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Results: 1-10 of 320

Danisco US Inc. v. Novozymes AS., No. 2013-1214 (Fed. Cir. March 11, 2014).

  • Winston & Strawn LLP
  • -
  • USA
  • -
  • March 19 2014

An alleged infringer may bring a declaratory judgment action even if no litigation is pending or threatened when a "substantial risk" of litigation

CBM review cannot raise prior art under pre-AIA section 102(e)

  • Winston & Strawn LLP
  • -
  • USA
  • -
  • September 19 2013

One key difference between IPR and CBM review is the availability of prior art. Certain prior arg cannot be raised in a CBM review. In what has

Ancora Technologies, Inc. v. Apple, Inc., No. 13-1378, -1414 (Fed. Cir. Mar. 3, 2014).

  • Winston & Strawn LLP
  • -
  • USA
  • -
  • March 12 2014

Federal Circuit places heavy burden on an accused infringer that seeks to show a term with a clear, ordinary meaning is indefinite. A patentee

Where a complaint seeking a declaratory judgment of invalidity is dismissed for failure to join an indispensable party, the party filing the complaint may file a later petition for inter partes review.

  • Winston & Strawn LLP
  • -
  • USA
  • -
  • January 16 2014

In enacting the statutes related to inter partes review, Congress sought to preclude a party from selecting two venues for raising simultaneous

Recent decisions by the Patent Trial and Appeal Board provide important clues to parties considering settlement of post-issuance trial proceedings.

  • Winston & Strawn LLP
  • -
  • USA
  • -
  • January 16 2014

While the predecessor to the current statutory scheme for inter partes challenges to the validity of patents before the United States Patent and

PTAB issues “further guidance” on Patent Owner motions to amend in inter partes review proceedings and continues to limit ability of patent owners to propose substitute claims

  • Winston & Strawn LLP
  • -
  • USA
  • -
  • November 14 2013

The Board continues to restrict a patent owner's ability to add substitute claims and imposing strict guidelines on motions to amend. Specifically

35 U.S.C. 315(b) bars petition for inter partes review even if complaint was filed before enactment of the America Invents Act.

  • Winston & Strawn LLP
  • -
  • USA
  • -
  • January 16 2014

Section 315(b), Title 35 requires petitioners seeking inter partes review ("IPR") of a patent to file the petition for IPR within one year of service

Who bears the burden of proving the effective filing date of a patent claim in a post-issuance trial?

  • Winston & Strawn LLP
  • -
  • USA
  • -
  • September 19 2013

The Board appears to have been inconsistent in its conclusions about who bears the burden of proving the effective filing date of a patent claim

PTAB places restrictions on the use of multi-party IPR petitions by defining all real parties-in-interest as a single “party” for post issuance trials.

  • Winston & Strawn LLP
  • -
  • USA
  • -
  • March 14 2014

Parties considering pooling resources to file a single petition for post-issuance trial should take note of a recent decision by the Patent Trial and

Endo Pharmaceuticals, Inc. v. Actavis, Inc., Nos. 2013-1658, 1662 (Fed. Cir. Mar. 31, 2014).

  • Winston & Strawn LLP
  • -
  • USA
  • -
  • April 9 2014

A license that expressly covers only particular patents may impliedly cover only continuations of those patents. A patentee brought an action for