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Amazon’s Utility Patent Neutral Evaluation Proceeding: Let the Seller Beware
March 22, 2022 | Blog | By Michael Graif , Matthew Hurley
Speed and efficiency have long been Amazon’s hallmarks, and its dispute resolution system for patent infringement claims is no exception. Amazon’s Utility Patent Neutral Evaluation (“UPNE”) proceeding is quickly emerging as an efficient and powerful dispute resolution tool, especially in the consumer goods industry, where sellers rely on Amazon for a significant portion of their sales. So efficient, in fact, that sellers who have either ignored or not taken a UPNE seriously have found their products suddenly banned from Amazon’s website, leaving them with no recourse other than to file a declaratory judgment action in federal court and request relief that is typically far from quick or certain.
Avoiding Unforced Tech DI Errors at the ITC
March 11, 2022 | Blog | By Jonathan Engler, Michael Renaud
The key to success as a Complainant in the ITC is careful preparation, long before the complaint is filed. Nowhere is this more important than in preparing and planning a Complainant’s domestic industry case. The so-called “technical prong” of the domestic industry requirement is a much more common point of failure for ITC complainants than the “economic prong.” The “technical prong” requirement is essentially the same as for infringement: an ITC complainant must “show that there is a domestic industry product that actually practices” at least one claim of the asserted patent. Microsoft, 731 F.3d 1354 at 1361. (Fed. Cir. 2013). It is unfortunately not uncommon at the ITC for Complainants to prepare meticulous infringement proofs for the accused products but then to fail to show that the domestic industry products practice a claim of the asserted patents.
Open Question: Use of Stolen Trade Secrets May or May Not Qualify as a Predicate Act Under RICO
March 10, 2022 | Blog | By Adam Samansky, Michael McNamara, Nicholas Armington , Oliver Ennis
Since the passage of the Defend Trade Secrets Act (DTSA), trade secret owners have been able to use allegations of trade secret misappropriation under the DTSA to support civil claims under the Racketeer Influence and Corrupt Organizations Act (RICO). Specifically, DTSA violations that qualify as predicate acts can be used to show a pattern of racketeering activity, which may allow a trade secret owner to state civil claims under RICO, and thus take advantage of the substantial remedies that the RICO statute provides, including the potential for treble damages and attorney’s fees.
Expert Patent Damages Opinions Hit the Spotlight as Federal Circuit Scuttles Two Patent Infringement Verdicts Worth $1.2 Billion in One Day
March 9, 2022 | Blog | By Andrew DeVoogd, James Thomson
No Harm, No Foul, and No Standing for Would-be SEP Implementer: 5th Circuit Changes Narrative on Patent “Hold Up”
March 3, 2022 | Blog | By Daniel Weinger, Michael Renaud, Bruce Sokler, James Thomson
Patent Owner Tips for Avoiding IPR Institution
March 1, 2022 | Blog | By William Meunier , Michael Renaud, Brad M Scheller
Plaintiff Can Assert Patent Infringement and Seek Injunctive Relief in Second-Phase BPCIA Litigation Per Illinois District Court Decision
February 24, 2022 | Blog | By Adam Samansky, Joe Rutkowski, Tianyi Tan
A Business Deal Could Kill Your Right to Challenge a Patent’s Validity
February 22, 2022 | Blog | By William Meunier , Peter Cuomo, Marguerite McConihe, Sean Casey
EXCLUSIVE RIGHTS: Intellectual Property — Domestic Industry at the ITC – The Commission Has Set a Positive Trend
February 18, 2022 | Podcast | By Daniel Weinger, Jonathan Engler
D. Del. Says ANDA Specification Trumps All Else in Infringement Analysis
February 17, 2022 | Blog | By Peter Cuomo, Adam Samansky, Joe Rutkowski, Tianyi Tan
Keep Out: Uniloc Gets Second Chance to Seal Licensing Documents
February 16, 2022 | Blog | By Daniel Weinger, Robert Sweeney
Benefits of and Best Practices for Protecting Artificial Intelligence and Machine Learning Inventions as Trade Secrets
February 10, 2022 | Blog | By Marguerite McConihe, Meena Seralathan
California District Court Sides with Majority Position, Dismissing Willful and Induced Infringement Claims that Relied on Original Complaint for Knowledge of Asserted Patent
February 8, 2022 | Blog | By Adam Samansky, Peter Cuomo, Joe Rutkowski
Strengthen Software Claims Against Alice Challenges through Coined Terms and Depicting Technical Advantages in Figures
February 4, 2022 | Blog | By Daniel Weinger, Mark Hammond, Matthew Karambelas
Prior Daubert Orders and Discovery Lessons Out of N.D. Cal.
February 4, 2022 | Blog | By Peter Snell, Robert Sweeney
A recent order from the Northern District of California in Edwards Lifesciences Corp. v. Meril Life Sciences Pvt. Ltd., No. 19-cv-06593 (Jan. 27, 2022) (“Edwards”), provides guidance regarding the ability (or inability) to use a prior Daubert ruling to discredit an expert witness at trial when such a ruling arose within the context of a different case. In addition, the order highlights a pitfall that can arise when an opposing party produces deficient damages-related discovery but is not pressed to supplement its discovery through a motion to compel.
Domestic Industry Alive and Well at ITC; Important New Opinion Continues Trend
February 1, 2022 | Blog | By Jonathan Engler, Marguerite McConihe, Michael Renaud
Trade Secret Misappropriation Not Sufficiently Plead Where Defendant Possessed but did Not Threaten to Disclose Trade Secret Information in Southern District of New York Case
January 25, 2022 | Blog | By Adam Samansky, Nicholas Armington
Written Description Requirement Challenges: Federal Circuit Decision Sheds Light on How Expert Testimony Can Help
January 21, 2022 | Blog | By Brad M Scheller , Meena Seralathan
USPTO’s New Deferred Subject Matter Eligibility Response Pilot Program
January 21, 2022 | Blog | By Brad M Scheller , Meena Seralathan
Entire Market Value Rule Strikes Again in WDTX
January 19, 2022 | Blog | By Brad M Scheller , Marguerite McConihe, Robert Sweeney
On January 3, 2022, Magistrate Judge Susan Hightower granted a defendant’s motion to exclude an expert’s damages theory for violating the entire market value rule, reminding plaintiffs everywhere to use caution when applying the sales of an entire product as a royalty base.
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