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Cease-and-desist letters, and less aggressive notice letters, can serve several purposes for patent owners. Among other things, they can open licensing negotiations, serve as warnings to competitors, create notice for [...]

Attorneys often are surprised to learn that the Patent Trial and Appeal Board (Board) views itself as having discretion to deny institution of any petition for inter partes review in [...]

With the addition of appeals from the last four-and-a-half-years of Patent Trial and Appeals Board trials (inter partes review, post grant review, and covered business method review) (PTAB trials), Federal [...]

Jason Stach is a partner at Finnegan in Atlanta, GA. He leads Finnegan's PTAB trials practice and focuses on litigation and contentious proceedings before the Patent Office. He can be [...]

In enacting the Leahy-Smith America Invents Act (AIA), Congress sought to "establish a more efficient and streamlined patent system that [would] improve patent quality and limit unnecessary and counterproductive litigation [...]

The Patent Trial and Appeal Board (PTAB) is the busiest patent tribunal in the United States, with parties flocking to take advantage of post-grant patent review mechanisms such as inter [...]

The recently implemented America Invents Act provides several tools for challenging the validity of patent. One of those tools is the Transitional Program for Covered Business Method Patents, which provides [...]

The recent en banc Federal Circuit decision in Williamson v. Citrix Online, LLC could change how courts interpret an entire class of patent claim features. The Williamson court held that [...]

Patent litigators today need to understand the interplay between litigation in court and related invalidity proceedings at the US Patent and Trademark Office (PTO), such as inter partes reviews, covered [...]

Electric vehicle manufacturer Tesla Motors recently announced on its blog that it "will not initiate patent lawsuits against anyone who, in good faith, wants to use our technology." [http://www.teslamotors.com/ blog/all-our-patent-are-belong-you [...]

Coming changes in Europe will have a dramatic impact on how attorneys manage global patent portfolios and litigation. Global patent enforcement efforts are challenging due to the differences in patent [...]

Federal law is the primary source of authority most intellectual-property attorneys face, but state law can provide powerful remedies to complement federal law. In the patent arena, state lawmakers have [...]

In recent years, written opinions of counsel have simultaneously become less necessary and more valuable. Gone is the adverse inference for failing to obtain or disclose a competent opinion, but [...]

A district court judgment has limited value if it cannot be upheld on appeal, but parties often focus so completely on winning in the district court that they lose sight [...]

District Court or the PTO: Choosing Where to Litigate Patent Invalidity A defendant in patent litigation should decide early whether to challenge patent validity in the district court or at [...]

US Patent Office statistics show that the Patent Trial and Appeal Board (PTAB) cancels only about 10 percent of the claims in patents challenged in inter partes review. (1) Meanwhile, [...]

The Supreme Court granted certiorari in Cuozzo Speed Technologies, LLC v. Lee to consider the hotly-debated question of whether the Patent Trial and Appeal Board (PTAB) should use the same [...]

On December 1, 2015, with Congress's consent the Supreme Court amended the Federal Rules of Civil Procedure (FRCP). [Memorandum from Hon. John G. Roberts to Hon. John A. Boehner at [...]

For the last three years, America Invents Act (AIA) trials before the Patent Trial and Appeal Board (Board) have been effective tools for challenging the validity of issued patents. During [...]

In its unanimous Alice Corp. v. CLS Bank [Alice Corp. v. CLS Bank Int'l, 134 S. Ct. 2347 (2014)] decision last year, the Supreme Court found that claims for a [...]

In September 2014, the Judicial Conference of the United States approved several amendments to the Federal Rules of Civil Procedure (FRCP). These amendments seek to "improve early and active case [...]

Time to Stop Thinking about Secondary Considerations as Secondary The storyteller in every litigator loves telling a judge, jury, and nearly anyone else who will listen about how great a [...]

The article discusses the role of inter partes reviews (IPR), in the implementation of Leahy-Smith America Invents Act (AIA) which aims to improve patent quality along with limiting counterproductive and unnecessary litigation costs. Topics discussed include status of the district court litigation in relation to the progression of a litigation action, simplification of the issue for the trial by IPR, and undue prejudice or a clear tactical advantage in case of filing the IPR petition.

The article discusses the effects of the case Williamson v. Citrix Online, LLC tried by the en banc Federal Circuit on the patent claim features. It mentions that the case has an effect on the use of language that is considered in the means-plus-function treatment. It cites the benefits of the case in terms of computer readable medium claims and computer-based technology.

The article examines the implications of the non-assertion pledge made by electric vehicle manufacturer Tesla Motors pertaining to its patent. Topics discussed include the non-assertion pledges made by Volvo and General Motors, the rationale for the decision in relation to the enormity of the market, and the advantages that can be created by the pledge in terms of charging infrastructure, its gigafactory for global lithium ion battery, increased media coverage, and increased stock price.

The article reports on the impending creation of the European Union Unified Patent Court (UPC), which will offer a unified set of laws that should simplify patent litigation and give attorneys new options, as of February 2015. Topics discussed include the varying patent systems in Europe, and the UPC's aim of offering a lower cost alternative to patents currently issued by the European Patent Office (EPO). Also noted is UPC's facilitation of easier coordination of litigation strategies.

The article compares the litigation performance of district courts with the U.S. Patent and Trademark Office (PTO) as to patent invalidity cases. Topics discussed include factors to consider when choosing between court and PTO including time of decision, cost, issues to consider, discovery, burden of proof, claim construction and ability to amend claims. Data shows that PTO litigation is faster but it remains to be seen whether its challenger success rate can top that of the district courts.

The article focuses on amendment to the U.S. Federal Rules of Civil Procedure (FRCP) with the U.S. Congress' consent by the U.S. Supreme Court and effect of proportionality factors on the amended FRCP. Topics discussed include scope of discovery in which parties may obtain discovery of non-privileged matter proportional to the case, ordering of discovery of relevant matter by the court, and collective responsibility of the parties and the court for considering proportionality of all discovery.