses. There was one surprise, however, with the USPTO dropping a proposed pilot programme

  • ITC patent reform bill introduced in House targeting trolls

    April 04, 2016

    A bill targeting patent trolls at the ITC has been introduced in Congress against a backdrop of fewer investigations in the past four years. But speakers at a recent Managing IP forum said ITC filing could pick up again

  • Fordham IP Conference Day 2 - live

    April 01, 2016

    Reports from the second and final day of this year's Fordham IP Conference. Refresh for latest updates

  • Fordham IP Conference 2016 - day 1 live!

    March 31, 2016

    Managing IP brings updates from this year's Fordham IP Conference in New York. Refresh the page for the latest reports

  • Gilead ordered to pay $200m for infringing Merck hepatitis C patents

    March 29, 2016

    Jury awards figure that is 10% of the $2 billion Merck was seeking for Gilead infringing hepatitis C treatment patents

  • “Far-reaching impacts” of Federal Circuit ruling on ANDA personal jurisdiction

    March 23, 2016

    The Federal Circuit ruling in Acorda v Mylan and AstraZeneca v Mylan gives branded pharmaceutical companies more flexibility in their choice of where to file suit against generics

  • Horacio Gutierrez takes Spotify role, and other US people moves

    March 22, 2016

    In our regular round-up, we summarise recently-announced partner and other moves in the Americas, including hires by BakerHostetler, Morrison & Foerster, Proskauer, Choate Hall & Stewart, Venable, and Morgan Lewis

  • Samsung v Apple at the US Supreme Court – the issues to watch

    March 22, 2016

    The US Supreme Court will rule on damages in design patent cases in Samsung v Apple. The debate is now set to rage at the high court over whether law developed in the 19th Century to protect items such as rugs and spoons is still suitable in the smartphone era

  • Venue Act introduced in US Senate to change patent venue law

    March 21, 2016

    Days after a Federal Circuit judge commented that changing patent case venue rules feels like “something a legislature should do”, the Venue Equity and Non-Uniformity Elimination Act has been introduced in the US Senate “to ensure that venue in patents cases is fair and proper”

  • Managing IP North America Awards 2016: The winners

    March 18, 2016

    The winners of Managing IP’s North America Awards 2016 were revealed on March 17 at a dinner at the Four Seasons in Washington DC, recognising the best intellectual property law firms, individuals and cases of the past year

  • Federal Circuit to debate patent jurisdiction in Heartland case

    March 11, 2016

    Oral arguments in In Re: TC Heartland will be heard today March 11. The case seeks to overturn the 1990 Federal Circuit case VE Holding v Johnson Gas Appliance, which gave patent owners more options on where to sue

  • International Patent Forum 2016: live updates

    March 09, 2016

    Refresh this page for the latest updates from the International Patent Forum 2016 at The Pullman St Pancras in London on March 9 and 10 (all times GMT)

  • Read this year's IP Stars patent rankings in full

    March 04, 2016

    Managing IP subscribers have full access to all IP Stars rankings, including the newly published tables of the top firms for patent work in more than 70 jurisdictions

  • Data: Top petitioners, patent owners, law firms and attorneys at the PTAB in 2015

    February 29, 2016

    Figures from Docket Navigator reveal that Apple remained by far the biggest filer of PTAB petitions in 2015 while Innovative Display Technologies was the top patent owner

  • Federal Circuit reverses $120m award in Apple v Samsung

    February 26, 2016

    The Federal Circuit reverses the Northern District of California denial of Samsung’s motions for judgment as a matter of law of non-infringement, finding the slide to unlock and autocorrect patents obvious

  • Digging deeper into 2015 US district court patent litigation figures

    February 26, 2016

    A new report from Docket Navigator reviewing 2015 patent litigation concludes that – while the number of cases filed in US district courts increased – the number of infringement accusations and the complexity of individual cases is decreasing. It also revealed the entities that filed the most cases, the top defendants and the busiest law firms

  • PTAB taking a harder line on CBM institution

    February 25, 2016

    More covered business method petitions are now being denied institution by the Patent Trial and Appeal Board than granted, with the Board seemingly narrowing what qualifies as a CBM patent

  • Supreme Court considers enhanced damages rule in Halo/Stryker arguments

    February 24, 2016

    The Supreme Court has heard oral arguments in the related cases Halo Electronics v Pulse Electronics and Stryker v Zimmer, which included debate over whether the test for enhanced damages should be changed, the court being asked to consider trolls versus pirates, and Justice Breyer raising concerns over software patents

  • Analysing the Federal Circuit’s Nike opinion on amending claims in IPRs

    February 24, 2016

    The Federal Circuit provided guidance on motions to amend in inter partes review proceedings in its recent Nike v Adidas decision. PTAB observers are hopeful it is a sign the court will be harder on the Board’s resistance to substitute claims

  • Blank Rome adds 25 Dickstein Shapiro IP lawyers, and other US people moves

    February 18, 2016

    In our regular round-up, we summarise recently-announced partner and national IP office moves in the Americas, including hires by Blank Rome, Reed Smith, Steptoe & Johnson, Haynes & Boone, Barnes & Thornburg, Orrick, Quinn Emanuel, Perkins Coie and Hogan Lovells

  • Marvell to pay CMU $750m to settle patent lawsuit

    February 17, 2016

    Court-ordered mediation ends in $750m agreement to settle the seven-year-long patent infringement lawsuit between Marvell Technology Group and Carnegie Mellon University

  • PTAB could affect VirnetX’s $626m award in win over Apple

    February 04, 2016

    A jury in the Eastern District of Texas has awarded VirnetX $626m after finding Apple had infringed four patents. The PTAB instituted inter partes reviews on the patents last October, however, the results of which could affect the district court case

  • Trade secrets bill passes US Senate Judiciary Committee

    February 03, 2016

    The US Senate Committee on the Judiciary has passed the Defend Trade Secrets Act 2016, which included amendments that were suggested in hearings in December

  • PTAB petitions in January lowest since March 2014

    February 03, 2016

    PTAB Data and Analysis: the IPR count ticked past the 4,000 mark in January, which also saw the first challenge to an Apple patent, the USPTO deeming two decisions precedential, a case showing the dangers of a motion to amend, and an ironic Federal Circuit ruling on an IPR appeal

  • Managing IP North America awards 2016 – shortlists

    February 02, 2016

    Shortlists for this year’s Managing IP North America awards have been announced. The outstanding firms and individuals in US and Canadian intellectual property will be announced during a dinner at the Four Seasons Hotel in Washington DC on March 17

  • Don’t fret over threats of proceedings for IP infringement

    January 28, 2016

    Correspondents in Australia, Canada, Germany, the UK and the US review the law and recent developments on threats of proceedings for IP infringement that are groundless or may interfere with business activity

  • Average of 11 Alice decisions each month in US federal courts

    January 27, 2016

    There have been about 11 Section 101 decision per month in US federal courts and the overall success rate has been 72.1% since the Supreme Court’s Alice v CLS Bank decision, according to an analysis by Fenwick & West’s Robert Sachs

  • Biotechnology and patentability: navigating unchartered waters in Australia and the US

    January 26, 2016

    The debate over the patentability of isolated DNA has raged around the world. Tania Obranovich compares the two Myriad decisions from the highest courts in Australia and the US and explains how the Australian decision has called into question what had long been thought of as a fundamental pillar of Australian patent law

  • Sliding doors at the ITC: Is direct infringement of method claims a basis for relief?

    January 26, 2016

    In recent years, the ITC and Federal Circuit slowly closed the door on the assertion of method claims at the ITC. The Suprema decision reversed the trend, but may have opened the door wide enough for direct infringement claims to again pass through, argue John Haynes and Adam D Swain

  • Report reveals top reasons for resolution of PTAB proceedings

    January 22, 2016

    A Patent Trial and Appeal Board report from Lex Machina analyses the most common trial resolutions and the busiest administrative patent judges

  • The issues to watch in Cuozzo at the US Supreme Court

    January 21, 2016

    The Supreme Court in Cuozzo could scrap the PTAB’s use of the broadest reasonable interpretation in IPRs. But its ruling on the less-publicised question of whether institution decisions are unreviewable could have a bigger effect. In the meantime, petitioners and patent owners will have to adjust their PTAB strategies to guard against uncertainty

  • Federal Circuit rules same PTAB panel can institute and decide an IPR

    January 14, 2016

    The Federal Circuit has ruled that the same PTAB panel that institutes an inter partes review can also issue the final written decision, in Ethicon Endo-Surgery v Covidien. Judge Newman dissented, noting the statute requires institution to be made by the USPTO director and the final decision by the Board

  • USPTO appoints Rocky Mountain director, and other US people moves

    January 14, 2016

    In our regular round-up, we summarise recently-announced partner and national IP office moves in the Americas, including hires by the USPTO, Pryor Cashman, AIPLA, Orrick, Mayer Brown, Perkins Coie and Baker McKenzie, as well as two law firm mergers

  • US patent grants fall for first time since 2007

    January 13, 2016

    IBM remained the top US patent recipient in 2015, but it was the first year since 2007 in which overall patent activity fell, according to analysis released by IFI Claims Patent Services. IFI also identified an increasing trend of companies choosing to spread their portfolios across multiple entities

  • TXED approves another 101 motion against multiple patent suit filer

    January 07, 2016

    Judge John Love of the Eastern District of Texas has recommended granting a Section 101 motion against plaintiff Rothschild Location Technologies, which filed 33 patent cases in the district in 2015

  • US patent litigation up 15% in 2015, with NPEs increasing share

    January 06, 2016

    US patent case filing in district courts was the second-highest ever in 2015, with one study suggesting that non-practicing entities increased their percentage of cases filed to 69% from 61% in 2014

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