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
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 →
Jun
05
Cancellation of Patent Claims through Reexamination Insufficient to Mount Collateral Attack on Multimillion-Dollar Jury Verdict by Caitlin E. Olwell, Matthew George Hartman & Rubén H. Muñoz District Court, Reexamination Proceedings, Eastern District of Texas Mar. 02, 2020 Judge Gilstrap in the Eastern District of Texas has denied defendants’ motion to... read more →
Jun
05
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 blog written by Dennis Crouch – www.patentlyo.com. ▪ On March 25, 2020, Professor Crouch discussed the combination of the transitional... read more →
Apr
06
Examiner Amendments Can Trigger Prosecution History Estoppel In Amgen, Inc. v. Amneal Pharms. LLC, Appeal No. 18-2414, the Federal Circuit held that an examiner amendment may give rise to prosecution history estoppel, even when the examiner suggests the amendment in the absence of a pending office action. Amgen sued multiple... read more →