Peter J. Cuomo

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Patent Owner Tip #7 for Surviving an Instituted IPR: Work with Your Expert to Make the Declaration Navigable and Well Supported

USA - May 20 2021 Expert declarations are an essential component of any patent owner’s effort to survive an instituted inter partes review (“IPR”). The Board relies…

Rithika Kulathila.

The Federal Circuit Provides New Guidance for Patent Licensees Wishing to Challenge the Licensed Patent’s Validity

USA - April 21 2021 The Federal Circuit in Apple Inc. v. Qualcomm Incorporated handed down a decision on April 7, 2021 that provides guidance on the determination of…

Brad M. Scheller, Mark D. Hammond, Monique Winters Macek.

Patent Owner Tip #2 for Surviving An Instituted IPR: Don’t Swing for the Fences in IPR Depositions

USA - April 15 2021 As discussed in our previous post, one of the most critical tasks for Patent Owners during the Inter Partes Reviews (“IPR”) discovery period is…

Rithika Kulathila.

District of Delaware Recites Policy Rationale for Dismissing Willful and Indirect Infringement Claims for Failure to Plead Pre-Suit Knowledge of Infringement

USA - April 5 2021 On March 24, 2021, U.S. District Judge Colm F. Connolly of the District of Delaware, granted a defendant’s motion to dismiss claims for contributory…

Adam P. Samansky, Joseph D. Rutkowski.

Tip #6 for Avoiding IPR Institution: Advocate Claim Constructions the Petition Ignored

USA - November 16 2020 Arguing against material constructions proffered by an IPR petition is a basic building block of the patent owner’s preliminary response. Obviously…

Daniel B. Weinger.