Supreme Court to Decide Multiple IP Issues This Term

 By Taryn J. Gallup and David G. Barker On October 26, 2018, the Supreme Court of the United States (“SCOTUS”) granted certiorari in two IP cases.  In Mission Product Holdings, Inc. v. Tempnology, LLC, SCOTUS will address a circuit split on the effect bankruptcy has on trademark license rights.  In Return Mail, Inc. v. U.S. Postal Service, et al., SCOTUS will address whether the government may challenge patents as a “person” under the America Invents Act (“AIA”). In Mission Product Holdings, Tempnology, LLC (“Tempnology”) filed for Chapter 11 bankruptcy protection and cancelled a trademark licensing agreement that it had with   Read More »

Posted in IP and Technology Litigation, Patent Litigation, Trademark Litigation | Tagged , , , , ,

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Supreme Court Uproots Current PTAB Practice by Quashing Partial Decisions

By Trisha Farmer Lau and David G. Barker On April 24, 2018, in SAS Institute, Inc. v. Iancu, the Supreme Court held that the Patent Trial and Appeal Board (“PTAB”) must decide the validity of every patent claim challenged when it undertakes inter partes review under the America Invents Act (“AIA”).  In a 5-4 decision, the Court ruled in favor of SAS Institute, Inc., a software developer that filed an inter partes review petition and argued that the PTAB’s final decision must address all challenged claims in the petition. Before this decision, a U.S. Patent and Trademark Office regulation, 37   Read More »

Posted in Inter Partes Review, IP and Technology Litigation, Patent Litigation | Tagged , , , ,

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Supreme Court Confirms Inter Partes Review Is Constitutional

By Jacob C. Jones and David G. Barker In Oil States Energy Services, LLC v. Greene’s Energy Group, LLC, the United States Supreme Court held today, in a 7-2 decision, that the inter partes review process under the America Invents Act (AIA), 35 U.S.C. § 100 et seq. (2011), does not violate Article III or the Seventh Amendment of the U.S. Constitution. As we noted previously, inter partes review is a popular administrative proceeding where the Patent Trial and Appeal Board (PTAB; part of the United States Patent and Trademark Office) decides whether challenged patents are valid.  As of March   Read More »

Posted in Inter Partes Review, IP and Technology Litigation, Patent Litigation, Post Grant Proceedings | Tagged , , , , , ,

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Supreme Court to Consider Constitutionality of AIA Inter Partes Review Proceedings

By Rachael Peters Pugel and Andrew F. Halaby The Supreme Court has granted a writ of certiorari challenging the constitutionality of inter partes review proceedings conducted by the United States Patent and Trademark Office under the America Invents Act.  The Court’s ruling in this matter, especially if it holds inter partes reviews to be unconstitutional, could massively destabilize the patent law system by casting into doubt an administrative regime that has diverted thousands of patent disputes from the federal court system, as well as the many hundreds of decisions invalidating patent claims so far yielded by that regime. Post-issuance proceedings   Read More »

Posted in Inter Partes Review, IP and Technology Litigation, Patent Litigation, Post Grant Proceedings | Tagged , , , , ,

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Supreme Court to Address IPR Proceedings & Willful Infringement

The Supreme Court will continue to shape patent law in 2016, addressing critical components of the widely-popular Inter Partes Review (IPR) proceedings before the Patent Trial and Appeal Board, and examining the standard for willful patent infringement in district court actions. IPR proceedings provide a streamlined avenue for invalidating issued patents.  In the first two years of their existence, over 4,000 IPR proceedings have been filed, with the majority leading to invalidation of one or more patent claims.  The Supreme Court has now granted a writ of certiorari in its first IPR case, Cuozzo Speed Technologies v. Lee.  The Court   Read More »

Posted in Patent Litigation, Post Grant Proceedings | Tagged , , ,

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