Forum Selection Clause Can Preclude PTO Validity Challenges

By James Gatto on March 9, 2022 Posted in Patents

In Nippon Shinyaku v. Sarepta Therapeutics, the Federal Circuit held that a forum selection clause specifying that patent infringement or invalidity actions shall be filed in federal district court in Delaware made clear that any validity challenge was required to be brought in that court and that Sarepta’s IPR petitions filed with the Patent Trial and Appeal (“the Board”) contravened the plain language of the forum selection clause. Continue Reading

Recent Expansion of IPR Estoppel Scope Viewed As Victory for Patent Owners

By Zijian Han and Martin Bader on February 28, 2022 Posted in Patents

UPDATE: On Feb. 22, 2022, the Federal Circuit issued an errata to the original decision clarifying that the IPR estoppel only applies to challenged claims. The corrected language reads, in relevant part, that “estoppel applies […] to all grounds not stated in the petition but which reasonably could have been asserted against the claims included in the petition.” This errata alleviated concerns that the ruling might be interpreted to extend IPR estoppel to unchallenged claims.

USPTO’s Pilot Program for Deferring Subject Matter Eligibility Response

By Jing Zheng, Yunlai Zha and Will Chen on January 24, 2022 Posted in Patents

Introduction

On January 6, 2022, the U.S. Patent and Trademark Office (USPTO) announced a Deferred Subject Matter Eligibility Response Pilot Program (the “DSMER Program”). We provide a brief overview of this program.

Benefits and Considerations for Patent Prosecution Under Patent Prosecution Highway in Australia, Canada, South Korea, and Japan

By Charles Huang, Jing Zheng, Victor Feng, Allen Pu and Will Chen on December 20, 2021 Posted in Patents

I. Introduction

This is the second article of the multi-part series discussing benefits of prosecuting patents under Patent Prosecution Highway or PPH. The first article can be accessed here. To recap, PPH is a set of initiatives promulgated by participating patent offices around the world to accelerate patent prosecution in countries of the participating patent offices. PPH allows participating patent offices to share information and to benefit from work performed by other participating patent offices, thereby reducing examination workload and improving quality of patents. Interested readers are invited to read the first article through the link provided.

Historic $130m+ Patent Infringement Award Against the United States of America

By Bradley Graveline, Laura Burson and Kazim Naqvi on December 1, 2021 Posted in IP and Technology Transactions, Patents, Tech Licensing

A Sheppard Mullin trial team led by partners Brad Graveline and Laura Burson obtained one of the largest patent infringement damages awards against the United States of America for client SecurityPoint Holdings, Inc (SecurityPoint). Sheppard Mullin partner Don Pelto and associates Kazim Naqvi, Rebecca Mackin, and Tom Carr were also key members of the trial team. In addition, the Sheppard Mullin team included trial specialist Stephanie Limbaugh and legal assistants Dori Dellisanti and Ann Castro.

Benefits and Considerations for Patent Prosecution under Patent Prosecution Highway in the U.S., Europe, China, and Singapore

By Charles Huang, Jing Zheng, Victor Feng, Allen Pu and Will Chen on November 22, 2021 Posted in Patents

I. Introduction

Patent Prosecution Highway or PPH is a set of initiatives promulgated by participating patent offices around the world to accelerate patent prosecution in countries of the participating patent offices. PPH allows the participating patent offices to share information and to benefit from work performed by other participating patent offices, and thereby reducing examination workload and improving quality of patents.

Under PPH, prosecution of a patent application previously filed with a participating patent office can be fast-tracked in another participating patent office if the patent application meets certain requirements. This article provides a brief overview of benefits of filing patent applications under PPH and requirements by which the patent applications must satisfy in order to participate in PPH.

Stakeholders Should Not Miss Congress’s Invitation For Feedback On Patent Eligibility

By Siraj Husain on October 8, 2021 Posted in Patents

This post originally appeared as an article (“Stakeholders Should Not Miss Congress’s Invitation for Feedback on Patent Eligibility”) on Law.com on October 7, 2021.

NFT License Breakdown: Exploring Different Marketplaces and Associated License Issues

By James Gatto and Molly Tomer* on September 20, 2021 Posted in Blockchain, Tech Licensing

At least three different types of marketplaces facilitate the sale and/or resale of NFTs. These include open marketplaces, curated marketplaces and proprietary marketplaces. Other variations do exist, however, and it is likely that other alternatives will be developed. In the attached article, we examine some of the differences between these types of marketplaces and business models, highlight some of the varying license terms of these marketplaces and discuss why IP owners who license their IP for NFTs often are best served by developing their own licenses to be used in connection with sale of their NFTs.

Artificial Intelligence And Subject Matter Eligibility In U.S. Patent Office Appeals – Part Three Of Three

By Jim Soong on September 8, 2021 Posted in IP and Technology Transactions, Patents, Trademarks and Trade Dress

Note: First published in The Intellectual Property Strategist and Law.com.

This article is Part Three of a Three-Part Article Series

Artificial intelligence is changing industry and society, and metrics at the US Patent and Trademark Office (USPTO) reflect its impact. In a recent publication, the USPTO indicated that from 2002 to 2018 the share of all patent applications relating to artificial intelligence grew from 9% to approximately 16%. See “Inventing AI, Tracing the diffusion of artificial intelligence with U.S. patents,” Office of the Chief Economist, IP Data Highlights (October 2020). For the foreseeable future, patent applications involving artificial intelligence technologies, including machine learning, will increase with the continued proliferation of such technologies. However, subject matter eligibility can be a significant challenge in securing patents on artificial intelligence and machine learning.

Artificial Intelligence And Subject Matter Eligibility In U.S. Patent Office Appeals – Part Two Of Three

By Jim Soong on September 1, 2021 Posted in IP and Technology Transactions, Patents, Trademarks and Trade Dress

Note: First published in The Intellectual Property Strategist and Law.com.

This article is Part Two of a Three-Part Article Series

By scrolling this page, clicking a link or continuing to browse our website, you consent to our use of cookies as described in our Cookie and Advertising Policy. If you do not wish to accept cookies from our website, or would like to stop cookies being stored on your device in the future, you can find out more and adjust your preferences here.

Agree