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Zachary Alper

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Zachary “Zack” Alper is an associate in the Intellectual Property Practice Group in the firm's San Diego (Del Mar) office.

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Inline Plastics Corp. (“Inline”) filed a lawsuit against Lacerta Group, LLC (“Lacerta”), alleging infringement of several patents related to tamper-resistant containers and methods of making such containers using thermoformed plastic. The district court granted Inline summary judgment of infringement on a subset of claims, but the jury found that the remaining asserted claims were not infringed and that all the asserted claims (including those already held infringed) were invalid. The parties then filed posttrial motions, including Inline’s motion for judgment as a matter of law and Lacerta’s motion for attorneys’ fees under 35 U.S.C. § 285, both of which were denied. Inline appealed on the grounds that it was entitled to judgment as a matter of law of no invalidity and that an error in the jury instructions with respect to the law of obviousness requires a new trial. Lacerta cross-appealed, challenging the district court’s denial of attorneys’ fees and the without prejudice dismissal of certain patent claims Inline voluntarily withdrew during trial. Continue Reading Inline for a New Trial

In Virtek Visions international ULC v. Assembly Guidance Systems, Inc., DBA Aligned Vision Nos. 2022-1998, 2022-2022 (Fed Cir. Mar. 27, 2024), the Federal Circuit reviewed the Patent Trial and Appeal Board’s findings regarding patent obviousness for U.S. Patent No. 10,052,734. Specifically, appellate review of the Board’s findings related to the motivation to combine analysis.Continue Reading Conclusory Assertions Won’t Cut It: Federal Circuit Provides Further Insight into the Motivation to Combine Analysis

In VLSI Technology LLC v. Intel Corporation, No. 22-1906 (Fed. Cir. 2023), VLSI sued Intel for infringement of U.S. Patent Nos. 7,523,373 (the “’373 patent”) and U.S. Patent No. 7,725,759 (the “’759 patent”). After a jury trial in 2021, VLSI was awarded $1.5 billion for literal infringement of the ’373 patent and an additional $675 million for infringement of the ’759 patent under the doctrine of equivalents. Prior to trial, Intel sought to amend its answer to assert a licensing defense. Intel argued that due to a recent change in ownership of Finjan, Inc., Intel was covered under Finjan’s license with VSLI because both Intel and Finjan were under the control of Fortress Investment Group LLC. The district court denied Intel’s motion. Intel appealed the infringement verdicts as well as the district court’s denial of the motion to amend.Continue Reading The Importance of Reasonable Particularity in a Doctrine of Equivalents Argument

In Elekta Limited v. Zap Surgical Systems, Inc., No. 21-1985 (Fed. Cir. Sept. 21, 2023), the case addresses the interplay between findings related to motivation to combine and reasonable expectation of success in determining obviousness under 35 U.S.C. § 103. Continue Reading The Intertwining Nature of Motivation to Combine and Reasonable Expectation of Success

This case addresses certain implications of the Laehy-Smith America Invests Act (AIA), namely whether patents with a filing date after March 16, 2013 (pure AIA patents) may be part of an interference proceeding under pre-AIA, 35 U.S.C. § 135, and specifically whether the Patent Trial and Appeal Board (Board) has the authority to cancel SNIPR’s pure AIA claims through an interference for lack of invention priority under pre-AIA § 102(g). Continue Reading SNIPR Tech. Ltd. v. Rockefeller Univ., No. 22-1260 (Fed. Cir. July 14, 2023)

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

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