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Results: 1-10 of 329

PTAB makes clear that observations on cross-examination are limited to reply declarants

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

In Berk-Tek LLC v. Belden Techs. Inc., IPR2013-00057, Paper 43 (Nov. 1, 2013), counsel for the Patent Owner initiated a conference call with the

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

“Substantial new question” vs. “reasonable likelihood”: has the difference in legal standard made a difference in practice?

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

Under the America Invents Act ("AIA"), what was once the standard used by the Patent and Trademark Office ("PTO") to determine whether to institute

In re Hugh Edward Montgomery, John Francis Martin, and Jorge Daniel Erusalimsky, No. 2011-1376 (Fed. Cir. May 8, 2012)

  • Winston & Strawn LLP
  • -
  • USA
  • -
  • May 31 2012

Prior art describing an unexecuted process or protocol may inherently anticipate claims when the result at issue inevitably flows from its disclosures

PTAB explains circumstances where cross-examination of declarant may be limited to grounds on which trial is instituted

  • Winston & Strawn LLP
  • -
  • USA
  • -
  • December 9 2013

The PTAB recently clarified the instances in which it might consider a motion to limit the cross-examination of a declarant and when it might not

Indemnification of customers or assisting in their defense may not be enough to bar indemnitor from filing petition for inter partes review absent control over the earlier litigation.

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

The PTAB recently denied a request for discovery into the indemnification activities of a Petitioner in an IPR where a district court verdict had

Supreme Court extends Mayo Collaborative Services v. Prometheus Laboratories, Inc. to computer patents

  • Winston & Strawn LLP
  • -
  • USA
  • -
  • June 23 2014

The Supreme Court held that patent claims that are directed towards abstract ideas will not be patentable under 35 U.S.C. 101 unless the claim

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

Although an attorney is free to argue vigorously in favor of patentability without being subject to allegations of inequitable conduct, the law prohibits genuine misrepresentations of material fact

  • Winston & Strawn LLP
  • -
  • USA
  • -
  • August 24 2010

The patent-in-suit disclosed a softwarebased algorithm and method for generating and delivering messages over a phone line during a “ringing signal” period

Plantronics, Inc. v. Aliph, Inc. and Aliphcom, Inc., No. 2012-1355 (Fed. Cir. July 31, 2013).

  • Winston & Strawn LLP
  • -
  • USA
  • -
  • August 9 2013

The election of an invention in response to an ambiguous restriction requirement from the PTO cannot form the basis for prosecution estoppel or