Contracting Out of an IPR Proceeding

2019/04/30 by Southern California Patents

Southern California Patents

Potentially good news has come for patentees in light of a recent federal circuit decision affirming a lower court’s ruling that patent license forum selection clauses can bar challenges at the PTAB. The court ruled that the parent company to the Sharper Image, MerchSource LLC, must withdraw IPR challenges to…

Supreme Court: Oil States Energy Servs., LLC v. Greene’s Energy Grp., LLC

2018/07/16 by Southern California Patents

Southern California Patents

The Supreme Court recently agreed to decide whether inter partes review, a post-issuance proceeding introduced by the America Invents Act ("AIA"), violated the Constitution. The constitutional challenge alleged that the inter partes review process ("IPR") violated the Constitution by extinguishing private property rights through a non-Article III federal court and…

Apple v Samsung Saga – The New Article of Manufacture Damages Standard

2018/06/072018/06/07 by Southern California Patents

Southern California Patents

Under 35 U.S.C. §289, a design patent infringer is liable to the owner “to the extent of his total profit.” However, to be liable under this statute, one must apply the patented design (or imitation thereof) to an article of manufacture for the purpose of sale. Going back to 2012,…

Wi-Fi One v. Broadcom: Strong Presumption of Judicial Review Prevails

2018/01/16 by Southern California Patents

Southern California Patents

The Federal Circuit started the new year with a 9-4 en banc decision holding that PTAB decisions on the timeliness of inter partes review petitions are appealable. This decision not only impacts future PTAB trial proceedings, but also overrules previous decisions that denied such appeals. This is the first time…