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Martin Bader

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Martin Bader is a partner in the Intellectual Property Practice Group in the firm's San Diego (Del Mar) office.

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On June 22, 2023, Senators Chris Coons (D-DE) and Thom Tillis (R-NC) introduced the Patent Eligibility Restoration Act of 2023, which seeks to clarify the jurisprudence surrounding 35 U.S.C. § 101. The current patent eligibility requirements under Section 101 have been evolving by judicially-created exceptions stemming from the Supreme Court’s rulings in Alice and Mayo, and numerous Federal Circuit decisions that have interpreted the Alice and Mayo framework. Those opinions have, on occasion, appeared to provide inconsistent guidance that has led to continued confusion regarding section 101’s application.Continue Reading Senators Propose New Legislation to Clarify Patent Eligibility Under 35 U.S.C. § 101

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

In Fiscal Year 2015, the Patent Trial and Appeal Board (“PTAB”) instituted inter partes reviews (“IPR”) on approximately 68% of petitions filed.  Overcoming these odds, the PTAB recently instituted 17 out of 17 IPRs filed by Sheppard Mullin on behalf of TCL Communication Technology Holdings, LTD.  Not only was this a 100% institution rate, but also the institutions resulted in the Eastern District of Texas staying a patent infringement case less than three weeks before trial.
Continue Reading Patent Trial & Appeal Board Institutes 17 Inter Partes Reviews for TCL Communication Technology Holdings, LTD.

On March 23, 2016, the Federal Circuit addressed the scope of the estoppel provision for inter partes reviews (“IPRs”) contained in Section 315 of the American Invents Act.  The Court relied on the plain reading of “during” to find that § 315(e) actually prohibits future estoppel on grounds for which an IPR was sought, but rejected—even if merely based on redundancy Shaw Industries Group, Inc. v. Automated Creel Systems, Inc., 2015-1116 (“Slip Op.”).
Continue Reading Federal Circuit Limits Estoppel Provision of the AIA

In a recent decision, Versata Software, Inc. v. Callidus Software, Inc., No. 2014-1468 (Fed. Cir. Nov. 20, 2014), the Federal Circuit ordered the District of Delaware to stay district court litigation pending a covered business method (CBM) review, reversing the district court’s decision to deny the accused infringer’s motion to stay.  In reversing the district court’s decision, the Federal Circuit sharply criticized what it perceived as the district court’s categorical rule that a failure to challenge all asserted claims in the CBM proceeding disfavors a stay.
Continue Reading Versata Software, Inc. v. Callidus Software, Inc.: Guidance on Stays Pending Post-Issuance Proceedings

On October 1, 2013, the United States Supreme Court agreed to review the “exceptional” case  standard for awarding attorneys’ fees in two separate patent-infringement cases.  Both cases relate to patentees who are non-practicing entities.  The outcome of these cases could potentially deter patent cases brought by non-practicing entities, as prevailing defendants may have an easier time obtaining attorneys’ fees.
Continue Reading United States Supreme Court Agrees to Hear Two Cases That Could Potentially Deter Non-Practicing Entities From Filing Frivolous Suits

Today, the Federal Circuit upheld the District Court’s inequitable conduct verdict based on the submission of false affidavits to the United States Patent & Trademark Office (“PTO”).  Intellect Wireless, Inc. v. HTC Corp., 2012-1658.  In its precedential opinion, the Federal Circuit (Moore*, Prost, & O’Malley) handed down its first decision that affirmed a finding of materiality under the exception to the “but for” standard created in its pioneering opinion in Therasense, Inc. v. Becton, Dickinson & Co., 649 F.3d 1276 (Fed. Cir. 2011) (en banc).  The Federal Circuit also stated that the submission of a false declaration to the PTO alone can be enough to show intent to deceive under the “single most reasonable inference” standard.  Further, thirty years after it decided Rohm & Haas Co. v. Crystal Chem. Co., 722 F.2d 1556 (Fed. Cir. 1983), the Federal Circuit affirmed that it remains the framework for curing inequitable conduct before the PTO.Continue Reading Federal Circuit Affirms Inequitable Conduct Determination Under Therasense “But For” Exception and Reaffirms Significance of Rohm & Haas