In Kannuu Pty Ltd. v. Samsung Electronics Co., Ltd., No 19-civ-4297 (S.D.N.Y Jan. 19, 2021), the parties’ forum selection clause in their non-disclosure agreement did not prevent Samsung Electronics Co., Ltd. (“Samsung”) from challenging Kannuu Pty, Ltd.’s (“Kannuu”) patent in an IPR proceeding. The court held IPR petitions did not fall within the scope
On October 20, 2020, the United States Patent and Trademark Office (“USPTO” or “Office”) published in the Federal Register “Request for Comments on Discretion To Institute Trials Before the Patent Trial and Appeal Board” seeking public comments on the appropriate considerations for instituting trials before the Patent Trial and Appeal Board (“PTAB”) under the Leahy-Smith
A motion recently filed by US Inventor, Inc. in the United States District Court for the Northern District of California seeks a temporary restraining order and a preliminary injunction to prevent the United States Patent and Trademark Office (“USPTO” or “Patent Office”) from instituting any new reviews of any patent until it solves the debate
On October 6, 2020, the United States Patent and Trademark office (USPTO) released a report titled “Public Views on Artificial Intelligence and Intellectual property Policy.” The report follows the USPTO’s August 2019 request for comments on patenting AI inventions, and the USPTO’s October 2019 request for comments related to the impact of
Last week, Microsoft got tripped up at oral argument on the blocking and tackling of IPR practice: making sure your prior art is prior art.
The specific error was eminently avoidable, though perhaps also eminently understandable. Under Federal Circuit law, a reference generally does not count as prior art unless it was “indexed.” (Think Dewey
Last week, four major technology companies – Apple, Cisco, Google, and Intel – brought suit against the United States Patent and Trademark Office (“USPTO”), challenging its authority to reject petitions for inter partes review (“IPR”) based on two precedential decisions by its Patent Trial and Appeal Board (“PTAB”). The decisions, Apple Inc. v. Fintiv, Inc.
Thanks to a decision handed down by the Patent Office’s Patent Trial and Appeal Board (“PTAB”) last month, patent owners may find some difficulty in having petitions to institute inter partes review (“IPR”) dismissed based on the PTAB’s discretion under Section 314(a) of the patent act. In Sand Revolution II, LLC v. Continental Intermodal Group
On May 27, 2020, the U.S. Patent and Trademark Office (“USPTO”) proposed amendments to its rules governing post-grant proceedings, addressing three topics. First, petitions for post-grant proceedings would require institution of all claims or denial of the petition. Second, patent owners would be permitted to file sur-replies to principal briefs. Third, the rules would eliminate
The United States Patent and Trademark Office (USPTO) recently published a decision on petition stating that an inventor must be a natural person, and denied Petitioner’s request to name an artificial intelligence entity as the inventor.
The inventor at issue is an artificial intelligence (AI) system named “Device for the Autonomous Bootstrapping of Unified Sentience”
The United States Patent and Trademark Office (“USPTO”) announced that it considers the effects of COVID-19 (“the Coronavirus”) to be an “extraordinary situation.” Under 37 CFR 1.183, in extraordinary situations, the Director may suspend or waive any requirement of the regulations which is not a statutory requirement. Accordingly, as of the time of this writing,