Federal Circuit: Post-Employment Assignment Clause Void Under California Law Federal Circuit No New Trial for Improper "Pennies on the Dollar" Rhetoric
January 01, 2021Joshua R. Stein and Jeff Ginsberg
Patent infringement disputes in the United States are not only heard in district courts. The U.S. International Trade Commission (ITC) also decides high-stakes intellectual property disputes — with the remedy for the IP rights holder not being damages, but rather an exclusion order that can block a competitor's importation of infringing articles into the U.S. That remedy can be incredibly powerful for companies engaged in stiff competition in the U.S. market.
November 01, 2020Robert MaierFederal Circuit: HP Not Estopped from Challenging Claims Deemed Unchallengeable in IPR That It Had Joined Federal Circuit: A New Process Does Not Transform an Old Product Into a New One
November 01, 2020Jeff Ginsberg and George SoussouThis article discusses the significant contrast between consideration of issues related to the U.S. Supreme Court's decision in Alice Corp. v. CLS Int'l in prosecution and their resolution by the PTAB.
October 01, 2020James W. SoongFederal Circuit: ITC Did Not Err in Denying Non-Respondent's Petition to Rescind Exclusion Order Based on Invalidity Grounds Federal Circuit: District Court Did Not Err in Ruling that 'Half-Liquid' Is Indefinite Federal Circuit: District Court Did Not Err In Allowing Jury to Determine Infringement Based on Products' Compliance with Standard
September 01, 2020Jeff Ginsberg and Abhishek BapnaAs consumer surveys become increasingly common forms of evidence in matters involving copyright, patent or trademark infringement, so too do Daubert challenges that attempt to disqualify that evidence. However, getting admitted into court is no guarantee of success — you are not over the entire Daubert hurdle just yet. The next step is ensuring that your survey is convincing the fact finders that your survey's results are dependable and useful.
August 01, 2020Rene Befurt, Marie Warchol and Anthony NasrFederal Circuit: Faulty Claim Construction Does Not End Patentability Determination Federal Circuit: Notice to Market Bio Product Not Negated By New Applications
August 01, 2020Howard Shire and Shaleen PatelOn May 27, 2020 the U.S. Patent and Trademark Office (USPTO) proposed rule changes to govern inter partes review (IPR), post-grant review (PGR), and covered business method (CBM) review proceedings at the PTAB. This article provides a summary of each proposed rule change and its potential impact on PTAB practice.
July 01, 2020Kerry S. Taylor and Nathanael R. LumanFederal Circuit Finds Preamble Not Limiting and Claims Reciting Means-Plus-Function Limitations Without Disclosure of Corresponding Structures Cannot Be Determined Unpatentable as Indefinite in an IPR Proceeding Federal Circuit Finds That District Court Correctly Applied the Disclosure-Dedication Doctrine In Granting a Motion for Judgment of Non-Infringement on the Pleadings
July 01, 2020Jeff Ginsberg and Zhiqiang LiuHolding that the parties' executed agreement mooted the issues in the case, the Federal Circuit recently reversed a district court's decision to grant summary judgment of non-infringement despite the parties' agreement. The decision builds upon prior Federal Circuit case law giving effect to settlement agreements.
June 01, 2020Rudy Kim and Chris Han
