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Theo Mayer

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Theo Mayer is an associate in the Intellectual Property Practice Group in the firm's San Diego (Del Mar) office.

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This case addresses the “skilled and diligent searcher” standard used for establishing Inter Partes Review (“IPR”) estoppel (or lack thereof). In particular, this case establishes: (1) which party bears the burden of proof regarding whether a “skilled and diligent searcher” could have reasonably been expected to discover prior art such that failure to include it in an IPR petition estops the petitioner from raising it in other civil actions under 35 U.S.C. § 315(e)(2); and (2) the “skilled and diligent searcher” inquiry itself with respect to what a skilled and diligent searcher reasonably would have been expected to discover.…

Continue Reading Ironburg Inventions Ltd. v. Valve Corp. 21-2296 (Fed. Cir. Apr. 3, 2023)

We are excited to share Sheppard Mullin’s inaugural quarterly report on key Federal Circuit decisions. The Spring 2023 Quarterly Report provides summaries of most key patent law-related decisions from January 1, 2023 to March 31, 2023.…

Continue Reading 2023 Federal Circuit Case Summaries

On September 22, 2022, the U.S. Patent and Trademark Office (USPTO) conducted a live meeting for its Artificial Intelligence (AI) and Emerging Technologies (ET) Partnership Series. During this meeting, panelists from industry and the USPTO provided helpful tips on drafting and prosecuting patent applications that include AI components, including special tips for the biotech industry. Key takeaways from the meeting and published materials will be summarized in our Three-Part Blog Series.…

Continue Reading Takeaways From the U.S. Patent and Trademark Office’s Artificial Intelligence and Emerging Technologies Partnership Series – Part Two of Three

On September 22, 2022, the U.S. Patent and Trademark Office (USPTO) conducted a live meeting for its Artificial Intelligence (AI) and Emerging Technologies (ET) Partnership Series. During this meeting, panelists from industry and the USPTO provided helpful tips on drafting and prosecuting patent applications that include AI components, including special tips for the biotech industry. Key takeaways from the meeting and published materials will be summarized in our Three-Part Blog Series.…

Continue Reading Takeaways From the U.S. Patent and Trademark Office’s Artificial Intelligence and Emerging Technologies Partnership Series – Part One of Three

A recent Federal Circuit case, ABS Global, Inc., v. Cytonome/ST, LLC, answered the interesting question of whether a patentee’s infringement disclaimer can moot a challenger’s appeal of an inter partes review (“IPR”) decision.
Continue Reading Cementing Victory by Accepting Defeat: When Can a Patentee’s Infringement Disclaimer Moot an Appeal of an IPR Decision?