Non-Disclosure Agreement Controls Ownership of Patents Arising From Confidential Information Received Thereunder In Sionyx LLC v. Hamamatsu Photonics K.K., Appeal No. 19-2359, the Federal Circuit held that a party who discloses confidential information pursuant to an NDA may be entitled to ownership of U.S. and foreign patents filed by the... read more →
Mar
14
Mar
14
Patent Owner Granted Leave in IPR to Seek Correction of Claims Held Indefinite in Parallel District Court Litigation by Rubén H. Muñoz, Akin Gump Strauss Hauer & Feld LLP Patent Trial and Appeal Board, District Court, Inter Partes Review January 29, 2021 The Patent Trial and Appeal Board... read more →
Mar
14
by Frederic M. Douglas and James E. Hawes This column highlights some of the more notable recent online notices, newsletters, and blogs dealing with IP prosecution issues. Patently-O – a patent law blog – Patentlyo.com ▪ On September 28, 2020, David Hricik discussed the USPTO’s proposal for voluntary CLE for... read more →
Dec
28
Government’s Pre-Litigation Conduct Cannot Justify a Court of Claims Fee Award In Fastship, Llc V. Us., Appeal No. 19-2360, A Court of Claims fee award under 28 U.S.C. § 1498(a), turns on whether the government’s litigation conduct was substantially justified without regard to its pre-litigation conduct. The Court of Claims... read more →
Dec
28
Strength of Objective Indicia from Prior Litigation Overcomes Strong Obviousness Challenge in IPR by Andy Rosbrook, Matthew George Hartman & Rubén H. Muñoz Patent Trial and Appeal Board, Inter Partes Review, Obviousness Aug. 19, 2020 In a recent inter partes review (IPR), a patent owner overcame a facially persuasive obviousness... read more →
Dec
28
by Frederic M. Douglas and James E. Hawes This column highlights some of the more notable recent online notices, newsletters, and blogs dealing with IP prosecution issues. Patently-O – a patent law blog – Patentlyo.com ▪ On August 12, 2020, Prof. Dennis Crouch discussed a claim construction case considering whether a... read more →
Nov
05
The Orange County Intellectual Property Law Association (OCIPLA) is currently accepting nominations for a first-year board member. To be considered, or to nominate a potential candidate, please email the OCIPLA Board of Directors at ocipla_board@ocipla.org. A non-profit organization founded in 1983, OCIPLA’s diverse membership includes intellectual property law practitioners, business... read more →
Sep
27
by Frederic M. Douglas and James E. Hawes This column highlights some of the more notable recent online notices, newsletters, and blogs dealing with IP prosecution issues. IPWatchdog – a patent law blog – IPwatchdog.com ▪ On May 24, 2020, Susan Russell and Paula Estrada de Martin posted an article... read more →
Sep
27
$5 Million Attorneys’ Fee Award Affirmed Because Government’s Litigation Position Not Substantially Justified In HITKANSUT LLC V. UNITED STATES, Appeal No. 19-1884, the Federal Circuit held that fee-shifting under 28 U.S.C. § 1498(a) turns on whether “the position of the United States was substantially justified.” The relevant inquiry is the government’s... read more →
Jun
06
Attorneys and Clients Behaving Badly – Deliberately Withheld Offer for Sale Is Inequitable Conduct In Gs Cleantech Corp. v. Adkins Energy LLC, Appeal No. 16-2231,withholding and obscuring evidence of a pre-critical date offer for sale rendered a patent unenforceable for inequitable conduct. On August 1, 2003, CleanTech sent Agri-Energy a... read more →